Trademark Search in India: The Definitive Guide

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Trademark search in India - The definitive guide for performing a public trademark search

Believe it or not, a lot of entrepreneurs find it challenging to choose a brand for their business. It is difficult not because they can’t come up with new names but because whatever names they come up with, a quick trademark search more often than not reveals that a majority of them are already being used by someone or the other. And, even if it is not practically used, for some finding a .com domain becomes a challenge.

Practically you can’t do much about the availability of a .com for that matter. However, what you can and need to do is to ensure that when you think of a trademark or brand name for your business, service or product; it is free of any trademark related issues. And the best way to do that is not to limit yourself to a quick trademark search but perform a thorough search for similar trademarks to ensure that your trademark doesn’t violate someone else’s trademark rights.


Trademark search – What, When, Where and Who (Part A)


The first step towards avoiding trademark conflicts is performing a full and thorough clearance search for trademarks (or brand names, trade names, company names, etc.) to ensure any related trademark issues can be eliminated to a greater extent.

A trademark clearance search is ideally performed prior to the adoption of the trademark and investing in the brand, and involves the steps of reviewing all similar trademarks registered, under the process of registration, or in use. However, you can also do it at a later stage if you are not sure that the trademark you are using is clear of any conflicts.

Although, it is practically not possible to perform a tm search endlessly for similar trademarks, a search on the following search databases is recommended to ensure that 99% of all possible future conflict situations are uncovered before it leads to any legal trouble:

  1. Trademark public search on Indian Trademark Office website
  2. Company / LLP name search on Ministry of Corporate Affairs (MCA) website
  3. International applications designating India under Madrid protocol
  4. Common law search

Ideally, such trademark searches or trademark registration searches should be done by trademark lawyers and / or agents, but I am going to provide you enough information on how to do it yourself before you decide to select your brand name (or file for trademark registration) and be emotionally attached with it forever. If you need professional help with search or filing and prosecution of the trademark, you should definitely consider seeking assistance from our curated list of professional premier trademark firms in India.

Please provide free quotes from top trademark law firms.

For your understanding, let’s go through the trademark search process with a hypothetical trademark ‘LOVEKART’ which we hypothetically wish to use for fashion and apparels. In this example, we will be limiting our search to the core class 25, which deals with clothing, footwear and headgear for illustration purposes.[1]


I. Trademark Public search in India

For the convenience of the public and users, the then Controller of Patents, Designs and Trademarks in a notification dated 13th January, 2011; made available free public trademark search on the IPO’s official website.[2]

Any trademark which has ever been filed with any of the five trademark registries in India is available during the public search of trademarks, whether registered or during the process of registration.[3]

The IPO’s search interface currently allows for three types of searches:

  • Wordmark
  • Phonetic
  • Vienna code

Select trademark search type on Indian Trademark SearchTo find similar trademarks, the most used search type used is that of wordmark.

A. Workmark search – The wordmark search allows for retrieving trademarks which use the same word as that of the query entered. The trademark office website allows for a search query with three options:

Wordmark search type options for public trademark search in India

  • Start with – This option provides results which start with the keyword entered. It is a good idea to start with the full trademark as the results will be very relevant. If no similar results are found, then break the word and try again.

E.g. ‘LOVEKART’ in class 25 (clothing) doesn’t provide any results, whereas ‘LOVE’ in class 25 gives more than 200 results.

  • Contains – This option provides results which start, end or contain the keyword anywhere. It is a good idea to always do this search as it much more comprehensive than the ‘start with’ and ‘match with’ options but usually is the slowest amongst the three search types.

E.g. a search for the keyword ‘LOVEKART’ in class 25 gives no results, hence confirming that there are no trademarks with this keyword either in the end or middle. However, the keyword ‘LOVE’ in class 25, provides more than 450 results. (Note that the ‘start with’ search type only provided around 200 results.)

  • Match With – This option provides results which are an exact match to the keyword entered. It is not very useful during trademark clearance searches. However, if you know the exact trademark and want to quickly find the relevant result fast, it serves the purpose.

E.g. For ‘LOVEKART’ no results are found in class 25. And for ‘LOVE’ only 4 results were found.

Search types

Boolean similarity Search speed Coverage

Result set

Start with

keyword*

Quick

Wide

All results starting with the keyword will be shown.

Contains

*keyword*

Slow

Wider

All results starting, ending or containing in the middle will be shown.

Match with

“keyword”

Very Quick

Narrow

Only exact match results will be shown.

Table: Three wordmark search types with features

B. Phonetic Search – The phonetic search interface searches for similar sounding trademark words. The trademark office website, however, provides no information in terms of how the system works at the backend. But this is a useful search type as it sometime provides results having a different spelling but a similar sound.

Although, the results are not perfect all the time but this search type is very useful if your trademark doesn’t pull out any relevant results during the wordmark search. It is highly recommended to also run the Phonetic search type in addition to the wordmark search type.

e.g. a search for ‘LOVEKART’ in class 25 under phonetic search gives over 20 results with a few slightly similar marks like Lovecare. Many of the results are not that relevant but sometimes the phonetic search results in magically relevant results. So it is worth spending some extra few minutes to be sure.

C. Vienna code search – Sometimes, a trademark application can also contain visual elements which may make it difficult to search for similar marks. India being a member of the Vienna convention, also follows the international classification of the figurative elements in a trademark.

Vienna classification is only applicable to marks with visual elements such as logos. Whenever a trademark application containing a visual design is filed in India, it is sent for Vienna codification to make it easy for searching later.

In order to perform a search for similar trademarks having visual elements, a search has to be performed by using the Vienna code (minimum six letters) along with the class.

Step by step guide to performing a detailed trademark public search in India

In furtherance of the features of the public search in India, let us look at a step by step approach to performing a public search for trademarks in India. We will be using the same hypothetical ‘LOVEKART’ trademark in class 25 for illustration purposes:

Step 1 – Identity all keywords

Prepare an exhaustive list of keywords similar to the trademark you wish to register. E.g. Lovekart, lovecart, luvkart, luvcart, love, etc.

Step 2 – Identify the relevant classes

The Indian trademark system is divided into 45 classes. In many instances, your goods / services may fall under more than one class. In such a scenario, it is a good idea to protect your business in each of the relevant classes. However, if you are strapped for funds and looking to protect in the core class, it is still recommended to perform a search in all the classes to ensure that the chances of future conflict are minimized.

e.g. clothing falls under class 25. However, other classes like class 24 for textiles, and class 35 for retailing services may also be relevant and you may want to cover those classes during the search.

Step 3 – Perform a Wordmark search

Public trademark search with keyword and class entered - example caseThe first step in performing a wordmark search is to select ‘Wordmark’ under search type. (It is the default selection)

  1. Then select ‘Start with’ option under Wordmark (also default selection)
    1. Enter the keyword ‘LOVEKART’
    2. Enter the class ‘25’
    3. Click the ‘Search’ button to start the search
    4. Repeat the above steps with the other keywords like lovecart, luvkart, love, etc. If there are other relevant classes, perform the same steps in other classes as well.
  2. View search results, detailed information and generate reports.Trademark search results and detailed information for a single trademark
  3. Print reports for future reference (optional)Computer generated public tm search report India
  4. Select ‘Contains’ option under wordmark and repeat earlier steps [Step 3.1.(1 to 4)] to view and generate report.

Step 4 – Perform a phonetic search

Select ‘Phonetic’ under search type. Enter the keyword and class to run the search. The results are a mixed bag with a lot of useless results but sometimes the search pulls some really useful results. Select the relevant results to generate reports as mentioned in earlier steps [Step 3.1.(1 to 4)].

Step 5 – Consolidate all relevant search results

After completing the search for all the keywords in all relevant classes, consolidate each of the shortlisted results in an easy to analyse manner. (Refer to the evaluation table at the end of the post)

Step 6 – Evaluate the shortlisted results

Review and evaluate the similarity of the shortlisted search results to your trademark. The evaluation should be based on visual and phonetic (sound) similarity. Additionally, you can rate each similar mark on a scale like:

Scale

Similarity Rating

Exact match

1

Very similar

2

Similar

3

Not very similar

4

No similarity / no relevant results found

5

As a general rule, the higher the similarity value (e.g. 5,4) the higher the chances of getting a trademark registered; and the lower the similarity value (e.g. 1,2), the lower the chances of getting a trademark registered.

Step 7 – Search on other databases

In order to perform a through trademark clearance search, it is equally important to not only rely on the Trademark Registry’s database, as many of the trademarks in use may not have been filed for registration with the trademark office.

Hence, for a through clearance search, it is recommended to perform a trademark search on other databases (like Madrid applications designating India, MCA company database, Common law databases) before making a final decision on selecting and protecting your trademark.


II. International trademark applications designating India

India joined the Madrid protocol for the International Registration of marks on 8th July, 2013; thereby allowing foreign trademark owners to cost effectively and easily protect their trademark portfolios.

Since, India can now be designated during international filings, it is important to ensure that a search for international trademark designating India is also performed during the trademark clearance search process to avoid any complications subsequently.

Romarin - International Trademark search for India designated trademarks

The search can be performed on the Romarin database. There are three parameters which are important to be searched.

  • Mark – Enter your keyword which you need to search. The database allows for the use of search operators like *. A search query like *keyword* will show results similar to the ‘contain’ search in India and is recommended.
  • Nice classification – Since, India also follows the same classification system, just enter each of the classes you are interested in searching. The advantage of this database is that you can enter multiple classes separated by a comma.
  • Designated Contracting Parties – Since, we are primarily interested in countries which may enter India, simply enter ‘IN’, which is the two letter Wipo country code for India.

III. Ministry of Corporate Affairs

The Ministry of Corporate Affairs maintains a record of all incorporated organisations. If a trademark is selected which is similar to the name of an organization in India, the chances of conflict increases. Hence, performing a search on the MCA company name database is also recommended.

The MCA search portal provides an easy search option for both Company and LLP. Multiple keywords can be inputted simultaneously to view the results in a single interface.

MCA company and LLP search interface

MCA company and LLP search results


IV. Common law databases

Since, trademark law recognizes prior usage of a trademark even if not registered, hence, a search for similar marks not yet filed for registration is also advised.

A common law search can be performed on business directories, yellow pages, search engines, etc. At least a search on search engines like Google is advised as such a search can cover a lot of common law databases.


Evaluating the chances of registration and avoiding conflicts (Part B)


Once you have performed the search for each of the trademark names or brands and retrieved the results, the next step is to determine the chances of registration for each of the names you selected.

I personally prefer to simply grade the results on a scale of 1 to 5, with 5 meaning the trademark I have has very high chances of registration as no similar trademark was found and 1 meaning that there was an exact match found in the database and the chances of registration are extremely slim. After entering all the trademark options, fill each column with the trademark similarity rating number. The trademark option with the highest total score will have the highest chances of registration.

Trademark options

Trademark office database score MCA database score Madrid database score Common law database score

Total score

Lovekart

Heartkart

Dilkart

Pyarkart

Evaluation Table

Trademark similarity rating scale:

Exact match

Very similar Similar Not very similar No similarity

1

2 3 4 5

This approach though simple to execute is not a substitute for legal advice. It is highly recommended to approach a qualified and experienced trademark lawyer to eventually provide you a trademark search and clearance opinion. However, you can use this technique to shortlist and identify a handful of trademarks from your list before you approach professional help.

Yes, i need an expert to help me register a Trademark


[1] In an ideal scenario, a search for related classes should also be performed.

[2] An online trademark search should always be performed on the official IPO’s website as the same database will be used by the trademark examiners during examination to decide the fate of the trademark application. Even if you use a third party search database, it is recommended to perform a concluding search on IPO’s official database to avoid any surprises later during the process of registration.

[3] Some really old trademark applications, which are not yet digitized may not be available.

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