Trade Marks are extremely important and valuable assets that must be nurtured and protected carefully. Trade Marks identify the source of the product/service, influence customers decision to buy a certain product and prevent confusion. Trade Marks create a great value to the business. Some of the common mistakes that people make either before or after registering a trade mark are discussed in this article.
- Not taking a Search: It is extremely important to take a search before commencing use of a trade mark or before applying for registration of a trade mark. The search should not only be taken of the register of trade marks but also an online search on the web to ascertain if there is any other identical or similar mark on the register or that is being used by any other person. It would be disastrous to learn that some other person has a prior right in the trade mark that you have chosen after you have commenced use and spent your time and money in developing and promoting your business/products under the trade mark.
- Not applying for a Trade Mark: Not applying for a trade mark is another common mistake. Although certain common law rights are created in a trade mark by use even if the mark is not registered, it is advisable to register the mark. Registration gives statutory rights under the Trade Marks Act. It is more difficult to enforce rights under common law than under statutory laws.
- Selecting a weak mark: A trade mark should not be generic or descriptive of the goods/services that it is used for. A generic mark cannot be registered at all while a descriptive mark is generally refused registration but may be registered if it has acquired distinctiveness by long extensive use or it has acquired a secondary meaning or it is a well known mark.
- Failure to police the mark: A trade mark owner should be pro-active and should take sufficient steps to police its mark. This helps identify threats from others using similar or identical marks. Conducting a periodic search on the web and of the trade mark registry is extremely important. Scanning the trade mark Journals as and when they are published is essential. These steps are not expensive but can save businesses a lot of money and headache.
- Not taking legal action: A trade mark can lose its distinctive value if the owner fails to take timely action against infringers. If your trade mark is being infringed by anyone, you can issue a cease and desist notice calling upon the person to stop using the infringing mark. You can also file a suit for infringement and obtain a stay from such use. If you come across an application in the trade mark journal that is similar to your mark, you may oppose the application. If an identical or similar trade mark trade mark has already been registered you can file for cancellation against the registration.
- Not using a trade mark: If a trade mark that is registered is not used for a continuous period of 5 years from the date of actual registration it is liable to be removed from the register.
It is always advisable to seek appropriate advice from qualified trade mark lawyers who can advise you appropriately on what steps to take to protect your trade mark.
If you are confused or require any additional information you may visit our website www.rgajria.com for more information or contact us to talk to one of our experienced attorneys.