In August 2024, the Bombay High Court imposed a fine of Rs. 50 lakh on Premier Stationery Industries (India) Pvt Ltd for copying Fevicol’s brand identity. Trademark infringement cases are increasingly being reported in India. Along with hefty penalties, these legal actions often force brands to cease operations, resulting in significant losses.
While building a brand’s identity, it is crucial to consider various factors to protect the brand from legal consequences. As intellectual property (IP) laws in India are becoming more stringent, this has become a mandatory consideration, even for small-scale businesses.
India’s trademark laws are not limited to brand names, but brand names are a serious area of consideration, and many offences occur in this domain. Some individuals intentionally select brand names to replicate the essence of existing famous brands, which is a serious offence under Section 11 of the Trademarks Act, 1999.
The Sardarbuksh Coffee case is a landmark example in India, where the brand used a name and logo that directly replicated the feel of Starbucks. The Delhi High Court directed Sardarbuksh Coffee to alter its trademark and logo.
According to Section 103 of the Trademarks Act, 1999, trademark infringement can result in up to 3 years of imprisonment and a fine of up to Rs. 2 lakh. However, courts may impose higher penalties for damages caused.
While determining a brand name for your brand, consider these things:
The brand name should be clearly distinct from its competitors. Avoid any phonetic resemblance to existing brands. Altering the spelling while keeping the same pronunciation as an existing brand is a serious offence. Example: Avoid naming your brand “Koka” if there is an existing brand “Coca” in the same category.
The name should not derive directly from the product or reflect its qualities, quantities, or type. For instance, if you are selling juice products, a name like “Fresh Juice” would be inappropriate as it describes the product’s quality.
Avoid using dictionary terms as they may face objections on various grounds. Coined names are highly preferable as they are easier to register. Example: ‘Google’ is a coined term
If your product originates from a specific geographical region, refrain from including the region’s name in your brand. Under Section 9(1)(b) of the Trademarks Act, 1999, such names cannot be registered.
Example: Avoid using names like “Darjeeling Tea” if your tea originates from Darjeeling, as it directly references the geographical location.
Do not include words that are scandalous, obscene, or offensive in any language or words that hurt religious sentiments. Such names cannot be registered under Sections 9(2)(b) and (c) of the Trademarks Act, 1999.
Certain brand names achieve "Well-Known" status and enjoy protection across all business categories, regardless of their trademark class. Ensure your chosen name is not listed as a well-known trademark.
For example, “Kadhi” is a recognized well-known name.
Generic abbreviations like ABC or XYZ lack distinctiveness and are difficult to register. Opt for unique and creative naming approaches.
Analyze the cultural significance of the name, especially if you plan to expand internationally. A preferred name in one language may have unintended meanings in another.
The name “Nova” means “doesn’t go” in Spanish, which could negatively impact sales in Spanish-speaking regions.
Before finalizing your brand name, verify the availability of a matching domain name. Securing a .com or .in extension is recommended to protect against cybersquatting. If you choose the name “Glowence,” ensure that “glowence.com” or “glowence.in” is available and secure it.
Once you finalize a brand name, apply for registration without delay. Any delay may give competitors the opportunity to claim your brand name.
Remember that the brand name is only one part of the brand elements. You also need to protect your logo, package design, and other elements that constitute your intellectual property.
