How to protect your Trademark: Lawyers Advice
According to Section 2(zb) of the Trademark Act of 1999, a mark which is 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 the shape of goods, their packaging, and combination of colours is called a trademark.
If you want to ensure that your Trademark is not used by anyone, the law provides two options
- Registration of the Trademark under the Trademark Act of 1999
- Remedy against Passing-Off
If you are registering your Trademark or registering you brand name and logo under the Act, then your trademark is protected throughout India and you enjoy a period of protection for 10 years subject to renewal. By doing this you get an exclusive right over your trademark and in case someone uses your trademark and tries to bank upon the goodwill/reputation you have acquired then you have all the rights to file a suit against the infringement and demand for damages/injunction/criminal remedies etc. Further, Sections 18 to 23 of the Act provides the registration procedure that needs to be followed. To get your trademark registered you need to follow the procedure laid down in the Act i.e.
Whenever a trademark owner wants to apply for trademark registration such application must be filed before the Registrar of the trademark. It must be noted that the application must bear the application number, written description of the trademark, class, graphical representation of your trademark, and most importantly a piece of evidence that proves that you have the locus standi on the trademark.
In Whatman International Ltd v. P. Mehata, CS (COMM) 351/2016 Whatman received a massive compensation of 3.85 crores from Defendant for trading on its goodwill and causing damages to Plaintiff’s various intellectual property rights over the last 25 years. This was the most recent case in which the true value of a trademark was recognized, and the Defendant’s sale of counterfeited filter papers that were exact copies of Plaintiff’s Filter paper under various trademarks, as well as his acts of malafide intent, were permanently stayed.
In India, it is not compulsory to get your trademark registered under the statutory provision. Even if you have an unregistered mark and someone takes advantage of it, you can still claim for remedies against Passing-Off. This has been clarified in the case of Durga Dutt vs. Navaratna Pharmaceutical 1965 AIR 980, 1965 SCR(1) 737, the Supreme Court established the distinction between infringement and passing off. The action for infringement is a statutory remedy granted to the registered owner of a registered trademark, who has the exclusive right to use the trademark concerning those goods. Passing off is also available for unregistered goods and services.
The term passing off means that nobody in the market shall be allowed to represent once goods as the goods of someone else. To file a suit against someone under passing-off, the person bringing the passing off action must prove three elements/Classical Trinity test:
a. Likelihood of damage is caused
b. There has been misrepresentation leading to deception
c. Reputation has been hampered
In the case of Honda Motors Co. Ltd V Charanjit Singh & Others, 101 (2002) DLT 359, 2003 (26) PTC 1 DEL, the Plaintiff used the trademark “HONDA” in connection with automobiles and power equipment. Defendants began using the trademark “HONDA” for pressure cookers. Plaintiff filed an action against the defendants for the passing off the plaintiff’s business. It was determined that the defendants’ use of the trademark “Honda” would never be regarded as an honest use. The defendant’s use of it is likely to confuse the minds of the general public. The plaintiff’s application was sustained.
Hence, it is established that the law does not allow unfair competition in the market and tries to protect the interest of both the consumer as well as the producer. From the precedents, the courts have made their points very clear that nobody is allowed to bank upon the goodwill of someone else and deceive the consumer, and for this very reason it has kept in mind both the registered and unregistered goods in mind. So, if you want to protect your trademark from being used by others you can either protect it via registration or through remedies available against passing off.
Authored By: Adv. Anant Sharma & Swayamsiddha Das