Trademark Registration for E-Commerce

E-commerce refers to the trend of purchasing and selling items through the internet. E-commerce enterprises, on the other hand, are not required to register their trademarks. However, an e-commerce retailer should file for registration to get intellectual property rights to achieve a competitive advantage. People prefer to buy your things online or invest in your business if you have a registered trademark. This article will apprise you of how trademark registration for e-commerce can benefit your Business.

Trademark for E-Commerce in India

Trademarks are critical in the commercial world. They’re there to keep you and your brand safe. Your Trademark protects your brand from being illegally copied or duplicated.

Because of the increasing use of the internet, every brand, its goods or services and types are now available to the entire globe online. As a result, having a distinctive trademark for one’s business is critical for an e-commerce seller or corporation. A trademark or logo makes it easier for the general public or consumers to recognize the e-commerce seller’s or firms’ items.

Consumers will remember an e-commerce seller’s or company’s trademark, seek it, and buy it again if they remember the Trademark of a product. It will aid in the expansion of the company’s goodwill and popularity. Unique trademarks and their related items will be easily recognized worldwide.

Benefits of Trademark Registration for E-Commerce

The owner general obtains the following three benefits once a trademark has been approved:

Right to stop competing businesses that are using the identical or similar trademark;
Ownership of the mark, which deters potential adopter or applicant; and
The exclusive right to use the trademark.

Is Trademark Registration Mandatory for an E-Commerce Firm?

Now, this is the most common question that arises not only in your but in everyone’s mind. So let us clear this up for you. An e-commerce dealer or firm doesn’t need to register a trademark. However, trademark registration is preferred since gives you exclusive right over your brand which will further help you to protect your brand from unauthorized use and gives several benefits to trademark owners. For example, if you adopt a brand name, market it, and spend money and effort to bring it to the next level and someone else gets it registered with the Trademark Registry, you might lose your exclusivity over the mark. Also, though the registration of the trademark it will leave you a difficult task to fight and prove your right over the mark.

Now that we’re talking about benefits, let us assist you to know what a registered trademark can benefit you with:

Prior Use: The entity that initiates the first use of a trademark has superior over the trademark under trademark law. It implies that if a corporation or seller can demonstrate proof of previous use of a trademark, it will offer them an advantage over another person or competitor who is using the same mark, regardless of whether or not it has been registered. In most cases, proof of earlier use of a trademark takes precedence over registration. As a result, it is suggested to begin using the Trademark as soon as the firm begins and register it to have documentation of prior use.

Legal Rights to Transfer the Trademark: The trademark registration allows the trademark owner to assign his or her trademark rights to another party. The ability to award a trademark aids start-ups in attracting customers or investors. Companies that have achieved trademark registration are viewed favorably by investors.

Now you may wonder about the procedure to avail of these fantastic benefits, don’t worry, we got you covered.

Procedure for Trademark of E-commerce Companies/sellers

E-commerce businesses should follow the steps outlined below to register trademarks in India as they are valid for 10 years. After ten years, the organization may submit a renewal application. The e-commerce sectors should create a trademark that is distinctive and can be expressed graphically in order to conduct trademark registration online.

Thorough Search on Intellectual Property Database:

As Indians, we elude with off-the-cuff ideas from our friends and family with the purpose of concocting a brand name for the company. There is also a social obligation to consult network leaders and other religious persons in one’s area while choosing a brand name. As a result, business owners overlook the relevance of securing a trademark to come up with a name that is not unique but gives insight into the likelihood of facing trademark litigation in the future.

Therefore, choosing a memorable brand name isn’t enough and it doesn’t negate the need to conduct a trademark search; instead, a trademark search informs one of whether similar trademarks are available and it provides a reasonable idea of where one’s brand stands in comparison to other brands in a similar class.

Step-1: Trademark Application Filling:-

The starting step is to file a trademark application with the nearest trademark office, which may be found in various states around the country or through online portal as well.
Mumbai, Delhi, Ahmadabad, Chennai, and Kolkata are the Indian trademark offices.
Furthermore, in recent years, the majority of documentation has been done online.
Following the completion and presentation of the application, an authorized receipt is immediately given for future reference.

WHICH CLASS TO APPLY FOR?

There are 45 classes in total ranging from class 1 to 34 for goods and class 35 to 45 for services. The Applicant is required to file application in the relevant class for its goods for example for readymade clothes and footwear its class 25 and for cosmetics its class 03. Though, it is suggested that an application should also be made in Class 35 as the same covers-commerce business, publicizing, business administration, business organization, and office abilities, etc.

Step-2: Trademark Examination:-

In this step, the officer shall examine the Trademark Application for Trade Mark Registration for E-commerce Business once it has been recorded for any flaws.
The examiner may partially or wholly accept the trademark application, or it may be permitted with restrictions.
If the application is accepted, the Trademark is published in the Trademark Journal and enters into an opposition period of 4 months.
If there is any objection issued in the exam report, then the requirements are to be met or the objections are to be addressed via a response.
If the response isn’t accepted, then a hearing is scheduled in which either the Applicant or its authorized agent can make submissions in support of the Application.
The Trademark is either accepted or refused by the Examiner. If the mark is accepted, the same is advertised in the journal.

Step-3: Trademark Publication:-

Once a trademark application overcomes the objection and is accepted at any stage by the Trade Marks Registry it is then published under the trademarks journal TM-J and it is open for opposition for 120 days or 4 months from the date of publication.
If any party has any kind of objections to the Trademark being registered, there is an equal opportunity to prevent it from being registered by filing a Trademark opposition in that application within the prescribed time limit.
If the mark is opposed, then the Opposition proceedings continue to take place otherwise if there is no opposition the mark is registered and a certificate is issued in he support of same.

Step-4: Registration and Certification:-

Once a trademark is registered and published in the Trademark Journal, a registration document or Registration Certificate with the Trademark Office’s seal is issued.

Signs for Trademark

The following three symbols can be used by companies to signify that a trademark has been used:

™- Any pre-existing trademark, specifically any unregistered trademark, is denoted by the symbol TM.
℠ – This mark denotes the retail sale of services rather than goods. Although the service mark logo is an option, most businesses choose to use the mark ™ due to its simplicity.
®- The registered trademark is denoted by the symbol ®. It is preserved for trademark registrations that receive the necessary government assistance.

Documents required for the Trademark of an E-commerce business

The following is a list of all the necessary documents for E-Commerce business to register their trademark:

If the trademark that you intent to apply has already been in use then a user affidavit along with supporting documents showing the use of mark is required to be filed along with the Application.
Copy of MSME/Udyam Certificate or DIPP certificate for availing waiver in fees as MSME or Start-ups respectively.
A copy of Power of Attorney if you have authorized an agent.

Difference between Name Approval under the Companies Act 2013 and Trademark Act 1999:-

A registered company’s name cannot be considered as a trademark registration. When a name is unique, it can be used as a trademark. A trademark can also be a combination of a company’s name and a symbol. However, a trademark registered under the Trademark Act of 1999 is not the same as a company name registered under the Companies Act of 2013.

The Registrar must approve a company’s name of Companies (ROC) before it can be registered. If the business name is too similar to another registered firm, the ROC will reject it. The ROC’s approval of a company name does not guarantee that name’s Intellectual Property Rights (IPR).

A corporation must file for trademark registration under the Trademark Act of 1999 in order to gain rights on its mark. An e-commerce firm should file a trademark registration application under the Trademark Act to protect its brand.

Is an Indian Trademark Registration Worldwide?

The topic of whether trademarks registered in India are recognized internationally arises since e-commerce companies are not limited to operating solely in India and have access to a global market. The rights and registration of a trademark are territorial in nature. To get registrations in different jurisdictions, the cumbersome route is to separately apply to every nation where one needs registration but with Madrid Protocol, a trademark can be applied to multiple nations at once. Application is reviewed by each nation separately granting or refusing protection.

Conclusion

Be it an offline store or an online e-commerce, trademark registration is always a great way to build intangible assets around your brand name and create an identifying feature for your customers of people of trade to distinguish the same from the rest of the market. Though, India being common law country grants superiority to prior use rather than prior registration, it is advised to apply the trademark for registration so that the statutory rights are also granted to the Proprietor for protection of trademark.

Naseem

Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association