WHY IS IT ESSENTIAL TO REGISTER A TRADEMARK?

THIS ARTICLE WAS WRITTEN BY SOMYA JOTWANI, A STUDENT OF FACULTY OF LAW, DELHI UNIVERSITY.

INTRODUCTION:

The trademarks act, 1999 have the object to permit an enterprise by registering its trademark to obtain an exclusive right to use, share, or assign a mark. Trademark is a valuable property of any business. This act has been enacted to protect rights of trademark of business. It is an integral part of the firm strategy to differentiate its products and services from other competitors.

DEFINATION:

Trademark means a mark of capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and which may include shape of goods, their packaging, and combination of colors.

GROUNDS FOR REFUSAL TO REGISTER TRADEMARK:

• ABSOLUTE GROUNDS

Following types of trademarks cannot be registered:

1. Common or non –distinctive:

• Any trademark which are not capable of distinguishing goods and services of one person from those of another person.
• Any trademark which consist exclusively of marks or indications which may serve in trade to desiognate the kind, quality, intended purpose, value , geographical origins , or the time of production of goods or rendering the services or other characteristics of goods or services;
• Any trademark consists exclusively of marks which have become customary in the current language or in the bona fide and established practices of trade.

2. Confusing, obscene or prohibited trademark

• Any trademark which is likely to deceive or cause confusion.
• Any trademark which compromises of scandalous or obscene matters;
• Any trademark which consist any matter likely to hurt religious sentiments;
• Any trademark use of which is prohibited in Emblems and names (Prevention of improper Use) Act, 1950.

3. Trademarks regarding certain shapes

• Any shape of goods which result from nature of goods themselves;
• Any shape of goods which is necessary to obtain a technical result;
• Any shapes which give substantial value to the goods.

RELATIVE GROUNDS:

1. A Trademark shall not be registered if there exists like hood of confusion or the part of the public because of the following factors:
2. Its identity with the earlier trademark and the similarity of goods or services covered by trademark;
3. Its similarity to an earlier trademark and the identity of goods or services covered by trademark.
4. In case of dissimilar goods with identical or similar trademark will not registered if earlier trademark is well known trademark in India and the use of mark proposed to be registered could be unfair or detrimental to the proprietors of well known trademark.

INFRINGEMENT OF TRADEMARK:

A registered trademark is infringed when a person, other than a registered proprietor or a person using by way of permitted use, uses in course of trade. Unauthorized use of registered trademark is infringement of trademark. Whereas passing off action in respect of trademark which is not registered. Hence, infringement action can only be in respect of registered trademark, while passing of action can be in case of both registered as well as unregistered trademark.

Instances of infringement of trademark:

• Uses of deceptively similar mark;
• Use of mark which causes confusion because of identity/similarity;
• Unauthorized use of trademark or material intended to be used for labeling or packing of goods;
• Use of identical/similar registered trademark even on dissimilar goods, if the registered trademark has a reputation in India.
• Use of registered trademark in an advertisement and taking unfair undue advantage in the advertisement in bad light which is against reputation of that product;

INSTANCES WHERE THERE IS NO INFRINGEMENT:

• Where the use of such trademark is in relation to goods or services to indicate the kind, quality, quantity, etc.of the goods or rendering of services, or other characteristics of goods or services.
• Where a person uses the mark in relation to goods or services for which the registered owner had impliedly consented for use.
• Where a trademark registered is used in relation to parts and accessories to other goods or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin.
• Where the use is as per limitations and conditions in registered trademark.
• Purchase of goods bearing the registered trademark and then displayed for sale.

RELIEF IN CASE OF INFRINGEMENT /PASSING OFF:

Section 135 deals with reliefs which may be granted by courts:

• Injunction
• Either damages or an account of profit;
• Order for delivery of infringing labels and marks for destruction.

Damages can also be claimed, even if the trademark is not registered. This is called passing off action.

ASSIGNMENT AND TRANSMISSION:

• A registered trademark can be assigned by the owner of such registered trademark to any person with or without the goodwill of business concerened, in respect of all goods or services or some of the goods.
• It may be noted that assignment or transmission is not permitted, if by such assignment exclusive rights are created in more than one person in respect of same goods or services if it likely cause confusion.
• Similarly, assignment or transmission is not possible if that assignment it may happen that one person has exclusive rights in one part of India while another person has exclusive rights in respect of identical or similar trademark in another part of India in respect of same goods or services or associated goods or services.

IS IT ESSENTIAL TO REGISTER A TRADEMARK?

It is always prudent to register a trademark. If the trademark is not registered to enforce intellectual property rights will be very cumbersome and difficult for respective trademark user and he will be required to file a legal claim for “passing off” in the court. Such trademark user will require to factually establish:

• His brand already enjoyed some kind of goodwill
• The infringer misinterpreted his product as that of brand owner and
• That misinterpretation caused damage to the actual owner’s business.

In case of registered trademark, if any rival or a competitor firm uses a name similar or identical to registered trademark then owner of business only required to prove that it already owns a registered trademark and the similar mark used by the infringer for marketing his products.

The trademark owner is not required to prove that the brand is distinctive and reputation in the market. The court will typically ask the infringer top stop using the mark in relation to the products. Amount of damages should be awarded to the trademark owner.

If any other entity intends to use an identical a similar trademark, the registered trademark will appear in the search reports conducted by an entity. And such registry will reject the applications.

Registration can increase valuation of the business, which will be helpful for raising a financial investment, for a merger and acquisition with a strategic investor and such brand name will helps for licensing.

• .A trademark can be registered for the brand name, logos, symbol, signature, numerals or a website, shapes, images, trade dress, packaging, colors and letters (combination of both).

LEGAL EFFECT OF REGISTERATION OF TRADEMARK:

Section 31 of the Trademarks Act, 1999 stipulates that in all legal proceedings relating to trademark registered under the Act, the original registration and all subsequent assignments and transmission thereof shall be the prima facie evidence of its validity.

However as per Section 34, the proprietor or a registered user of the registered trademark is not entitled to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods or services in relation to which that person or predecessor in his title has continuously used that trademark from a prior date.