Protection of Unregistered Trademarks: Lawyers Advice
While rights holders face various issues with regards to securing and protecting the unregistered trademarks, but with no immediate or generous deals in India, the courts have begun to adopt an increasingly liberal strategy.
Rights holders face various difficulties with regards to keeping up brand value. With changing shopper inclinations, different features must be refreshed to keep marks new and intriguing. For various budgetary reasons, the main goal for rights holders is to look for the insurance of the essential trademarks, trailed by secondary marks and components including colors, portrayal, and slogans.
Where trademarks and their features achieve fame, there is the emergence of various copycats is not a long way behind. Regularly, a rights holder may have to face the direct encroachment on its mark of its through the utilization of an identical mark on contending items, unapproved utilization of elements of the trademark, or use of the trademark on totally different items. For the registered trademark the remedy has been provided under section 28, however for the unregistered trademark, the same has been provided under section 27(2). This section provides for the remedy of an unauthorized use of the unregistered trademark through the action of passing off. For a registered trademark, both the action of infringement and passing off is available however for the Unregistered Trademark only the latter action is available.
For proving the infringement, the only similarity of the goods has to be shown but for a passing-off action to be successful, the proprietor of an unregistered trademark must exhibit the following:
• The unregistered mark has gotten the distinctive nature of its products through use;
• Goodwill exists in the imprint for the proprietor;
• The disputed merchandise/goods or services make frivolous portrayals and convey on a relationship with the proprietor’s products and business;
• The portrayal is false and purposely made; and
• The proprietor has suffered or is probably going to suffer harm because of the deception.
The proprietor need not demonstrate that the consumers have been deceived or misdirected. It is adequate to establish just that the opposite party’s actions are of such a nature that is probably going to mislead general society into buying the products. Therefore proving the infringement of the unregistered Trademark has a higher burden than proving the registered Trademark. Whenever we need to prove the passing off, it is essential to show that the Goodwill and the Reputation of the mark have been affected. In order to enforce the rights of the unregistered trademarks, it is significant to prove that the particular mark has acquired the required Goodwill and the Reputation in the market. It is really not necessary that a particular Trademark should be used in India only to establish the Goodwill and the Reputation. The courts have actively stepped in protecting the unregistered trademarks in our country.
In the case of Kamal Trading Co. and Ors. v. Gillette U.K Limited, 1988 (8) PTC 1 BOM, the Hon’ble Bombay High Court has observed that the goodwill of any product doesn’t need to be limited to any particular country only because in the modern times the Trade has spread over the world and goods are transported to different countries as well. Therefore the goodwill of the trademark cannot be limited to our country only.
The action of the passing off is not a statutory right per se and the same is established with the goodwill and reputation of the business. It was laid down in the case of Harrods v. Harrodian School, 1996 RPC, 697, that the action of the infringement is the statutory right and is reliant on the validity of the registration of the mark. Passing off cannot be considered as the statutory or a proprietary right in the name or get-up of that product. It is independent of the statutory rights and is established by the Goodwill of the business.
Misrepresentation can also be considered as an essential element for an efficacious passing off action. Misrepresentation can be intentional as well as unintentional. What has to be seen is whether the defendant is selling his goods in such a way that a common ordinary man would confuse his good to that of the plaintiff’s. Either the element of the misrepresentation or any damage to the goodwill and the reputations required to be proved by the plaintiff for an interlocutory injunction. This was stated in the case of Athletes Foot Marketing Adm. Inc. v. Cobra Sports Limited, 1980 RPC 343.
It was further held in the case of, Hindustan Radiators Co. v. Hindustan Radiators Ltd., AIR 1987 Del 353, it was provided by the Delhi High Court that the goods and services of the owner should have attained distinctiveness in the goods and must be connected in the minds of the society or public as goods belonging to the plaintiff. The nature of the activity and the market of consumption of the goods of the parties to the passing off action must be the same. Moreover, the use of the same trademark or trade name by the defendant must likely injure the business reputation of the plaintiff.
The relief which is accessible in suits for passing off includes an injunction which restrains the further use of the mark, damages, an account of profits, or an order for delivery of the infringing labels and marks for destruction or elimination.
Even though the process of a passing off suit is identical for both the registered as well as an unregistered Trade mark, the burden of proof becomes much higher when it concerns the unregistered mark as instituting goodwill and reputation becomes a bit more challenging. If a proprietor has opted for the registered trade mark, he will always favor filing an infringement action over the action of passing off due to the various reasons mentioned above. Allowing unregistered trademarks, a certain extent of protection under the Act is an aid to many users who else wouldn’t have been able to get any kind of legal remedy for the violation of their trade marks.
Authored By: Adv. Anant Sharma & Bheeni Goyal