When we think about at start new business and using an existing Trademark certificate. We brings many challenges, including the need to create a distinct identity that stands out. One important aspect of building this identity is selecting a brand name and logo. However, the question that often arises is. Can you legally use an existing trademark registration certificate for a new company. If it is in a completely unrelated field? While the idea might sound appealing, the legality is complex and needs careful consideration.

We’ll break down the legal implications, the pros and cons, real-life examples. How AI can help you during find out search for trending brand names and avoid trademark infringement.

What Is a Trademark?

A trademark is a symbol, word, or combination that distinguishes goods or services of one business from those of another. It represents the identity of a brand and often holds immense value. In India, trademarks are registered under the Trade Marks Act, 1999. Which provides protection to the owner by granting exclusive rights to use the mark for specific goods or services.

When a business registers a trademark, it creates a legal barrier against others. Using the same or similar mark for similar goods or services. However, the question of using an existing trademark in a new and unrelated field often creates confusion.

Legal Implications of Using an Existing Trademark

Generally, using an existing Trade Mark Registration certificate for a new company is illegal. If it creates confusion in the market or dilutes the value of the original brand. However, there can be exceptions. If your new business is in a completely different industry. If the trademark is not registered in that category, you might have a case. But, you must tread carefully.

Trademark Classes: A Key Consideration

India uses the Nice Classification system, which divides trademarks into 45 classes of goods and services. If the trademark you wish to use is registered under a specific class. And your new business falls under a different class, theoretically, you might be allowed to use it. But beware: well-known trademarks are protected across all classes.

For example, Tata Group has its name and logo registered in multiple classes. Even though Tata Motors operates in the automotive sector, the name “Tata” is protected across various industries. Using “Tata” for a new brand, even in an unrelated industry, could result in legal consequences.

Pros of Using an Existing Trademark

While it’s risky, there are a few perceived benefits to using an existing trademark. Especially if it’s not well-known or if it’s in a different class.

1. Brand Recognition: Using a recognizable TM Registration can give your new company instant visibility, as people might associate it with the original brand.
2. Consumer Trust: If consumers trust the original brand, they may subconsciously extend that trust to your new business, assuming the two are connected.
3. Cost-Effective Marketing: Leveraging an existing brand name can save on marketing costs, as you won’t need to build recognition from scratch.

Cons of Using an Existing Trademark

Despite the perceived advantages, the cons far outweigh the pros when it comes to using an existing trademark.

1. Legal Risks: The most significant risk is a legal battle. If the original trademark owner discovers your use of their mark, they can file for trademark infringement, leading to penalties and even a shutdown of your business.
2. Reputation Damage: Consumers may feel deceived if they realize your business has no connection with the original brand. This can result in negative publicity and loss of credibility.
3. Cease and Desist Orders: In most cases, the trademark owner will issue a cease-and-desist order, forcing you to stop using the mark immediately, leading to rebranding costs.
4. Dilution of Brand Value: For the original trademark owner, the unauthorized use of their trademark can dilute their brand value. As a result, they are more likely to pursue legal action.

Case Study: Indian Trademark Example

Let’s look at a real-world Indian example to illustrate the potential pitfalls of using an existing trademark.

Case Study: The case of M/s PhonePe Pvt. Ltd. v. M/s DigiPe Fintech Pvt. Ltd.

• Phone Pe is a popular digital payment platform in India owned by Flipkart, a subsidiary of Walmart.
• Digi Pe, a new entrant, launched its payment service with a similar name.
• Phone Pe filed a case in the Delhi High Court in 2021, alleging trademark infringement and passing off. They argued that the “Pe” suffix was closely associated with their brand.

The court ruled in favor of PhonePe, ordering DigiPe to stop using the name, as it created confusion among consumers. This case highlights the risks associated with using an existing or similar trademark, even if the services seem unrelated.

How to Use AI for Trademark Research in 2024

With the rise of AI tools, researching and selecting a trademark has become easier and more efficient. AI can help you avoid potential conflicts by analyzing existing trademarks, discovering trending brand names, and ensuring your selected mark isn’t too similar to a registered one.

AI Tools for Trademark Search

1. Trademark Now: This AI-powered tool allows businesses to conduct fast and complete trademark searches. It reviews databases, compares the visual and textual elements of trademarks, and predicts potential conflicts.
2. Name Mesh: AI can help generate unique brand names that are available for trademark registration. This tool safeguards that the names suggested aren’t already taken.
3. WIPO AI-powered Tools: The World Intellectual Property Organization (WIPO) offers AI tools that assist in examining global trademark databases for potential overlaps.

By using AI tools, you can find trending brand names that are creative, unique, and legally available for use, reducing the risk of trademark disputes.

Steps for Registering a Trademark in India

1. Choose a Unique Name: Using AI tools, find a name that is not only catchy but also available for trademark registration.
2. Conduct a Trademark Search: Use the India Trademark Registry’s online portal or an AI-powered service to confirm your chosen name isn’t already registered.
3. Apply for Trademark Registration: Once you’re confident in your choice, file an application with the Indian Trade Marks Registry. The process includes submitting a form with details about your business, logo, and the class under which the trademark will be registered.
4. Wait for Examination: After filing, your application will be examined by a trademark officer. If there are no objections, it will be published in the Trade Marks Journal.
5. Receive Registration: If no opposition is raised within four months of publication, your trademark will be registered, and you’ll receive a certificate of registration.

Indian Trademark Case Laws to Consider

Several cases in Indian courts have shaped trademark law, reinforcing the importance of uniqueness in branding. Here are some key judgments:

• Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court ruled that even in cases where the businesses are in unrelated sectors, the similarity in names could lead to confusion and dilute the original brand’s value.
• ITC Ltd. v. Britannia Industries Ltd. (2016): In this case, ITC sued Britannia over packaging similarities, asserting that visual elements (trademarks are not just words) are important in brand identity and can’t be copied.

Final Thoughts

Starting a new company in 2024 requires careful attention to brand identity. While it may seem tempting to use an existing trademark, especially if the businesses are unrelated, the legal and reputational risks are significant. It’s best to conduct thorough research using AI tools, consult with legal professionals, and confirm that your chosen brand name and logo are original and free of conflicts.

FAQs

1. Can I use a trademark if my business is in a different industry? Technically, yes, if the trademark is not registered in your business class. However, if the trademark is well-known, using it could still result in legal issues.

2. How do I check if a trademark is available? You can check the Indian Trade Marks Registry’s online portal or use AI-powered tools like Trademark Now for a more complete search.

3. How long does it take to register a trademark in India? Typically, it takes about 18 to 24 months for a trademark to be fully registered, provided there are no oppositions.

4. Can AI help in choosing a brand name? Yes, AI tools like Name Mesh and Trademark Now can help generate unique and legally available brand names.

5. Is it expensive to register a trademark in India? The cost of registering a trademark in India starts at around ₹4,500 for individual applications.

6. What happens if my trademark application is opposed? If someone opposes your trademark, the Trade Marks Registry will hold hearings to determine whether your application should be granted or denied and Learn More