In India, the statutory law that covers trademarks is The Trade Mark Act 1999; Trademark can be any mark, logo, symbol or brand that stands out and sets them apart from other competitive products and services.
According to the Trademark Act 1999, it states that in India, trademark registration is not mandatory. Many people, who need to be aware of the advantages of trademark registration, choose not to do so. Many of them disregard registration because they think it is time-consuming and one has to pay a good amount of money for its registration. As a result, there are a number of registered and unregistered trademarks in India.
What are Unregistered Trademarks?
According to the Trademark Act 1999, trademark registration is not required; hence, those not registered marks are referred to as unregistered trademarks. It applies to both the products and the services. Nevertheless, the protection they receive is quite limited compared to the legal protection provided to registered trademarks.
Unregistered Trademark Infringement in India
Let us assume that if any person/third party uses any mark and is not authorised to use it, then it will not constitute trademark infringement. Thus, One cannot file a lawsuit for trademark infringement under the Trademark Act 1999 in such a scenario. Under tort law, “passing off” is the appropriate remedy for the owner of an unregistered trademark.
Protection Given to an Unregistered Trademark Under Trademark Act 1999
Although the unauthorised use of an unregistered trademark gives a legal remedy under the tort law, which is the “doctrine of passing off”, it has relatively little legislative protection under the Trademark Act of 1999.
Both registered and unregistered trademarks have the option of pursuing passing off as a remedy, but still, only registered trademark misuse is eligible for filing an infringement lawsuit. Permanent injunctions, temporary injunctions, damages or an account of profits, surrender of the infringing times for destruction, and court costs are all viable remedies in both lawsuits.
India, a common law nation, upholds codified and common law principles. As a result, it offers infringement and passing off actions for trademark infringement. The Trademark Act 1999 has recognised both passing off and infringement under section 135 of the act. A person may not register a trademark even under section 11(3) of the act if the law of passing off that protects an unregistered brand may preclude its use in India.
In India, the one-time use of a trademark is given more authority than the registered owner. According to section 34 of the act, the registered owner of a trademark registration has no authority to interfere with or impede another person’s use of a similar trademark in connection with goods and services.
Now the question that arises is: what is passing off? The act of making false claims and tarnishing the name and reputation of another product or service is known as “passing off. According to fundamental law, anyone cannot unfairly benefit himself by using another party’s labour, and theft of any person’s Trademark and goodwill will have the same consequences.
There are certain criteria for passing off that the court considers while taking any matter which pertains to an unregistered trademark.
- Whether the person aggrieved and filed a suit has been using the Trademark for a long time is still being determined.
- Whether the products and services used by the plaintiff are unique and whether the general public is familiar with the Trademark used.
- The question is whether the defendant has caused enough uncertainty in the public’s perception such that the defendant’s goods or services would be regarded as the plaintiffs’.
Difference Between Registered and Unregistered Trademarks
- Protection under the law: The registered trademarks are safeguarded by the Trademark Act 1999.
- Remedies under the law: When a third party maliciously uses a registered trademark without the owner’s permission, in that scenario, a lawsuit for trademark infringement may be brought.
- Validity: The primary evidence of a trademark’s legality is its registration. Therefore, regardless of whether or not the Trademark has gained public recognition, it has value as of the time of its registration.
- The burden of proof: The person objecting to the Trademark has the burden of proving its legitimacy.
- Duration: After the expiration of the ten-year registration period, the trademark registration may be renewed.
- Enforceability: All around the country, registered trademarks are respected and safeguarded.
- Application of Symbol: The holder of a registered trademark may then use the “TM” or “R” symbol to indicate its registration under the Trademark Act 1999 when filing for registration and upon registration.
On another side talking about Unregistered Trademarks:
- Protection under the law: The common law protects unregistered trademarks in India.
- Remedies under the law: Unauthorised third-party use of an unregistered trademark India may give rise to a passing-off lawsuit.
- Validity: It is the owner’s responsibility to substantiate the worth and reputation of the unregistered brand. It only receives protection if it has earned the public’s trust.
- The burden of proof: The mark holder is responsible for proving the Trademark’s validity.
- Duration: It is the responsibility of the unregistered trademark holder to demonstrate how long the reputation of the goods or services persisted in the market.
- Enforceability: Unregistered trademarks are protected in a small or narrow range of markets where they have developed a reputation.
- Application of symbol: The “TM” symbol may be used by the holder of an unregistered trademark, but not the “R” symbol.
A trademark serves as a brand’s and a product’s identification. The rights derived from such a brand must be very carefully considered and understood. It is advised for a person to register his Trademark to take full advantage of the range of rights offered by the Trademark Act 1999. The Trademark Act of 1999 mentions unregistered marks. However, the owner of an unregistered trademark in India has relatively few legal rights.