Trademark Protection: Everything You Need to Know

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.

Trademark Protection

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. 

Legal Protection for Registered Trademarks

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:

• It provides prima facie evidence of validity and ownership.
• It provides statutory protection.
• It helps to prevent others from unlawful usage of the trademark.
• It allows for filing a suit for infringement.

Protection Against Trademark Infringement

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 (the party filing the suit for infringement) must be the registered proprietor or owner of the trademark.
• The defendant (the party against whom the suit for infringement is filed) must use a mark deceptively identical or similar to the plaintiff’s trademark.
• The defendant must use the mark concerning the goods or services for which the plaintiff’s mark is registered.
• The defendant must use the mark in the course of trade, and it must not be accidental.

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:

• Temporary or permanent injunction.
• Account of profits, i.e. damages in the amount of the profits gained by the defendant from the infringement.
• Damages.
• Destruction of goods containing the infringing mark.
• Cost of legal proceedings.

Exception to the Grant Infringement Relief

The court will not grant the relief of damages or account of profits in the case where the defendant satisfies the following two conditions:

• When the defendant commenced using the trademark, he/she was unaware and did not have a reasonable ground to believe that the plaintiff’s trademark was recorded in the Trademark Register or that the plaintiff was a registered trademark user. 
• When the defendant got to know of the existence of the plaintiff’s right in the trademark, he/she ceased to use the trademark for the goods or services for which it was registered.

Legal Protection for Unregistered Trademarks

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:

• Is calculated to injure the goodwill or business of another party.
• Causes an actual damage to the goodwill or business of the other party.

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.

Passing Off Protection for Trademarks

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:

• Whether the plaintiff is the prior user of the trademark.
• Whether the plaintiff’s goods have acquired distinctiveness and the general public associate the goods with the plaintiff’s trademark.
• Whether there is any misrepresentation by the defendant regarding its goods and it is likely to confuse consumers in a manner that they might treat the defendant’s goods as plaintiff’s goods.

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:

• Temporary or permanent injunction.
• Account of profits, i.e. damages in the amount of the profits gained by the defendant from the infringement.
• Damages.
• Destruction of goods containing the infringing mark.

Exception to the Grant Passing-Off Relief

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:

• When the defendant commenced to use the trademark, he/she was unaware and did not have a reasonable ground to believe that the trademark of the plaintiff was in use.
• When the defendant got to know of the existence of the plaintiff’s trademark, he/she ceased to use the trademark.

Legal Protection Against False Usage of Trademarks

The Act also provides legal protection to registered and unregistered trademark owners against any person who:

• Falsifies the trademark.
• Falsely applies the trademark to goods or services without the permission of the trademark owner.
• Sells, hires, lets or exposes for sale of goods to which any false trademarks are applied.

The court awards the following punishment to a person who commits the above-mentioned offences:

• Imprisonment for a period not less than six months which may extend to three years.
• A fine that is not less than Rs 50,000 which may extend to Rs 2 lakh.

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. 

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