Registering Maintaining and Enforcing Trademark Rights

Authors: Akansha Mittal, Amity University, Kolkata

Mahip Mayank, Faculty of Law, Delhi University

Rahul Sodhi, The Northcap University

Editor: Dyuthi S, Symbiosis Law School

Introduction:

Trademarks are nowadays becoming an essential element for the companies. The trademark helps them to stand out in the market and to attract the buyers towards their goods and services. With the emergence of competitive market economy, manufacturers began to identify their products by certain symbols, marks, or devices so as to distinguish their goods from similar goods manufactured and marketed by others. The necessity for protecting the goodwill and reputation of a trade mark was therefore felt in all nations which led to adoption of trade mar law everywhere. According to Section 2(1)(m) of the Trademark Act, 1999 Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, shape of goods, packaging or combination of colours, numeral shape of goods, packaging or combination of colours or any combination thereof.” Mark is an essential element as it lays down the foundation for the Trademark; without which there would be no Trademark. A trademark is a registered Mark which is defined under the above said section, after registration of a mark it becomes a trademark defined under Section 2(1)(zb) of the Trademark Act, 1999 defines “Trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” Trademark is made for recognition and distinguishing the goods and services from all other competitors. According to Article 15 (1) of TRIPS agreement, Trademark means any sign or combination of signs which can distinguish the product from any other product.

Types:

  • Service marks: A service mark is the same as a trademark, but instead of a particular product, it identifies and differentiates the source of a service.

  • Collective marks: These are the trademarks used by a group of companies and can be protected by the group collectively.

  • Certification marks: It is a sign indicating that the goods/services are certified by the owner of the sign in terms of origin, material, quality, accuracy or other characteristics.

The main functions of trademark are therefore identification, source, quality and advertising. The essentials of trademark include it should be a mark, it should be capable of distinguishing the goods or services of one person from those of others.


Registration of Trademarks

Trademarks are classified as intellectual property and are, therefore, shielded from infringement. However, to be protected, a trademark needs to be registered first. Unlike patents, trademarks do not have a fixed limitation period. It expires after 10 years but can be renewed again for 10 years, indefinitely, to get continued protection under the Trademark Act, 1999. Registration is recommended as non-registration leaves the company without many legal benefits. Further, they are liable to losses, in the form of goodwill and profits because of infringement of their trademark[1] by others.


Any individual, company or LLP[2] may register a trademark by approaching the Trademark Registry[3]. The first step is choosing a unique and distinct mark for use as a trademark after identifying the category of goods and services under which the trademark is to be registered[4].

The next step involves ensuring that the chosen trademark is unique. This may be done by going to the website of the Controller General of patents, designs, and trademarks. Another alternative is to go to legal services that provide help throughout the whole process.


Post the above, the next step involves selecting whether the trademark is to be registered under one class or multiple classes. Following which the appropriate form is to be filled. The form must be filled carefully and filed, which may be done online, or physically. Online filing is instantaneous while physical filing may take 15-20 days.


Thereafter, an allotment number is given after one receives the confirmation of the filing of the application which can be used to check the progress of the application online. In case of perfect filing, the approval or rejection of the application is conveyed in about 18-24 months and may take longer. Once the trademark is approved, a trademark registration certificate is provided by the registry.


In the online counter-part, some additional supporting documents like Business Registration Proof, soft copy of the trademark, and proof of claim of proposed mark have to be submitted along with the application. The next step if the publication of the brank in Indian Trademark Journals. This is the most important part and requires that there be no opposition to the trademark within 90 days (or 120 days in some cases) from the date of publication for the brand to be accepted after which the Registrar accepts the application and issues the registration certificate with the Trademark Registry Seal.


Enforcement and Protection of Trademarks

Trademark protection gives exclusive rights to the applicant who has issued the trademark, these rights have been given to the applicant to prevent any unlawful and unauthorized use of the mark by any third person.


Infringement can be defined according to The Trademarks Act 1999. A registered trade mark is said to be infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. If the usage of trademark was by any person other than registered proprietor then suit of infringement can be filed in the court.


If the two marks have a degree of resemblance by phonetic, visual or the basic ideas represented by the registered proprietor, then the Court may conclude the matter on the basis of whether the essential features of the mark of the registered proprietor has been found to be infringed upon.


Section 29 and 30 of the Trade Marks Act, 1999 specify the remedies against unlawful and unauthorized use of a registered trademark. The jurisdiction of the infringement suit is covered under section 134 of TMA, 1999. The Suit can be instituted before a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.

There exist both civil and criminal remedies for infringement as it is a cognizable offence. With respect to civil remedies, the suit for injunction has to be filed and eventually a perpetual injunction is generally granted upon merits of the suit. In temporary injunction the suit is for a stipulated time period until any order can be granted by the court for injunction. This would be of utmost concern to any aggrieved party because unless the court grants a permanent injunction, the other party can continue to use the mark and this would go against the very purpose of filing a suit of infringement or “passing-off”.


The Trade Marks Act, 1999 does not define “Passing Off”. However, an individual can claim his rights under the Act, even if the mark is unregistered under the law of “Passing Off”. Therefore, an action for passing off can also be filed by a person who does not have a registered trademark in India. There are five characteristics which have been mentioned under passing off that are:

  1. Misrepresentation

  2. The act must be made by the defendant in course of trade

  3. The prospective or ultimate customers of the plaintiff’s goods and services have been misrepresented,

  4. Such an act of misrepresentation is calculated to injure the business or goodwill of the plaintiff, and

  5. Such act causes actual damage to the business or goodwill of the plaintiff.

Infringement is the most common cause of action in taking up a matter before the court. But there are certain cases in which the court refused to entertain certain matters when there is a more appropriate forum available to the parties. The court invokes doctrine of forum non conveniens. Wherein, a court has a right to dismiss the matter when any other forum or another court has better availabilities for hearing the matter.


Additionally, Section 102 of TMA, 1999 deals with Falsifying and falsely applying trademarks. Section 103 and 104 deals with criminal penalties for applying and selling goods and services under false trademarks. The penalty ranges between imprisonment for not less than six months, which may extend to three years and with fine which shall not be less than fifty thousand rupees, but may extend to two lakh rupees.

Conclusion

In this article we have examined the basic statutory protections for registration of trademarks and protections against it’s infringement. However, the efficacy of the act and its protections are always under scrutiny. However, that is in part due to the informal nature of a large portion of our businesses. Due to the non-incorporation or registration of entities or intellectual property, it becomes vey difficult to hold infringers to legal accountability. Therefore, this legislation represents an important point in India’s transition to a more formal, and accountable economy. But in order to ensure and secure future progress, there is still a long road ahead.

[1] Violation [2] Limited Liability Partnership [3] Under the Trade Marks Registry (Est. 1940) [4] Out of 45 available categories listed.

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