Nicolas Gutierrez Douënel
IP Advisor - India IP SME Helpdesk
Any European SME looking to expand their business to India should be very careful to take all the necessary steps to protect their intangible assets there before entering this new market (or any other market, for that matter). In effect, what this means that it should make sure that its intellectual property is duly protected in India: keep in mind that registered IP rights are territorial in nature, which means that they are only protected in the territory in which they have been registered. Trade marks, patents, design rights which have been registered in Europe have no legal weight in India and cannot be enforced there.
Consequently, any business wishing to set up shop in India should ensure that its brand and trade mark is duly registered in India.
One of the first steps to take when thinking about registering a trade mark in any given country, is to check whether it is available – that is to say, that there is not already a similar or identical trade mark registered in the given territory. It is absolutely necessary to not skip this stage of the trade mark protection process: failure to do so may lead a business to file an application for a trade mark only to see it rejected because it is too similar to a pre-existing one which had been registered years ago! This would lead to a considerable loss of time and money which was actually avoidable.
It is also important to note that this trade mark search should be conducted not only in the initial territory in which the business is set up: having successfully registered your trade mark in Germany, or even at EU-level through the EUIPO, in no way guarantees that the trade mark is actually available in India!
Conducting this trade mark search can seem scary and gruelling for any person who is not an expert in the field, and indeed, it is always recommended to seek expert advice from an IP expert when dealing with the protection of your intangible assets. This is especially the case when thinking about a new market such as India! Nevertheless, there exist tools to help you with this: freely-accessible databases in which you can check any given name for specific trade marks by typing the corresponding words in the search bar.
The European Intellectual Property Office (EUIPO) created the database TMView for this specific purpose. The idea behind the creation in 2010 of TMView, was the incorporation of the trade marks from around the EU into one single database, allowing easy and effective search among the participating EU national offices and EUIPO. TMView was originally launched with only trade marks from the databases of the Trade Mark Offices of Benelux, Czech Republic, UK, Italy, Portugal and of the EUIPO. Nevertheless it has grown into one the single largest trade mark database freely accessible for any European SME interested in finding about the availability of a trade mark in 72 IP offices, including those of all EU Member States as well as India!
Through the use of the TMView database, European SMEs can search for the availability of trade marks across the databases of 72 IP offices in one go, thereby saving up a tremendous amount of time.
In conclusion, EU SMEs which are thinking about internationalising and growing their business abroad should have in mind the existence of this tool and make use of it, as it represents an important resource which can save them many headaches by avoiding the filing of trade marks which were not actually available.
Finally, it should be noted that a similar service was also developed by EUIPO for registered designs rights. DesignView groups the content of databases from 67 different IP offices, including EUIPO, the national IP office of all 27 EU Member States, and India.
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