The trademarks in India seek protection under both the Trademarks Act, 1999, and the common law. The Act predominantly lays its focus on the registration of trademarks and thereafter on the protection and prevention of misuse of trademarks.
A brand name does to a company what reputation does to a person. The brand name takes an organisation and its products or services to the next level in the corporate world. Further, the brand name renders the first and foremost rendezvous to a customer on behalf of the business. Here know how Trademarks Protected in India
If That’s the Kind of Importance a Name Bears, Should It Not Be Dearly Protected Then?
That’s precisely why it is registered and labelled a ‘Trademark’. According to the World Intellectual Property Organisation (WIPO), a trademark is a sign capable of distinguishing the goods or services of one enterprise from the other.
Trademark Rights in India
The trademark rights are protected in India by the Trademarks Act, 1999. The Act was predominantly brought into force to fulfil India’s international obligations after signing the TRIPS (Trade-Related Aspects of Intellectual Property Rights) agreement. In India, unlike patents and other intellectual property rights, trademarks’ ownership depends on who has been using the mark for the longest period of time.
Therefore, as far as a trademark is concerned, ‘first-to-use’ takes over the ‘first-to-file’ concept. Suppose ‘ABC Private Limited’ has filed for the trademark ‘ZOLA’ in 2017, but ‘XYZ Private Limited’ has been using the brand name since 1995 without registration. The authorised user for the trademark ‘ZOLA’ would be ‘XYZ Private Limited’ regardless of whether the trademark was registered.
Legal Stance of Unregistered Trademarks
The registration of trademark is not mandatory. Therefore, even if the trademark is unregistered, the common law comes to its rescue and offers protection under the law of Torts. The passing off of goods is therefore objectionable under common law. Passing off is the action of a party giving false claims and causing harm to the reputation and goodwill of another product or service. As per basic law, one party cannot unjustly enrich itself with the labour of another. A party stealing the trademark and the goodwill of another will amount to the same.
In a passing off suit, a Court typically considers the following:
- Whether the aggrieved party has been using the trademark for a considerable period of time
- Whether the goods or services of the plaintiff have acquired distinctiveness and if the general public is aware of the brand name
- Whether the defendant has created confusion in the minds of the general public to the extent that the defendant’s products or services would be treated as if they were the plaintiffs’.
Protection of Well-Known Marks
The Trademarks Act, 1999 extends its protection to trade names that are famous and well known amongst the general public. A mark is considered well-known based on its national and international reputation. The Act basically takes stringent action against the misuse of well-known marks. Also, it takes measures when a similar trademark is registered.
Protection of Registered Trademarks
In India, the protection offered to registered trademarks is multi-fold. This is one of the reasons why it is urged by Trademark specialists to have the trademark registered. However, it isn’t mandatory to do so.
The Trademarks Act, 1999:
- Bestows ownership of the trademark on the right applicant
- Provides statutory protection to the trademark against infringement
- Averts others from using a registered trademark illegitimately
- Entertains an infringement suit when the need arises.
Although an unregistered trademark is still protected under common law, the burden of proof here is more rigid on the plaintiff than it would have been in the case of registered trademarks.
Registrability of Trademarks
A trademark’s purpose is to distinguish the brand’s products from the others in the market. A trademark that seeks registration should therefore be unique and be capable of being represented pictorially or graphically.
This includes the goods’ shape, colours or combination of colours and its packaging. For instance, the shape of the Coca-Cola bottle is a registered trademark.
Although a trademark should be unique to be registered, a trademark can also acquire distinctiveness through prolonged usage. Even if a particular trademark is not unique, it can still be registered if it acquires distinctiveness through usage. The brand ‘Apple’ is an apt example of this.
Grounds Under Which a Trademark can be Refused to be Registered:
The registration of a trademark is subject to the decision of the Registrar. A trademark can be refused registration either on absolute or on relative grounds.
A trademark is rejected on absolute grounds when it is not unique or when it can possibly create confusion in the minds of consumers. It is rejected when it could hurt the religious sentiments of any class of people in India or if the mark promotes obscenity. Section 9 of the Act provides an exhaustive list of the absolute grounds for refusal of trademarks.
A trademark is refused on relative grounds if it’s deceptively similar or if it’s identical to an existing trademark. Further, a trademark can also be refused registration if it is liable to be prevented by any law in force.
For more information or to register your trademark, reach out to the experts at Vakilsearch.