A trademark is a crucial component of a company’s intangible properties that often help to make a business successful. Consumers use trademarks to recognize products and services that meet particular quality, origin, and utility standards for a given brand. But what happens when your business name is found to be already trademarked by another company? Read further to find out!
What is a Trademark?
A trademark is the name, symbol, or brand of a good or service. Customers or clients use the trademark to identify goods or services. The Trademarks Act of 1999 governs trademarks in India.
Under the Act, trademark registration is voluntary and not required. The owner of a trademark receives numerous benefits from trademark registration. Protection against trademark infringement is one such advantage. When someone uses a trademark improperly, it is considered trademark infringement.
An individual or business can bring a lawsuit for trademark infringement if someone uses their brand without getting permission, which will stop the unauthorized use of their trademarks.
What should one do if my business name is trademarked by another company?
Before jumping to the solution it is important to understand if a problem really exists in the first place. Since there exists a wide range of businesses, its not possible to have a unique name for everyone but for this particular reason, distinctions have been made.
This is why it is crucial that you answer the below-mentioned questions when you find a trademark that is the same as your business name:
● Find out their area of business, does it fall in the same industry as yours?
● Do they deal in an identical or similar goods/ services to your business?
● How long have they been in their business and how long has the same trademark been used?
● Perform a quick public search to ascertain whether their trademark is registered or not
● Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar?
Possible Solutions
It is very important to know that India is a “first to use” country which simply means that if you are the prior user of a mark, you have superior rights to the person or organization who has subsequently registered it.
Therefore the plan of action highly depends on the fact as to who is the prior user of the mark.
If you are only at the stage of development and subsequent to the individual or company who has registered the mark it is suggested to change your trademark/ trading name to avoid any future prosecution or litigations. If you believe that though the marks are similar but there exists no reason of confusion due to territorial difference or difference in the industries, negotiating with the registered proprietor to reach to a possible situation which is beneficial to both the parties.
Whereas if there is a situation when even if your mark is not registered but you are the prior adopter and user of the mark, you have the right to take action of passing off against the registered proprietor.
Due to being an unregistered proprietor, you don’t have any remedies provided to the registered proprietor.
But if the case is as such where both the parties aren’t registered it all comes down to actual use, misrepresentation and damage to goodwill and reputation.
Though trademark registration is not mandatory but it is always advised for the adopters and users to get their brand name registered in order to get protections and rights under the act. Though an unregistered mark is still given protection under the common law rights but it becomes difficult to create a stands. It is always advised that in situation like these, one should consult the professions to find the best route possible.
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
