Domain Name & Internet Law Practice

ALWAYS choose a Trademark which is appealing to eye and ear, short, easy to pronounce and remember as well as easy to spell and write

NEVER choose a Trademark which is descriptive or having direct reference to the quality or characteristics of the Product but suggestive Trademarks are considered be a good Trademarks

ALWAYS choose a Trademark which satisfy the requirements of registration and does not belong to a class of mark prohibited for registration

NEVER use plural words in a Trademark e.g TIC TAC for Candies and not TIC TACS.

ALWAYS conduct a complete availability search for a Trademark. This search should include search at the Trademarks office in India, search in all the available database such as industry magazines /periodicals, Yellow Pages, market resources etc. Legal clearance is always necessary to be obtained to avoid any future disputes.

NEVER modify a Trademark from its possessive form (i.e. with apostrophe 'S) e.g McDONALD’S, DOMINO’S PIZZA, LEVI’S JEANS, and KELLOGG’S for Cereals.

ALWAYS distinguish Trademark from other words in printed matters. In any printed materials like Agreements, Invoice copies, Instruction materials etc., the Trademark should be written either in block letters or within quotation marks or always use appropriate symbols like ® or TM (e.g. in Agreements like Software license, words (marks) like MICROSOFT, INTEL, IBM or LOTUS are always written with appropriate symbols).

NEVER adopt any generic word as a Trademark e.g ASPIRIN

ALWAYS use a Trademark properly with correct style, spelling and in its exact format. It is improper to modify a Trademark (e.g. DOLBY STEREO, MONTBLANC and not MONT BLANC, NESCAFE and not NES CAFE)

NEVER use a Trademark as a noun but use an adjective modifying a noun.

ALWAYS advertise Trademarks rather than Products or Services. This creates a brand loyalty among the consumers. (e.g. COKE for COCA COLA, BAND – AID for first aid dressing from Johnson & Johnson)

NEVER use a Trademark as a verb. Trademarks are for Products or Services and never actions. E.g. it is not XEROXING but Photocopying.

ALWAYS register and maintain registration of the Trademark. It grants many advantages like protection against infringement of trademark, exclusive use of the mark and prevent others from using, applying the said Trademark without proper authority. It is quite necessary to monitor the activities of competitors, their adoption and use of the Trademark.

ALWAYS consider registering a Trademark in all the countries of potential interest.

ALWAYS keep a watch on unauthorized use of identical and/or similar Trademarks and take appropriate action (passing off or infringement as the case may be) at the earliest to prevent such use. Collect as many evidence of unauthorized use as possible.

ALWAYS acknowledge with a footnote, if you are using a Trademark of another party.

ALWAYS make and create awareness among the internal staff about the proper selection and use of a Trademark. Circulation of a note on “do’s” and “don’ts” of Trademark selection and use will be quite useful. Such explanatory and inexpensive brochure can be very effective in creating awareness.

ALWAYS appoint a responsible person within an organization to supervise and co-ordinate the adoption and use of the Trademark. He should be responsible to review advertising, packaging and other documentation for compliance with the basic rules of a Trademark. He may conduct a periodical audit to monitor compliance on all the printed matters including packaging of the Products.

ALWAYS use symbol ® on the shoulder of a mark in case of Registered Trademark (e.g. MICROSOFT® with a phrase “Registered Trademark of Microsoft Corporation”) and TM in case of unregistered Trademarks (e.g.- BAZOOKA™ with a phrase “Trademark of Matshushita Corporation”). Such symbols indicate Trademark rights of an owner in respect of the goods for which it is applied.

It is a criminal offence to indicate an unregistered Trademark as registered Trademark or use of a symbol ®.