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Registered! Now what?

November 25, 2021

By Ananyaa Banerjee and Diksha Singh

Congratulations on successfully getting your trade mark registered!

Your trade mark now has statutory protection, and rest assured, you have acquired and converted your mark into a valuable asset for your business. However, that does not mean that your job here is done – your responsibility is now to maintain, and enforce your registration.

This article enlists some key responsibilities entrusted on the owner of a newly registered trade mark that are important to be carried out to maintain and protect their intellectual property rights.

For Protection of Rights:

  • Renewal – While a trade mark is one of the few IPRs which exists in perpetuity subject to it being renewed every 10 years, in India, it is the responsibility of the owner of the trade mark to get their marks renewed in a timely manner. Caution is necessary for the same, as failing to renew one’s mark within the stipulated period of time under the law can lead to the said registration being removed from the Register of trade marks.

The removal of a trade mark from the Register is the last thing any business should bring upon themselves, as after removal, the trade mark ceases to be registered under their name, and subsequently, they lose all protection in this regard and may not be able to successfully enforce their rights against third-parties. However, notwithstanding the above, the proprietor would still have common-law rights, and would still be able to avail remedy via passing-off. Further, the said mark may be used and applied for registration by other parties as well, as a result of which, the pre-existing reputation and goodwill acquired by the prior business may be taken undue advantage of, by the latter entity/proprietor. Such a situation would detrimentally weaken the stand of the defaulting proprietor/owner as the very fact that the owner was negligent, and failed to renew the registration may uncompromisingly be used against them.

Therefore, keeping a track of renewal dates is extremely essential for a registered proprietor.

  • ® Insignia – The saying ‘one can never be too careful’ fits perfectly to the situation in point. While it is not mandatory to use the ® insignia after a mark has successfully been registered, it is recommended that the ® insignia should be used alongwith a registered trade mark as a means to signify to the public and trade at large that the trade mark is registered and the owner has the statutory right to protect the same against unauthorized use of any infringer. While it is understandable that the process of adding an element as tiny as the ® insignia may be tedious for a registered proprietor, as it may involve costs to reprint printed materials / packaging / display boards, however, any investment made in this regard would only have long term benefits as the use of the ® insignia aids in indicating the status of registration of a mark to potential infringers that ultimately may have the effect of deterrence from committing any illegal act in this regard.
  • Registration on Brand Registries – In this day and age where e-commerce has become the new norm, in order for a holistic protection of their trade marks, registered proprietors can also take an extra step to protect their registered trade marks, and register their brands on ‘Brand Registries’ provided on major e-commerce websites, such Amazon. The same would be beneficial in protecting the intellectual property rights of registered proprietors / brand owners against sellers selling counterfeit items or selling products under infringing trade marks.
  • Customs Registration – For well-established brands especially, the risk of counterfeiting is also prevalent. Registered proprietors may also record their registered trade mark with the customs office, to prevent the import of counterfeit products into the country. This is especially beneficial as one custom recordal is sufficient to stop counterfeit products at any of the ports of entry into the country.
  • Expansion of business – In an event where the owner of a business decides to extend the scope of their business dealings, it is essential that the owner of the business files fresh trade mark applications for the new set of goods/services proposed to be offered by them, in the appropriate class to ensure complete protection or the rights of the owner of the trade mark.

For Enforcement of Rights against Third-Parties:

  • Marketplace Policing – It is the responsibility of the owner of a trade mark (whether registered or not) to keep an eye on the illegal use of their trade mark by parties. At times, such illegal use could range from the exact, identical use of the original trade mark, to a simple/minor modification made to the mark, and may also extend to infringing company names and domain name registrations. Such infringers exist with the sole purpose of riding on the goodwill and reputation built by the bona fide owner of the prior trade mark, and therefore, it is imperative that the registered proprietor should take the necessary action against unauthorized use of their trade marks, whether by sending cease and desist notices, filing suits, or taking action against company names (i.e., company name rectification), and domain names.
  • Filing take-downs of infringing online listings – Many a times, infringing use of a trade mark may be found on social media websites and third-party websites / e-commerce portals. Brand owners may file appropriate take-down requests against such infringing listings of their trademarks, and may be required to provide details of their trade mark registrations in order to take such action.
  • Filing Oppositions– The registered proprietor should also keep a check on the Trade Marks Journals that are published on a weekly basis (or engage professional watch services), for any trade marks that are infringing their prior trade marks. It is critical that the owner of the trade mark files oppositions against similar / identical trade marks, and thereafter files all necessary documents in compliance with the laws and procedures laid down, within the prescribed limitation period, so as to prevent an infringing trade mark from proceeding to registration, and an infringer gaining statutory rights in a similar / identical trade mark.

Keeping the abovementioned key responsibilities in mind, a brand owner can effectively manage and secure complete protection for their trade marks, and enjoy the returns on the investment made by them into their brand.

Girishma Sai Chintalacheruvu, Associate at S.S. Rana & Co. has assisted in the research of this article.

For more information please contact us at : info@ssrana.com