14 Dec 2018, 10:43 — 7 min read
A trademark is a distinctive sign, or an indicator used by an individual or an organisation and is applied to the articles of commerce so as to identify the products of one trader from those of another. The Trademarks Act, 1999, is the statute that lays down the laws for trademarks in India. The Trademarks Act is in compliance with the TRIPS (Trade-Related Aspects of Intellectual Property Rights) agreement.
According to Section 2 (zb) of the Trademarks Act, 1999, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and a combination of colours”. A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combinations. A trademark can be a registered trademark as well as an unregistered trademark. Registration is not mandatory in India, but it is advisable to do so. However, both have certain benefits and drawbacks.
Registered Trademark Vs Unregistered Trademark
A “registered trademark” confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services. Registration of a trademark is not a mandatory requirement in India. A trademark is registered for a period of 10 years and is subject to renewal. The Trademarks Act 1999 governs the whole process of registration. Registration is required for the following reasons:
The Trademarks Act also provides certain incentives for registration through its various provisions. Chapter 4 of the Trademarks Act deals with Effects of Registration. Section 27 of the act provides that no action for infringement can be taken for an unregistered trademark. But for a registered trademark, an action for infringement lies where the aggrieved can be sought civil and criminal reliefs. Moreover, section 28 of the Act confers certain benefits on registration. Registration of a trademark gives to the registered proprietor of the trademark the exclusive right to the use of the trade mark in relation to the goods or service. Further, the registered trademark can obtain relief in respect of infringement of the trademark in the manner provided by the Act. Section 31 of the Act enables registration to be a prima facie evidence of validity.
Benefits of Registered Trademarks
To sum up, registration gives a monopoly right to the mark in a particular territory. It allows the owner of a registered trademark to prevent unauthorised use of his mark in relation to products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. The infringement of registered trademarks can lead to legal suits and the burden of proof of the plaintiff is eased due to registration.
An “unregistered trademark” is one which does not possess legal benefits. But in some cases, an unregistered trademark may get common law benefits. Unregistered marks are defined as marks which are not registered in relation to goods or services (that is names, marks or logos used in relation to a business) under the Trademark Act. Though under s. 27 no action for infringement is allowed for unregistered trademarks, it can still be protected by means of common law tort of passing off. To succeed in such an action, it is necessary to establish that unregistered mark has comparable goodwill or reputation in connection with the product, service or business with which it is used.
Thus, owner of an unregistered trademark may be able to prevent use by another party of an infringing mark pursuant to the common law tort of passing off. The action against passing off is based on the principle that ‘a man may not sell his own goods under the pretence that they are the goods of another man’. Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business. There are certain essential ingredients of a passing off action.
Difference between unregistered and registered trademarks
The basic difference between the two is in terms of protections available for registered trademarks and unregistered trademarks. The former is a statutory remedy and the latter is a common law remedy. It is necessary to establish the infringing mark is identical/deceptively similar to the registered trademark in order to establish infringement. Unregistered trademarks may gain protection, where the goods and services have a highly significant position in the market. These trademarks are used in the course of trade which is well known to the public in India. Apart from this, there are different symbols representing the both. Registered trademark is represented by the symbol ®. An unregistered trademark is represented by the trademark symbol ™.
The Trademarks Act deals with the laws relating to trademarks in India. Unlike other legislation of various different countries, registration of a trademark is not mandatory in India. An unregistered trademark is also protected and has certain benefits. However, an unregistered trademark does not possess the statutory right of infringement. However, the registered trademark possesses a statutory right of infringement. Hence, it is advisable to get trademark registration owing to its evidential value and the incentives provided.
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Posted bySenthil Kumar Nageswaran
An experienced patent agent and trademark agent with Indian patent office [IPTO] and having vast experience in Intellectual Property Consulting & Management along with...