Updated on: Apr 21st, 2022
8 min read
A trademark includes a name, word, number, symbol, or a combination applied to products or services of a company or individual to identify and distinguish the goods or services of one entity from others. Trademarks provide the source of the goods or services. In short, it is a logo or brand name.
Trademarks are governed by the Trademarks Act, 1999 (‘Act’) in India. The Act grants a registered trademark owner exclusive rights to use it and authorises another entity to use it in return for a payment.
The Act grants the right to a registered and unregistered proprietor or owner of the trademark to stop others from unlawful usage of the trademark. The Act provides trademark protection against third parties who use it without authorisation from the trademark owner.
However, the legal protection granted to unregistered trademarks is limited compared to registered trademarks. Thus, even though the Act does not mandate trademark registration, it is better to register them to get broad legal protection of the trademark. The legal protection for registered and unregistered trademarks is discussed below.
The Act protects a registered trademark owner against trademark infringement or damage of reputation by another entity. A trademark infringement means an unauthorised usage of a mark identical and similar to a registered trademark by persons other than the registered owner of the trademark.
In such cases, the trademark owner can take legal recourse and file a suit against the person who uses the trademark without authorisation. A trademark registration provides the following benefits that are not available for an unregistered trademark in India:
The Act provides that the trademark registration will grant the exclusive right to the registered proprietor for using the trademark for goods and services relating to which the trademark is registered and to obtain relief of trademark infringement. The requirements to file a suit/case for infringement of a trademark in India are as follows:
The plaintiff should file a suit for a trademark infringement before the district court where the plaintiff resides or carries on business. The court can award the below remedies to the plaintiff in case of trademark infringement:
The court will not grant the relief of damages or account of profits in the case where the defendant satisfies the following two conditions:
In India, trademark ownership is determined on a first-to-use basis. Thus, the common law protects passing-off for unregistered trademarks that are in use. The trademark owner of an unregistered trademark can file a suit of passing-off against a third party for using his/her trademark.
Several judicial decisions have provided that a passing-off action means a misrepresentation made by a person in the course of trade to proposed or ultimate customers of a manufacturer of the goods or supplier of services, which:
Since the passing-off is a common law remedy, the burden of proof is on the plaintiff to prove the usage and prior right in the trademark. In an infringement case, the burden of proof is on the defendant to show that he/she did not use the registered trademark without any authorisation.
The passing off of trademarks is a tort action under the common law. It is mainly used for protecting the goodwill attached to an unregistered trademark. It is founded on the basic principle of law that one party cannot benefit from the labour of another party.
The courts will usually consider the following points in a passing off suit for trademark protection:
The plaintiff can file a suit for passing off of trademarks before a district court where he/she resides or carries on business. In a suit for passing off, the plaintiff needs to prove that he/she uses the trademark for the goods or services provided and the consumers recognise or associate the trademark with the plaintiff’s goods or services.
The court will award the following remedies in the case of passing-off:
The court will not grant the relief of damages or account of profits in the case where the defendant satisfies the court the following two conditions:
The Act also provides legal protection to registered and unregistered trademark owners against any person who:
The court awards the following punishment to a person who commits the above-mentioned offences:
The Act provides that a person is deemed to commit the offence of falsifying a trademark, when such person makes a trademark or deceptively similar trademark without the permission of the trademark owner.
Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.