Updated on: Aug 30th, 2021
5 min read
The Trademarks Act, 1999 (‘Act’) regulates trademarks in India. Trademark is a distinctive mark, logo, symbol or band used by an individual or an organisation that distinguishes their services or goods from others.
The trademarks are registered as per the provisions of the Act. However, it is not mandatory in India to register trademarks. Thus, any organisation or individuals may have either registered trademarks or unregistered trademarks.
A registered trademark is a trademark registered under the Trademarks Act, 1999. Registration confers exclusive rights to the trademark owner, giving him the right to use the mark exclusively in relation to his services or products. The validity of the trademark registration is ten years and is subject to renewal.
Registration of a trademark helps to identify the origin of the services and goods and advertise them. It guards the goodwill of a trader and protects the public from buying low-quality goods. A registered trademark owner can sue others for infringement when they use a similar or identical trademark.
A civil and a criminal suit can lie for trademark infringement. However, no suit for infringement can be instituted for unregistered trademarks. The Act also facilitates trademark registration to be prima facie evidence of its validity.
Unregistered trademarks are trademarks not registered under the Act. Unregistered trademarks can be used in relation to goods and services, but they will not possess legal benefits under the Act. However, unregistered trademarks can get protection under the common law.
Though no suit for infringement is allowed for unregistered trademarks under the Act, they can obtain protection under the common law tort of passing off. However, to succeed in an action of passing off, it is required to establish that an unregistered trademark has a reputation or comparable goodwill in connection with the goods, business or services with which it is used.
The difference between registered trademarks and unregistered trademarks are as follows:
|Particulars||Registered Trademarks||Unregistered Trademarks|
|Protection under law||The Trademarks Act, 1999 protects the registered trademarks.||The common law protects unregistered trademarks.|
|Remedies under law||A suit for trademark infringement can be instituted for unauthorised usage of registered trademarks by third parties.||A suit for passing off can be initiated for unauthorised usage of unregistered trademarks by third parties.|
|Validity||Registration of a trademark is the prima facie evidence of its validity. Thus, the trademark possesses evidential value from the time of its registration irrespective of its recognition from the public.||It is the liability of the owner to prove the value and goodwill of the unregistered trademark. It gains protection only after it earns its reputation from the public.|
|Burden of proof when challenged||The burden of proof of the trademark legality lies with the party opposing it.||The burden of proof of the legality of the trademark lies with the owner of the mark.|
|Duration||The trademark registration is given for ten years and can be renewed upon the expiry of its period of registration.||It is the liability of the owner of the unregistered trademark to prove the duration or length of time for which the reputation of the services or goods exists or existed in the market.|
|Enforceability||Registered trademarks are recognised and protected across the nation.||Unregistered trademark has protection in a limited or specific area where it has gained reputation.|
|Application of symbol||The registered trademark owner can use the ‘TM’ symbol upon application for registration and the ‘R’ symbol upon its registration, signifying its registration under the Act.||The unregistered trademark owner can use the ‘TM’ symbol but not the ‘R’ symbol.|
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