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In India it is not mandatory to register one’s Trademark in order to get protection as one can anytime avail the remedy of passing-off. But, normally it is advisable to register one’s trademark associated with one’s business as the registration will act as a conclusive proof in the Court of law in situations where one’s Trademark rights are being infringed by a 3rd parties. In addition to that it also provides guarantee on the goodwill that is attached to the product. But many a times a person wants to register its trademark first and then start its business.

Can I protect my Trademark by Registering it before Commencing Business?
To answer this, we need to keep it in mind that the trademark in general sense doesn’t debar an individual, natural person, legal entity etc. for getting a trademark registration and owning exclusive rights over them. Which basically means that a person if today wants to get its mark registered can apply for registration in the trademark registration office provided that he shows that he has an honest intent of using the trademark later.

Under Section 47 of the Trademark Act 1999, it is provided that in case of non-use of registered trademark the registered trademark can be revoked. If the registered trademark is left abandoned for five years from the date of registration and three months’ prior application filing. This point was also discussed and highlighted by the Supreme Court of India, in the case of Kabushiki Kaisha Toshiba v. TOSIBA Appliances (3639 of 2008) the Hon’ble Supreme Court held that the main objective for using a trade mark that is being considered for registration must be valid and genuine. When a trade mark is registered, it confers an important and valuable right to the proprietor/owner of the mark, the division bench further continued and clarified that the rationale behind having a trademark is to differentiate between products produced by one individual and those produced by another. Hence, a person who does not want to use the trade mark in good faith or has no intent to use it should not have his product registered in order to prohibit anyone from doing so.

Summing it up, and keeping in mind the precedent it is safe to say that, Yes, one can register its trademark before the commencement of his/her business individually but then it has to show that it has applied the mark for registration with the intent of using it later.

Transfer of the Rights over the Trademark

1. Assignment: One can have the trademark assigned to one’s company by way of an agreement with or without the goodwill (assignment means transferring all of one’s rights to another person/entity) (if there is any). However, keep in mind that after doing so, one will need to apply to the Registry to have the Company recorded as a subsequent proprietor of the mark in the Registry’s records, which will add to the cost and expense, which one should have avoided by applying for the trademark registration of the company name and logo.
2. Licensing: Now, licensing would mean that one can retain one’s rights as the owner of the mark and one will remain listed as the owner of the registered trademark on the Registry’s records, but one can grant one’s company equivalent rights to use the mark in commerce and trade through a licencing agreement.

These are the modes in which way one can transfer one’s exclusive rights to one’s company. The reason to why do one need to transfer the trademark for one’s company is because the company in the eyes of law is treated as a legal entity and has separate rights as its own. Hence on starting of business one has to transfer one’s rights. but then as mentioned above one can also choose not to get one’s mark registered as it is not mandatory to have one’s mark registered. Therefore, one can always apply for trademark in India and/or for trademark and logo registration before commencing business and later on can transfer his/her rights over the same.
Authored By: Adv. Anant Sharma & Swayamsiddha Das