Choosing a Brand Name: Legal Checks Before You Launch

What legal checks should I do before choosing a brand name?

There are six checks, and the order matters. First, whether the name is distinctive enough to be registered at all. Second, a search of the trademark register for identical and similar marks in the classes you will trade in. Third, a search of the market for businesses using the name without registering it. Fourth, company and LLP names on the MCA records. Fifth, the domain and social handles. Sixth, ownership of the logo and any artwork.

Run them in that order because each one can kill the name, and the first two are the cheapest to run. There is no point buying a domain for a name the Registry will refuse as descriptive, or commissioning a logo for a word that is already registered by a competitor in the next town.

Do these checks on a shortlist of three to five names, not one. Founders who fall in love with a single name tend to explain away a conflict they should take seriously. A shortlist lets you drop the risky one without losing the launch date.

Is the name distinctive enough to register?

A name that only describes your product cannot be registered. Section 9(1) of the Trade Marks Act bars marks that lack distinctive character, and marks that consist only of words describing the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services. Words that have become customary in the trade are also barred. A bakery called "Fresh Bakes" or a pharmacy called "Quick Medicines" will meet a section 9 objection almost every time.

There is a proviso: a descriptive mark can be registered if it has acquired a distinctive character through use before the application date. That needs years of sales, advertising and evidence that buyers link the word to you alone. It is a route for established businesses defending an old name, not a plan for a new one.

The legally strongest names are invented words or ordinary words with no connection to the product. Suggestive names, which hint at a quality without describing it, sit in the middle and usually register. Marketing teams often want the descriptive name because it explains itself; the trade-off is that you may never own it, and competitors will be free to use the same words.

How strong is your brand name? The distinctiveness scale

The examples below are made up for illustration. Where a name falls depends on the goods: the same word can be descriptive for one product and arbitrary for another.

Which trademark classes should I search?

Search every class in which you will sell, plus the classes for closely related goods and services. India follows the Nice Classification: 45 classes, 1 to 34 for goods and 35 to 45 for services. A skincare brand sits in Class 3, but if it sells through its own website it should also look at Class 35 (retail and online selling). A restaurant is Class 43, but packaged sauces under the same name are Class 29 or 30. A software product is usually Class 9 and Class 42.

Do not stop at your own class. Section 11 refuses a mark that is similar to an earlier mark for similar goods or services, and similarity of goods does not follow class boundaries. Footwear and clothing sit in the same class; clothing and bags do not, but they are sold in the same shops and the Registry treats them as allied. A search confined to one class misses these.

Well-known marks are protected across all classes. Section 11(2) refuses a mark that is identical or similar to a well-known mark even for unrelated goods, where use would take unfair advantage of it or harm its reputation. The Registry publishes a list of marks it has declared well known, and courts have recognised others. If your shortlisted name echoes a famous brand, even in an unrelated field, drop it.

How to run a trademark search on the IP India portal

A basic search is free and anyone can do it. It tells you what is on the register; it does not tell you who is using a name without registering it.

1. Open the public search

   Use the trademark public search on the IP India website. Choose the word mark search, select the class, and search the name with the options for "start with", "contains" and "match with". Each option catches different conflicts.

2. Run a phonetic search

   The phonetic search finds marks that sound alike but are spelt differently, such as a name with K instead of C, or an extra vowel. Indian buyers often ask for a product by sound, so a phonetic match matters as much as a spelling match.

3. Search the logo by Vienna code

   For a device mark, find the Vienna codes for its main figurative elements (a lion, a leaf, a crown) and search those codes in your class. It is slower, but it is the only way to find similar logos with different words.

4. Read the status of each hit

   Results show registered, accepted, advertised, objected, opposed, abandoned, withdrawn and removed marks. Pending and objected applications still count; they may become registrations with an earlier date than yours. Abandoned and removed marks are lower risk but tell you someone was interested in the name.

5. Write down what you found

   Save screenshots or the result list with the date of search, the classes and the queries used. If a dispute arises later, a dated clearance record shows you chose the name honestly, which helps against an allegation of bad faith.

A search by a lawyer adds judgment rather than data: deciding whether a hit is similar enough to matter, and whether the goods overlap. That is where most do-it-yourself searches go wrong, in both directions.

How similar is too similar?

The test is whether an ordinary buyer, with an imperfect memory of the earlier mark, is likely to be confused. The Registry and the courts compare the marks as a whole, by look, sound and idea, and give weight to the dominant part of each mark. Adding a prefix, a suffix or a descriptive word to someone else's mark rarely saves it: "Velnora Naturals" against an earlier "Velnora" for the same goods will meet an objection.

Sound matters a great deal in India, where many products are bought by asking for them aloud at a counter, and where marks are written in Hindi and English. When Advocate B.K. Singh clears a name, he searches the obvious misspellings and the way the word would be written in Devanagari and spoken in a Delhi shop, because that is how confusion actually happens in the market.

The nature of the goods and buyers changes the threshold. Cheap goods bought quickly, and medicines, are judged strictly; expensive goods bought after thought by specialist buyers allow more room. Two similar names for industrial chemicals sold to factories may coexist where the same names for biscuits would not.

Unregistered prior users: the risk the register will not show

India protects a trader who has been using a name in the market even without registration. An earlier user can sue a later user for passing off, and section 34 of the Trade Marks Act means even a registered proprietor cannot stop a person who has continuously used the mark from a date earlier than the proprietor's own use or registration. So a clean register search is not a clean result.

Search the market too. Look up the name on Google and Google Maps, on Amazon, Flipkart and the quick-commerce apps, on Instagram, Facebook and LinkedIn, on Justdial and IndiaMART, and on the app stores if you are building an app. The GST search and the MCA company master data show businesses trading under the name, sometimes in a state you have never sold in.

A small local user is not always a reason to drop a name, but it is a reason to think. A sweet shop in Patna using your name since 2012 can stop you opening in Patna and may oppose your trademark application; it probably cannot stop you selling software across India. Weigh the size of the prior user, the overlap in goods and the places you plan to trade.

Does company name approval mean I own the brand?

No. MCA's approval of a company or LLP name only means the name is not identical or too similar to an existing company name under the incorporation rules. It gives no trademark rights, and it does not protect you from a trademark owner. Under section 29(5) of the Trade Marks Act, using a registered mark as your trade name or as part of your company name, while dealing in the goods for which it is registered, is itself infringement.

Section 16 of the Companies Act 2013 lets the owner of a registered trademark apply to the Central Government, within three years of a company's incorporation or change of name, for a direction that the company change a name identical or too nearly resembling the trademark. Once directed, the company has three months to change it. After that window the owner can still sue in court.

Run the trademark check before you file the company name, not after. If you are deciding on the business structure at the same time, our post on private limited company versus LLP covers that choice, and our company registration and incorporation page explains how we handle the filing.

Domain names and social media handles

Buy the domain and claim the handles before you tell anyone the name, including printers, investors and job applicants. Domains cost little and are taken quickly once a name leaks. Get the .in and .com versions, and the common misspellings if the brand will spend on advertising.

A registered domain is not a trademark, and a trademark does not automatically give you a domain. If someone has registered your brand as a domain in bad faith, there is a quick administrative remedy, which our post on domain name disputes under INDRP and UDRP explains. If the domain belongs to a genuine business using the same name for something else, the honest answer is usually to pick a different name or a different domain format.

Social media handles are allotted by the platforms under their own terms. They are useful, but they are not property you can sue over in the same way. A registered trademark makes impersonation and handle complaints to the platforms much easier to win.

Names you cannot register at all

Some names are barred whatever the market looks like. Section 9(2) refuses marks likely to deceive the public or cause confusion, marks likely to hurt religious feelings, scandalous or obscene marks, and marks prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950, which protects the national flag, the State Emblem, names and emblems of the UN and similar bodies. Section 13 bars names of chemical elements and international non-proprietary names of medicines as marks for those substances.

Section 14 deals with names of people: using the name or picture of a living person, or of someone who died within twenty years of the application, needs that person's or the legal representatives' consent. Do not build a brand around a celebrity's name or likeness without a written licence.

Geographical indications are separately protected under the Geographical Indications of Goods Act 1999. Names such as Darjeeling for tea, or other registered GI names, cannot be used for goods that do not come from that region. Some words also need a regulator's approval when used in a company name, for example words suggesting a bank, insurance or a stock exchange; check the current incorporation rules before choosing them.

Check what the name means in other languages and markets

Say the name aloud to people from different parts of India before you commit. A word that is neutral in English can be slang, a rude word or an unlucky number in Hindi, Punjabi, Marathi, Bengali or Tamil, and buyers will notice before you do. If the name is in Hindi or another Indian language, check what it means in English too, since the Registry asks for a translation and an examiner may treat a meaning that describes the goods as descriptive.

If export is on the cards within a few years, run at least a basic search in the main target countries now. A name that is clear in India may be registered by a large company in the UAE, the UK or the US, and finding that out after you have built a brand in India means selling under a different name abroad.

Who owns the logo your designer made?

Unless your agreement says otherwise in writing, the designer usually owns the copyright in the logo, not you. Under section 17 of the Copyright Act 1957, the author is the first owner of copyright. For drawings and artwork made by an outside designer or agency, paying the fee does not by itself transfer ownership; that needs a written assignment signed by the designer under section 19.

A point Advocate B.K. Singh often makes to founders is that the logo assignment should be signed before the final files are handed over, not years later when an investor's due diligence asks for it and the freelancer cannot be found. The assignment should name the work, cover all rights, state that it is worldwide and without a time limit, and deal with the designer's right to be credited. Under section 19, an assignment that is silent on duration is treated as five years, and one silent on territory as covering only India.

Check the fonts and images in the logo too. A logo built on a commercial font, a stock image or a free icon under a limited licence may not be usable as a trademark. If an employee designed it in the course of employment, the company owns it under section 17, but a clause in the employment agreement removes any doubt. Registering the logo as an artistic work is optional; our post on copyright registration explains when it is worth doing.

Brand name clearance checklist before launch

Tick each item for every name on your shortlist. Keep the printouts and screenshots with the date.

• The name is not a plain description of the goods, their quality or their origin.
• Word, phonetic and logo searches done on the IP India register in every class you will use and in allied classes.
• No identical or similar registered, pending or objected mark for similar goods, and no echo of a well-known mark.
• Market search done on search engines, marketplaces, social media, app stores, GST and MCA records.
• The name means nothing unfortunate in Hindi, Punjabi, Bengali, Tamil or other languages of your target markets.
• No national emblem, GI name, chemical or drug name, or living person's name without consent.
• Domain and social handles secured before any public mention.
• Written copyright assignment from the logo designer, with font and image licences checked.
• Trademark application filed in the name of the entity that will own the brand.
• Foreign markets identified, with applications planned within six months to claim priority.

When should I file the trademark application?

File as soon as the name clears, before you announce it. India allows an application on a "proposed to be used" basis, so you do not need to have sold anything. The filing date becomes your priority date against anyone who files later, and a registration, once granted, dates back to that day.

File in the name of the entity that will own the brand. If the company is not yet incorporated, a founder can file in his or her own name and assign the mark to the company later by a written deed recorded with the Registry; but do the assignment promptly, because a mark left in a founder's name becomes a bargaining chip if the founders fall out.

If you plan to sell abroad, the Indian application can be the base for an international filing under the Madrid Protocol, and under the Paris Convention an application made in most other countries within six months can claim the Indian filing date as its priority date. Decide on the key markets early, because once the six months pass, anyone who filed abroad in the meantime is ahead of you there. Our trademark and copyright registration page explains how we handle filings, Indian and international.

Mistakes founders make with a new brand name

• Using the R symbol before registration. Falsely representing a mark as registered is an offence under section 107. Use TM until the registration certificate issues.
• Treating a company name or GST registration as brand protection. Neither gives trademark rights, and both can be challenged by an earlier trademark owner.
• Searching only the exact spelling. A phonetic match or a Hindi rendering of the same word is just as much a conflict.
• Filing in only one class. If you will sell online, add retail services. If a product line is planned within two years, file for it now on a proposed-use basis.
• Choosing a descriptive name and hoping. It may be refused, and even if registered, competitors can use the same words describing their goods.
• No written agreement with the designer or agency. Ownership stays with them, and it surfaces at the worst time, usually during fundraising or a dispute.
• Announcing before filing. A press release or launch post gives anyone watching a chance to file first, in India or abroad.

What if a conflict appears after launch?

If a conflict surfaces after you have launched, take stock before you react. A legal notice from an earlier owner is not a court order, but it is the start of the record. Check the other side's registration and use, compare the goods and the markets, and work out what each side really needs. Many disputes end in a coexistence agreement in which each side keeps to its goods, colours or territory. Others end in a planned rebrand with a sell-off period for existing stock.

If your own application is opposed, you will have to file a counter-statement in time, and our post on trademark opposition explains how that runs. If you are sued, the claim will be for infringement, passing off or both; our post on trademark infringement versus passing off explains the difference. Some products also need protection for their shape or look, which a name does not give you; see design registration for the look of a product.

If you want an advocate to look at your shortlist and the search results before you commit money to a name, the team of Advocate B.K. Singh at B.K. Singh & Associates can review them and tell you which names carry risk and why. Write to us through the online enquiry form. The agreements around the brand, such as the designer's assignment, a licence or a coexistence agreement, are covered on our commercial contracts and agreements page.