In today’s competitive world it is very important for businesses and startup to protect their identity and to safeguard their brand reputation. It will not only help in increasing their brand value in the market but will also build trust and loyalty of customers and. Trademarks serve as a significant tool for the startups and MSMEs to secure their unique identity. In this era full of innovations and creations, legal protection through a trademark ensures that a business is set apart and is distinguished from other businesses.

Why a Good Trademark / Brand Name matters?

Significant benefits of trademarks for startups and MSMEs are:

• Brand identity and recognition

• Legal protection is granted

• Trust and loyalty of customers is built

• It works as an asset, that will in future help increase valuation of the business.

The stronger a trademark, the better chance of it being recognised legally as well as among the customers and in market. When a trademark is well-chosen, it not only protects a brands identity but also plays a significant role in its overall success.

Not all logos, names, shapes and slogans etc can qualify as a trademark. A mark to be a valid trademark must possess some key features that adhere to the legal requirements as per the Trademarks Act, 1999.

How to Choose a Good Trademark: A Practical Guide for Start-ups and MSMEs

Key Characteristics of a Strong Trademark

• Uniqueness: The mark / brand name must stand out and be distinct from existing trademarks.

• Coined words: These are invented terms with no prior meaning in language or industry. Created by combining words or building an entirely new term, coined words greatly reduce the risk of conflict with other brands and offer flexibility in crafting a unique brand identity.

• Non-generic marks: Generic terms such as “pen” or “pencil” cannot function as trademarks, as they simply describe the product rather than identify its origin.

• Easy to pronounce and remember: An effective trademark should be easy to pronounce and remember, enabling consumers to easily resonate with and recognize the brand.

• Non-prohibited and inoffensive: Marks must not contain offensive, misleading, or legally prohibited terms. Such words are barred from registration for ethical and legal reasons.

• Arbitrary marks: These are existing words used in a context unrelated to their common meaning. For instance, “Apple” used for computers does not describe the product itself, making it distinctive and strong.

To ensure your trademark meets these standards and avoids legal disputes, it is crucial to conduct a comprehensive trademark search and analysis in relevant databases, such as the trademark registries of the countries where protection is sought.

Descriptive vs. Distinctive Marks

A strong trademark should be distinctive rather than descriptive. Descriptive marks often encounter challenges during registration because they are considered too generic or lacking distinctiveness. A distinctive mark, on the other hand, is unique and capable of clearly identifying the source of goods or services without merely describing them.

• Descriptive marks: These directly describe the nature, quality, or characteristics of a product or service. For example, using the term “Cold and Creamy” for ice cream simply describes its qualities and is therefore considered descriptive. Similarly, “Fresh Fruit Juice” would be viewed as descriptive;

• Distinctive marks: These are inherently original, coined, or arbitrary terms that do not directly describe the goods or services. Instead, they serve as strong identifiers of the brand itself. For instance, “Frozen Treats” for ice cream or “Fruitfull” for beverages are distinctive marks that create a unique brand identity.

In essence, a descriptive mark explains the product’s characteristics, while a distinctive mark sets the product apart and provides legal strength for brand protection.

Common Mistakes to Avoid When Choosing a Trademark

When selecting a trademark, it is important to avoid certain pitfalls that can weaken registration prospects or create legal challenges:

• Using common surnames: Unless a surname has acquired distinctiveness through long-term use, it generally makes for a weak trademark. For instance, “Tata” has gained distinctiveness, but most surnames lack inherent uniqueness.

• Geographical names: Marks that directly reference places are often refused, as they may mislead consumers into believing the goods originate from those locations.

• Imitating famous brands: Copying or creating deceptively similar versions of well-known marks can result in rejection and potential infringement actions. For example, “Adibas” for shoes would be considered an infringement of “Adidas”.

• Minor tweaks to existing marks: Small alterations such as modified spellings, suffixes, or prefixes do not create distinctiveness and will be treated as deceptively similar. For example, “SONEE” instead of “SONY” or “KOKA-KOLA” instead of “COCA-COLA”.

• Relying solely on domain name availability: The availability of a domain name does not guarantee trademark registrability. A proper verification with the Trademark Register must be conducted before adoption.

• Using prohibited marks: Certain marks are legally prohibited under trademark law and are automatically rejected if applied for registration. The official list of prohibited marks can be found in the public database of the trademark registry at https://tmrsearch.ipindia.gov.in/tmrpublicsearch/prohibitedmarks.aspx.

Common Objections under the Trademarks Act, 1999

The Trademarks Act, 1999 lays down specific grounds on which a trademark application may be refused or objected to during the registration process. These grounds are divided into absolute grounds (Section 9) and relative grounds (Section 11).

Absolute Grounds for Refusal (Section 9)

• Lack of distinctiveness (Section 9(1)(a)): Marks that are not capable of distinguishing goods or services.

• Descriptive marks (Section 9(1)(b)): Marks that describe the kind, quality, quantity, intended purpose, values, or other characteristics of the goods/services.

• Customary in trade (Section 9(1)(c)): Marks that have become common in the established practices of trade.

• Deceptive marks (Section 9(2)(a)): Marks likely to deceive or cause confusion.

• Offensive or hurting religious sensitivities (Section 9(2)(b)): Marks that may hurt the religious sentiments of any class or section of citizens of India.

• Scandalous or obscene matter (Section 9(2)(b)).

• Prohibited under other laws (Section 9(2)(d)): Marks barred under other statutes such as the Emblems and Names (Prevention of Improper Use) Act, 1950.

• Shape-based restrictions (Section 9(3)): (a) Shapes resulting from the nature of the goods; (b) Shapes necessary to obtain a technical result and (c) Shapes that add substantial aesthetic or commercial value.

Relative Grounds for Refusal (Section 11)

• Likelihood of confusion (Section 11(1)): Marks that are identical or similar to existing registered marks and could cause confusion among consumers.

• Protection of well-known trademarks beyond their goods/services (Section 11(2)): Prevents misuse of well-known marks, even for unrelated goods or services.

• Conflict with unregistered rights or copyright (Section 11(3)): Where use could be prevented by the law of passing off (protecting unregistered marks in commerce). • Where use would infringe an existing copyright.

• Consent from proprietor (Section 11(4)): Registration may be refused if the proprietor of an earlier trademark does not consent.

• Well-known trademarks determination and protection (Sections 11(6)–11(10)): Factors considered by the Registrar include: (a) The extent of public recognition (including global reputation); (b) Duration, geographic spread, and extent of use and promotion; (c) History of enforcement in courts or before trademark registries and (d) Awareness among actual and potential consumers, distributors, and business circles.

• Good faith protection (Section 11(11)): Marks registered or used in good faith prior to the commencement of the Act are protected.

Steps to Take Before Finalising Your Trademark

Selecting the right trademark goes beyond choosing a catchy name. It lays the foundation for your brand identity and builds long-term consumer trust. The following steps should be taken before finalising a trademark:

A. Prepare a list of potential names / logos

• Ensure each option is unique and distinctive.

• Avoid offensive or prohibited terms.

• Choose marks that are simple, memorable, and easy for the target audience to pronounce and recall.

B. Conduct a professional trademark clearance search

• Engage an experienced trademark attorney or IP law firm to perform a thorough search in official databases such as IP India.

• Verify that the mark is not identical or deceptively similar to existing registrations or pending applications.

• Assess the likelihood of refusal by analyzing whether the mark is generic, descriptive, or already claimed.

C. Check domain name and social media availability

• Confirm availability of relevant domain names.

• Check social media handles to secure consistent brand presence online, as not all names in use digitally are formally registered trademarks.

By investing time in brainstorming, conducting a comprehensive clearance search, and ensuring digital availability, you can choose a trademark that is not only legally secure but also strengthens your brand identity.

Remember, your trademark is more than a name - it’s the foundation of your brand identity. Invest wisely at the start, and it will pay off for years to come!

This article has been authored by Akriti Thakur, Intern at Intellect Goodwill LLP, as part of our ongoing IP Awareness Series - Intellect Insights, aimed at simplifying complex intellectual property concepts for entrepreneurs, creators, and businesses.

The views expressed in this article are for informational purposes only and do not constitute legal advice. The content reflects the personal analysis of the author and not necessarily the views of Intellect Goodwill LLP.