A trademark is a distinctive sign or an indicator used by an individual or an organization. It is applied to the articles of commerce 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 complies with the TRIPS 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 colors.”
A trade mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors. 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 specific benefits and drawbacks.
Registered Trademark:
A “registered trademark” confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark about the products or services. Registration of a trademark is not a mandatory requirement in India. A brand is registered for ten years and is subject to renewal. The Trademarks Act 1999 governs the whole process of registration. Registration is required for the following reasons:·
-It identifies the origin of goods and services;
-Advertises goods and services;
-Guards the commercial goodwill of a trader; and
-Protects the innocent public from buying the second rate of quality goods.
The Trademarks Act also provides specific incentives for registration through its various provisions. Chapter 4 of the Trademarks Act deals with the 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 the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services.
Further, the registered trademark can obtain relief in respect of infringement of the brand 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 registered trademark owner to prevent unauthorized 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 about 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.
Unregistered Trademarks:
An “unregistered trademark” does not possess legal benefits. But in some cases, an unregistered trademark may get common law benefits.
Under the Trademark Act, unregistered marks are those not registered concerning goods or services (names, marks, or logos used in connection to a business). Though under s. 27 no action for infringement is allowed for unregistered trademarks. But, they can still be protected using the common law tort of passing off. To succeed in such an action, it is necessary to establish that an unregistered mark has comparable goodwill or reputation in connection with the product, service, or business with which it is used.
Thus, the owner of an unregistered trademark may be able to prevent the use by another party of an infringing mark under the common law tort of passing off. The action against passing off is based on the principle that a man may not sell his goods under the pretense that they are another man’s goods.
Passing Off:
Passing off is a species of unfair trade competition. Notably, one person seeks to profit from the reputation of another in a particular trade or business. There are certain essential ingredients of passing-off action.
-The plaintiff has to prove that there is a similarity in the trade names;
-The defendant is deceptively passing off his goods as those of the plaintiff;
-There is bound to be confusion in the minds of the customers.
-The test to be applied whether a man of average intelligence and imperfect recollection would be confused.
Difference between unregistered and registered trademarks:
The primary difference between the two is regarding protections available for registered 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 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 during trade, which is well known to the public in India.
Apart from this, there are different symbols representing both. A registered trademark is represented by the symbol ®, and an unregistered trademark is represented by the trademark symbol ™.
The Trademarks Act deals with the laws relating to trademarks in India. Unlike other legislation in various 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, and the registered trademark maintains a statutory right of infringement. Hence, it is advisable to get trademark registration owing to its evidential value and the incentives provided.