The Trademark Attorney’s of SV Consultant have vast experience in Trademark Filing in Coimbatore and have filed a substantial number of trademark applications both domestically and internationally. Trademark is a significant intellectual property, and therefore we need to ensure its protection. Accordingly, we suggest our client go for trademark registration. But here, a question arises that trademarks that are not registered are not protected under law.

The answer is yes; an unregistered trademark is protected under the laws of passing off and not infringement. Then we wonder why we should register it. The answer to the question would probably be under the umbrella of passing off. Trademarks need to be used extensively, which is tedious and challenging work to prove in court. Trademarks are based on the concept of use and not just getting the right.

The first step in a lawsuit for trademark infringement is a preliminary injunction, which makes it so that the infringer is not permitted to use the trademark. In this case, if the trademark has been registered, then it acts as proof of ownership. Still, in the point where you have just used the mark and not got it registered, then for prima facie case establishment purposes, a trademark claimant has to show extensive usage in the initial phase itself, which is generally difficult to make up due to limited opportunity available while filing the suit to delve deep into documents for establishing the prima facie evidence.

The trademark has to be well known and extensively used to obtain protection under the law of passing off. In the event that a trademark is infringed, the first step is a temporary injunction against the unauthorized party with evidence of prior use.

This is the case where the registration of a trademark or an application for a trademark shall act in favor of the plaintiff or person whose trademark has been infringed. An application for or registration of a trademark could speed up the litigation process and be used as an immediate remedy for bringing up a case. Hence, we recommend our clients go for filing and add value to their assets.

The Principle of Use:

Burger King US fast-food chain, which has over 13,000 outlets around the world, serves as an example of the Principle of Use. Trademark registered since 1979, still a victim of “non-use” of this trademark and recently had this trademark struck from the register by a much smaller company named Burger King restaurant.

Although such an old company and the trademark has been registered, the company is holding off from registering earlier due to its inactivity. Therefore, if trademark protection is acquired but not used, then the owner’s right is diluted or loses the trademark owner's right.

Consideration Filing Trademark:

We evaluate the following factors before filing a trademark or service mark application:

Whether the mark to be registered is both registerable and legally protectable. The difficulty of protecting the trademark will depend on how strong the mark is. This implies the mark should not consist of a match to any other mark in order to be registered by the law. Moreover, it must not share any resemblance to any other mark so as to find out its strength.

This is the preliminary step where we conduct a trademark search of the database, looking for similar or identical trademarks belonging to the same or different class of goods or services. Once a search report is generated, which also includes an analysis of whether the client needs to proceed with the trademark or not.