Rights of registered and unregistered marks
What,
if any, protection is afforded to unregistered trademarks?
Even
though Section 24 of the Trademarks Act, 2009 provides that “no person shall be
entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered trademark”, but ‘passing off’ action can be
taken under Section 24(2) of the Trademarks Act, 2009 provides that “Nothing in
this Act shall be deemed to affect rights of action against any person for
passing off goods or services as the goods or services, as the case may be, of
another person or the remedies in respect thereof”. So, a remedy for the unauthorized
use of an unregistered trademark, Passing off is a common law of tort which is
most generally used to protect goodwill and reputation that is attached to
unregistered trademarks. Passing off is based on the principle that a person
may not pass off its goods or services as those of another person. In order for
a passing off action to succeed, the owner of an unregistered trademark must be
able to establish that its unregistered trademark has accrued goodwill or
reputation in connection with the products, services or business with which it
is used. The owner should also be able to establish that there is deceptive
similarity between its unregistered trademark and the trademark in question,
which is bound to lead to confusion among the general public.
What legal rights are conferred by a trademark registration?
A registered trademark confers a bundle of exclusive rights upon the registered owner under Section 25 of the Trademarks Act, 2009. The owner of a registered trademark can prevent unauthorised use of the trademark in relation to the products or services for which it is registered. Section 28 allows registration to be treated as prima facie evidence of validity. Section 28 also confers certain benefits on registration, including the following:
- Right
to exclusive use: Registration of a trademark shall, if valid, grant the
registered owner the exclusive right to use the trademark in relation to
the goods or services in respect of which the trademark is registered.
- Right to seek statutory remedy against infringement: The registered owner of a trademark can seek legal remedy in case of infringement of the trademark in the manner provided by the Trademarks Act, 2009. The owner may obtain an injunction and, at its option, either damages or an account of profits by instituting a suit against the alleged infringer.
If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
Various precedents
have held that a descriptive word which lacks inherent distinctiveness may be
refused registration under the Trademarks Act, 2009. In
order to trademark a descriptive mark, the owner of the trademark must show
that the mark has acquired a ‘secondary meaning’ in the marketplace.
Accordingly, considering that a descriptive mark proceeds to registration based
on acquired distinctiveness, there is no separate register for descriptive
marks. According to Section 4 of the Trademarks Act, 2009, only a book or
record to be called Register of Trademarks shall be kept at the the Trademarks
Registry wherein all registered trademarks with the names, addresses and descriptions
of the proprietors, notifications of assignment and transmissions; the names,
addresses and descriptions of registered users; and conditions, limitations and
such other matters relating to registered trademarks shall be recorded in
writing in prescribed manner.
Jun 23, 2023