What Is Trademark Protection?
Trademark protection refers to safeguarding intellectual property rights to protect a trademark from counterfeiting and infringement. A trademark is an established or legally registered mark that identifies a manufacturer's unique goods and services.
The owner of a distinctive mark can apply to receive trademark protection. However, trademark protection also requires you to continually use the mark in commerce.
To protect your trademark from infringement and counterfeiting, you need to make sure your mark is not used by others, and you need to bring legal charges against those who use your mark without permission. By conducting research, you can develop a strong trademark or service mark that other competitors will find it difficult to steal.
Trademarks are governed by the Trademarks Act, 1999 (‘Act’) in India. The Act grants a registered trademark owner exclusive rights to use it and authorizes another entity to use it in return for a payment.
The Act grants the right to a registered and unregistered proprietor or owner of the trademark to stop others from unlawful usage of the trademark. The Act provides trademark protection against third parties who use it without authorisation from the trademark owner.
However, the legal protection granted to unregistered trademarks is limited compared to registered trademarks. Thus, even though the Act does not mandate trademark registration, it is better to register them to get broad legal protection of the trademark.
How can you stop someone from misusing or copying your trademark in India?
If someone is misusing your trademark or brand name, then an action of passing off or infringement can be taken against such entity.
For unregistered trademarks, a common law action of passing off can be initiated. The basis of this remedy is based on the principal that nobody is allowed to sell his goods as goods of another person. the owner of the mark has to prove that the two mark are either identical or similar and there is a likelihood of confusion.
For registered trademarks, a statutory action of infringements of trademarks. This remedy is conferred on the registered proprietor of a registered trademark under the Trademark Act 1999, for the vindication of the exclusive right to use the trade mark. The registered proprietor of a registered trademark only needs to prove the similarity between the marks and the likelihood of confusion is presumed.
Trademark Rights in India
The trademark rights are protected in India by the Trademarks Act, 1999. The Act was predominantly brought into force to fulfil India’s international obligations after signing the TRIPS (Trade-Related Aspects of Intellectual Property Rights) agreement. In India, unlike patents and other intellectual property rights, trademarks’ ownership depends on who has been using the mark for the longest period of time.
Therefore, as far as a trademark is concerned, ‘first-to-use’ takes over the ‘first-to-file’ concept. Suppose ‘ABC Private Limited’ has filed for the trademark ‘ZOLA’ in 2017, but ‘XYZ Private Limited’ has been using the brand name since 1995 without registration. The authorised user for the trademark ‘ZOLA’ would be ‘XYZ Private Limited’ regardless of whether the trademark was registered.
Legal Stance of Unregistered Trademarks
The registration of trademark is not mandatory. Therefore, even if the trademark is unregistered, the common law comes to its rescue and offers protection under the law of Torts. The passing off of goods is therefore objectionable under common law. Passing off is the action of a party giving false claims and causing harm to the reputation and goodwill of another product or service. As per basic law, one party cannot unjustly enrich itself with the labour of another. A party stealing the trademark and the goodwill of another will amount to the same.
In a passing off suit, a Court typically considers the following:
- Whether the aggrieved party has been using the trademark for a considerable period of time
- Whether the goods or services of the plaintiff have acquired distinctiveness and if the general public is aware of the brand name
- Whether the defendant has created confusion in the minds of the general public to the extent that the defendant’s products or services would be treated as if they were the plaintiffs’
Protection of Well-Known Marks
The Trademarks Act, 1999 extends its protection to trade names that are famous and well known amongst the general public. A mark is considered well-known based on its national and international reputation. The Act basically takes stringent action against the misuse of well-known marks. Also, it takes measures when a similar trademark is registered.
Protection of Registered Trademarks
In India, the protection offered to registered trademarks is multi-fold. This is one of the reasons why it is urged by Trademark specialists to have the trademark registered. However, it isn’t mandatory to do so.
The Trademarks Act, 1999:
- Bestows ownership of the trademark on the right applicant
- Provides statutory protection to the trademark against infringement
- Averts others from using a registered trademark illegitimately
- Entertains an infringement suit when the need arises.
Although an unregistered trademark is still protected under common law, the burden of proof here is more rigid on the plaintiff than it would have been in the case of registered trademarks.
Registrability of Trademarks
A trademark’s purpose is to distinguish the brand’s products from the others in the market. A trademark that seeks registration should therefore be unique and be capable of being represented pictorially or graphically.
This includes the goods’ shape, colours or combination of colours and its packaging. For instance, the shape of the Coca-Cola bottle is a registered trademark.
Although a trademark should be unique to be registered, a trademark can also acquire distinctiveness through prolonged usage.
Even if a particular trademark is not unique, it can still be registered if it acquires distinctiveness through usage. The brand ‘Apple’ is an apt example of this.
Grounds Under Which a Trademark can be Refused to be Registered:
The registration of a trademark is subject to the decision of the Registrar. A trademark can be refused registration either on absolute or on relative grounds.
A trademark is rejected on absolute grounds when it is not unique or when it can possibly create confusion in the minds of consumers. It is rejected when it could hurt the religious sentiments of any class of people in India or if the mark promotes obscenity. Section 9 of the Act provides an exhaustive list of the absolute grounds for refusal of trademarks.
A trademark is refused on relative grounds if it’s deceptively similar or if it’s identical to an existing trademark. Further, a trademark can also be refused registration if it is liable to be prevented by any law in force.
Created & Posted by Sony Garg
Accountant at TAXAJ
TAXAJ is a consortium of CA, CS, Advocates & Professionals from specific fields to provide you a One Stop Solution for all your Business, Financial, Taxation & Legal Matters under One Roof. Some of them are: Launch Your Start-Up Company/Business, Trademark & Brand Registration, Digital Marketing, E-Stamp Paper Online, Closure of Business, Legal Services, Payroll Services, etc. For any further queries related to this or anything else visit TAXAJ
Watch all the Informational Videos here: YouTube Channel
TAXAJ Corporate Services LLP
Address: 1/11, 1st Floor, Sulahkul Vihar, Old Palam Road, Dwarka, Delhi-110078
Contact: 8961228919 ; 8802812345 | E-Mail: connect@taxaj.com