Protection of Unregistered Trademarks | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |
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Trademark registration is not mandatory in India. There are two types of trademarks i.e. registered and unregistered trademarks. An “unregistered trademark” is one that has no legal protection. If a person has been using a mark for a long time for a specific product or service and has established a sufficient level of goodwill, the mark can be recognised as a trademark without being formally registered under the Trademark Act of 1999. Even if a mark is not registered, it may be covered under the common law tort of “passing off.” As a result, the owner of an unregistered trademark may be able to prohibit the use of an infringing mark by a third party under the common law of passing off. Under Section 27 of the Trademark Act, 1999, the owner or proprietor of such an unregistered mark does not have the right to sue for infringement. However, such a label qualifies for common law advantages.
How can I protect my Unregistered Trademark?
Even if an unregistered mark lacks the legislative protection that registered marks have, the law recognises unregistered marks that have gained ample reputation without registration. In the event that a registered mark is misappropriated, the right holder may file a trademark infringement lawsuit against the infringer. However, the right holder is entitled to seek protection under the rule of passing off for the infringement of unregistered marks. The idea that “a man should not sell his goods under the false illusion that they are the goods of another man” underpins a claim for passing off. The passing off law prohibits one individual from misrepresenting the goods or services of another. Passing off is a type of unfair trade competition in which one person attempts to benefit from another’s popularity in a specific trade or industry. The central issue in this tort is if the defendant’s actions deceive or mislead the general public, causing uncertainty between the two industries’ operations.
To enforce its rights in an unregistered trademark, the rights holder must show that the mark has gained goodwill and prestige in the particular region, as well as that the public identifies it with the rights holder. However, the issue is whether a mark’s use must be proven by local sales or whether foreign use can be considered. Initially, only the goodwill/prestige of an unregistered mark in a particular territory was taken into account. However, as trade becomes more globalised, the Indian Court has recognised the importance of trans-border trade recognition. That is, a mark that has developed a sufficient reputation in India but has not been registered with the Indian Trademark Office. But however Indian Courts have recently deviated from the traditional rule that products or services must be available in India to create goodwill or reputation. In the case of Kamal Trading Co. and Ors. vs. Gillette UK. Ltd (1988 (1) I PLR) it was held that, it is important to remember that goodwill is not limited to a single country because, in today’s world, trade is distributed across the globe and goods are transported from one country to another quickly and on a large scale, the Court said. Since the products are widely marketed in newspapers, periodicals, magazines, and other media even though they are not freely available, the manufacturer’s goodwill is not simply limited to the country where the goods are freely available. As a result, even if the products are not available in the world, the goods and the brand name under which they are sold gain widespread recognition. In a typical passing-off case, the Courts will look at whether one were a previous user of the mark; whether one’s brand/goods have acquired distinctiveness, a sufficient amount of goodwill and reputation in the market, and are associated in the minds of the general public with one’s mark; and whether the defendant made a misrepresentation about its goods.
In the case of SVS Oil Mills v. SVS Rajkumar (2002 (24) PTC 330 Mad) the Hon’ble Madras High Court has held that the defendant use of the word SVS with a small R print is considered to be confusing deceptive use and hence considered as a case of passing off. The Court ruled in favour of the plaintiff as the plaintiff was able to prove all the elements like honest and prior concurrent use of the mark, the goodwill attached and the association of the consumer with the mark and hence injuncted the defendant to use the mark in addition to that it also asked the defendant to pay the quantified damages.
Therefore, if the Entrepreneur is using an unregistered trademark for one’s business then one get the protection under the passing off remedy. But then it is always advisable to get one’s trademark registered as it will leave no room for others to bank upon one’s goodwill.
Authored By: Adv. Anant Sharma & Swayamsiddha Das