Transcript Slide 1
One of the first and very important things one has to do
with respect to starting a company is finding a suitable
name. While it is important to be creative and take into
account market research and economic and strategic
factors while deciding the name, something that people
often overlook is the law.
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Why you should get name of your
company registered?
If you do start a business with the same name by
mistake, you may be taken to court and made to pay
compensation apart from being forced to discontinue
using that name. That’s potentially damaging in terms
of business because your clients/customers know you
by a name – changing it can confuse them, and in an
online market – makes you difficult to find. Also, if you
can not register a trademark yourself, that opens you
up to unfair exploitation by others who may use the
same name and get a free ride on your good will – or
make a bad name for you if they are providing
unsatisfactory services or products.
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Why you need to know the law
with in order to name your
company?
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Because while registering a Company or LLP, you need
to register the name with the Registrar of Companies
and for registering of companies, Central Government
has provided Companies (Name Availability) Rules,
2011 that you need to follow while selecting the name
for your company)
Secondly because you need to protect the name as a
trademark.
(A trademarked name is something that only one
business or individual can enjoy – if someone else has
already registered it – you can not use it at all)
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Guidelines to keep in mind under Companies (Name
Availability) Rules
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Naming your company:- Criteria of
selecting 6 names
You need to provide to the Registrar on the e-form no less than six
different names in order of preference, and the names should be
indicative of the main objects of the company.
Once the new rules made by Ministry of Corporate Affairs (MCA) is
given effect to, before applying for registration of a company, you
would be required to search on the MCA website for similar names
before and be sure that the proposed name is unique before
applying.
Then you need to do a trademark search for which several online
resources
are
available
such
as
<http://124.124.193.236/tmrpublicsearch/tmsearch.aspx>.
At
this
point you also need to identify the classes in which your services or
products belong.
The Fourth Schedule of Trade Mark Rules, 2002 provides a
comprehensive classification of the different types of trademarks
associated with different goods and services that can be registered in
India.
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What kind of names are
undesirable?
Section
20 of the Companies Act,
1956 states that no company should be
registered with an undesirable name.
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A name is considered to be
undesirable if: It is identical with or too nearly resembling
with name of a company in existence or a
registered trade-mark or a trade mark which
is subject of an application for registration,
of any other person under the Trade Marks
Act, 1999.
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What kind of names are identical?
Names are not distinguished with prefixes/suffixes, tense changes or
adding words like ‘The’ or ‘and’ or ‘co’ or ‘industries’ which are generic.
Names kept by adding such prefixes or so to already existing name will
be deemed as identical. The keyword(s) in the name must be
substantially different.
Even a different spelling of word does not work as long as the sound is
the same. If a there is a company named Intelligent Pvt Ltd, you can
not name your new company Intelizent Pvt Ltd or The Intelizent Pvt
Ltd.
Using different phonetic spellings or spelling variations does not
distinguish one name from another.
Addition of words to a name used by another company does not
distinguish one name from other
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Whether all kind of identical
names are prohibited? Are
there similarities that can be
disregarded?
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Following can be disregarded when
considering whether the proposed name is
similar to the already existing name:
The words Private, Pvt, Pvt., (P), Limited, Ltd, Ltd., LLP, Limited
Liability Partnership;
The words appearing at the end of the names – company, and
company, co., co,corporation, corp, corpn, corp.;
The plural version of any of the words appearing in the name;
The type and case of letters, spacing between letters and
punctuation marks;
Joining words together or separating the words does not make
the name distinguishable
The use of a different tense or number of the same meaning (eg
Chaar & Four or 3 & three)
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The addition of an internet related designation, such as
.COM, .NET, .EDU,.GOV, .ORG, .IN. even if “.” Is written as
“dot”
The following are permissible provided no objection by way
of Board resolution of the existing company is received:
• Different combination of the same words
• Exact Hindi translation of the name of an existing
company in English Also, the following are to be observed:
If the proposed name resembles that of a company in
liquidation, the name shall not be allowed for 2 years after
dissolution
• In case a company is liquidated under Section 560 of the
Companies Act, 1956 a similar name cannot be registered
until 20 years have passed after liquidation.
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Name must not suggest a
connection with Government or
international Institutions
The name should not contain (or imitates or somehow
conveys that there is a connection with) any of the
following mentioned in the schedule of Emblems and
Names (Prevention of Improper Use) Act, 1950:-
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United Nations Organisation,
World Health Organisation,
The Indian National Flag,
the Government of India or any State, a Department of any
such Government, or Republic or Union of India, any name
which may suggest or be calculated to suggest the
patronage of the Government of India or the Government
of a State; or connection with any local authority or any
corporation or body constituted by the Government,
Mahatma Gandhi, Pt. Jawaharlal Nehru, Shrimati Indira
Gandhi, Chhatrapati Shivaji or the Prime Minister of India
or the words Gandhi, Nehru or Shivaji,
International Civil Aviation Organisation,
Interpol,
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International Criminal Police Organisation,
World Meteorological Organisation,
Tuberculosis Association of India,
International Atomic Energy Agency,
Ashoka Chakra, Dharma Chakra,
the name of the Parliament or the legislature of any State,
or the Supreme Court, or the High Court of any State, or
the Central Secretariat, or the Secretariat of any State
Government or any other Government office,
Ramakrishna Math and Mission, Sri Sarada Math and
Ramakrishna Sarada Mission, Bharat Scouts and Guides,
International Olympic Committee, National Youth,
Auroville, The name of Sri Sathya Sai Central Trust, Sri
Sathya Sai, National Human Rights Commission.
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Key Words in the Name of a
company and Authorised
Capital Required (INR)
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1) Corporation – 5 crores
(2) International, Globe, Global, Universal, Universe,
Continental, Inter-Continental, Asiatic, Asia, Asian, World
being the first word of the name – 1 crore
(3) If any of the key words at (2) above is used within the
name (with or without brackets) or Hindustan,
Hindustani, Hindustanee, India,Indian, Bharat,Bhrarati, B
haratiya, Bharateeya, being the first word of the name – 50
lakhs
(4)Hindustan,Hindustani, Hindustanee, India,Indian, Bha
rat,Bhrarati, Bharatiya, Bharateeya is used within the name
(with or without brackets) – 5 lakhs
(5) Industries, Udyog, Industrial, Industry – 1 crore
(6) Enterprises, Enterprise, Products, Product, Business,
Manufacturing, Manufacture – 10 lakhs
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Conditional Pre-requisites before
the Company Name is Sought to be
Registered as a Trade Mark
If it is a word, or if it contains at least in part a word, then
that word ought to be easy to speak, spell and remember.
Invented words or coined words that cannot be found in a
dictionary as such form the best options for trade marks,
since they can seldom be used as a generic word for any
purpose.
One should always be careful to avoid selection of a
geographical name precisely for the same reason.
It is in the best interest of a person not to select as names
descriptive or generic names or names that describes
quality of a good such as best, perfect etc., or names which
have become customary in the current language or in the
established practices of related trade.
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Conditional Pre-requisites before the
Company Name is Sought to be
Registered as a Trade Mark
You should also give a thought as to whether the proposed
name could be offensive to any section of people, whether
it contains any profanity or words or phrases that are
generally considered a slur against any ethnic group,
religion, gender or heredity., or whether it is of such a
nature as to deceive the public or cause confusion.
An action that will always satisfy the combined tests of
both prudence and sound business sense will be to conduct
a thorough market survey and a search at the Trade Mark
Office before seeking to get a mark registered, so as to
know whether similar mark or marks have already been
registered or filed for registration.
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Who Can Make an Application for
Registration of a Company Name as
Trade Mark
In case of a company about to be formed, anyone may apply
for a trademark registration in his name for subsequent
assignment of the registration in the company's favor.
The application for registration has to be made in writing
to the Registrar of Trade Marks and it has to be filed in the
office of the Trade Mark Registry under whose jurisdiction
the principal place of the business of the applicant in India
falls. In case the principal place of business is outside India,
then the application can be filed in the office of the Trade
Mark Registry, under whose jurisdiction the place that has
been mentioned in the ‘address for service’ section of the
application (usually office of the lawyer appointed by the
person) is located.
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Legal Requirements for Registration
in India
The selected mark/name should be capable of being
represented graphically (that is in the paper form).
It should be capable of distinguishing the goods or
services of one undertaking in relation to which it is
being used from those of others.
It should be used or proposed to be used in relation to
goods or services for the purpose of indicating a
connection in the course of trade between the goods or
services and some person having the right to use the
mark with or without revealing identity of that person.
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Duration of Trade Mark Protection
Available in India
Term of registration of a trademark is ten years,
which may be renewed for a further period of ten
years on payment of prescribed renewal fees.
However, non-usage of a registered trademark for a
continuous period of five years is a valid ground
for cancellation of registration of such trademark
at the behest of any aggrieved party.
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Procedural Forms For Trademark
Transactions
The First Schedule of the Trademark Rule, 2002 prescribes different procedural
forms and necessary amounts of fees required for all trademark-related
transactions, of which some examples have been given below:
◦ For filing new applications- There are prescribed forms depending on the
nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
◦ To file a Notice of Opposition to oppose an application published in the Trade
Marks Journal- (FormTM-5).
◦ For Renewal of a Regd. Trademark- (Form TM-12).
◦ Surcharge for belated renewal - (Form -10).
◦ Restoration of removed mark - (Form TM-13).
◦ Application for rectification of a registered trade mark - (Form TM-26).
◦ Legal Certificate - (Form TM-46).
◦ Official search request for trademark - (Form TM-54).
◦ Preliminary advice of the Registrar as to the registrability of a mark - (Form
TM-55).
◦ Copyright search request and issuance of certificate - (Form TM-60)
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Necessary Special Documents
for Trade Mark Registration
Proprietorship concern: Full name and address of the
proprietor and true copy of identity and address proof.
Partnership concern: Full name and address of all
partners and true copy of related documents.
Company concern: full name and address of all
directors and true copy of related documents.
If one has claimed that the proposed mark is used
since before application in another country, then
evidence for such claim has to be provided.
Label of the proposed Trade Mark (Standard Label
size 9cm x 5 cm) has to be provided.
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Approximate Total Cost Involved in
Trade Mark Registration
The exact cost involved in the registration of a trademark will
depend on the following variables:
The number of trademarks one registers – (e.g., the name of
the brand, the company name, the business logo).
The number of classes under which one registers each logo.
The course taken by the opposition process (i.e. the existence
of opposition, number of opponents and the number of
replies filed, the number of one month extensions sought
over the maximum period, for each step of the opposition
process).
The amount of lawyer’s fees for the filing process and the
trademark search.
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Approximate Total Cost Involved in
Trade Mark Registration
Nevertheless, here's an approximate estimate If an application is for a single name or logo for goods or services
under one class only, then the application will cost around INR
10,000 as the fee component for application, if one files for a
word mark (that is, comprising of text) and a graphic mark under
two classes.
INR 1000 for a counter-affidavit in reply to an opposition.
INR 5000 to INR 15000 on the lawyer’s fees.
In addition to this, the trademark search, that is, the first step
which is conducted before filing the application, will cost around
INR 500.
Hence, the approximate total cost ought to range between INR
16500 to 26500.
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CONCLUSION
The step-by-step procedural details involved in
getting the company name registered as a
trademark and for filing an opposition to
somebody else trying to get a name already in use
registered as a trademark is beyond the scope of
this presentation.
Each stage of filing requires a fee prescribed
under the Trademarks Rules to be paid,
typically ranging from INR 500 to 2500.
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CONCLUSION
Starting a company without getting the name
registered as per the requirements of the Companies
Act, 1956 and the aforesaid provisions is now an
impossibility.
Obtaining trademark protection for the registered
company’s name is both a prudent action to take that
makes business sense as well as one that provides the
business concern with legitimacy, respectability as well
as legal rights.
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Thank You
Thanks to all of you for watching the presentation.
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management LLP