Trademark in India-Basics
In today’s time, a brand is synomous with a trademark as a recalling or recognizable sign, like the cursive “M” logo instantly is associated with the Mcdonalds franchisee or the olden “V on W” logo for Volkswagen. The need for exclusive association requires a legal framework with penalties and provisions for enforcing exclusivity and associations. A well-known Trademark in relation to any goods or services means a mark that has become synonymous to the substantial segment of the public, which uses such goods or receives such services such that the use of such a mark in relation to other goods and services is likely to be taken as indicating a connection between the two marks
Trademark in India is based on:
- Usage and association of the mark with goods and services
- Allows exclusivity and brand value to the brands associated with the trademark
- Protection and penalties for misusing and utilizing the marks without licenses, assignment and counterfeiting.
India has a statutory legal framework enshrined under the Trademarks Act 1999 and the Trademark Rules of 2017 to protect the exclusivity of such trademarks and their immense brands value to the customers. In the light of the TRIPs amendment and awareness about the brands, trademarks and marks, India has implemented legal minimum standards and provisions for the protection and efficient procedures for enforcement. The examples being the recent case laws wherein legal actions were effectively utilized against counterfeit Domain Names, counterfeit goods and services utilizing known trademarks to advertise their own wares thus causing damage to the brands. The Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions for violation of the trademarks.
Infringement and Passing Off of Trademarks in India
In India both civil and criminal remedies are available for seeking penalties for infringement and passing off actions.
Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another. In a simple layman terms, the concept of Passing Off can be divided into the following elements:
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or services supplied by him.
4. Which is calculated to injure the business or goodwill of another trader.
5. Which causes actual damage to a business or goodwill of the trader by whom the action is brought.
In a passing off action based on the use of a mark or get up that the plaintiff should show that the disputed mark or get up has become by user distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public as indicating the plaintiff’s goods.
An infringement action is based on the concept of the usage of the proprietary right and deception over the use of the trademark in association with goods and services associated or known to be associated with a brand, goods and services.
Infringement vis a vis Passing Off:
An infringement action under the Trademark Act can result in the restraining of defendant from using the registered trademark whereas in a passing off action the defendant is restrained from selling the article without clearly distinguishing from the goods of the plaintiff.
An infringement action presumptively does not require the use of the mark. The proprietor could have never used the mark in the course of the business and still bring an action for infringement whereas in a passing off action the plaintiff must clearly establish that the mark by usage has become distinctive of his goods and services for which the mark was utilized by the proprietor in course of his trade.
Thus, in order to establish and to protect one’s brand and goodwill one needs to get the mark registered and needs to protect the same on regular intervals.