Although registering a trademark creates an important layer of protection, it’s important to understand that registration of the mark under the Indian Trademarks Act is not the only condition for seeking protection of the trademark in India.
This article covers the following aspects of trademark litigation:
A trademark is a valuable asset as it serves as a means to identify the source of your goods and services to the public, guarantees quality and also acts as a mode of advertising your brand.
That’s why trademark litigation can get really ‘messy’ because the other owner (registered or unregistered) not only claims that you are infringing his rights but can also seek pecuniary damages, compensation and criminal prosecution.
In an event that two people both claim ownership of the mark, then, who would be infringing whom?
To decipher who holds the rights, it’s necessary to know how the rights to trademarks are acquired.
The rights of ownership can be claimed in the following ways:
Threats of a trademark include any acts or situation that questions the ownership of the mark. These are the following ways in which the rights of an owner can be threatened.
To avoid trademark litigation, the business takes several proactive steps to avoid infringement claims and Passing-off suits.
Avoiding charges begins even before you use (and register) your own trademark. It’s important to conduct a comprehensive trademark search, before settling on your own mark.
The goal here is to avoid the threats of claims on your mark by another owner. Therefore, to protect your mark, you need to understand how to select a unique mark. A mark should:
Trademark registration does not exempt a mark from litigation for infringement or passing-off. Both registered and unregistered trademarks can be challenged by another owner on grounds such as:
When a mark is registered under the Indian Trademarks Act, 1999, the owner is conferred with a statutory right. This gives him exclusive use of the mark to use with his goods and services for the class of goods and services in which the mark was registered.
The statutory rights also include the right of the owner to seek relief in case his trademark has been infringed. These remedies are mentioned in the Act under section 28 (1).
Infringement amounts to any use of the mark that violates the rights granted by the Act to a registered owner of a mark, with respect to the goods and/or services for which the mark was registered.
A mark that is merely deceptively similar will not constitute an infringement. The Act has clearly defined conditions that constitute infringement. Infringement is a situation where:
The Act provides for both civil and criminal actions against infringement. Both these actions can be initiated simultaneously, and are not dependent on each other.
The object of the Trademarks Act is to protect the rights of the mark owners and also provide the necessary services to avoid litigation as a result of the infringement.
A trademark opposition is a remedy available against infringement, even before a mark is registered.
When a trademark application is accepted by the Trademarks Officer, it is published and advertised in the Trademarks Journal for a period of 4 months.
This is an opportunity for any party to come forward with valid claims against registering the trademark.
If these claims are legitimate, the trademark application is rejected.
When instances of infringement occur within the jurisdiction of a Court (not lower than a district court), the Court can be moved to pass the following orders:
Under Section 103 and 104 of the Trademarks Act, the complainant can move the court to order criminal punishments against the infringer. This includes:
A trademark registration will not stop or prove infringement.
It is the sole responsibility of the owners of the mark to identify infringement and also prove that essential features of his mark were infringed upon.
If an owner of a mark is aware of infringement and yet doesn’t contend it, then this acquiescence and delay in taking legal action can be questioned by the Court when he decides to challenge the infringing mark later.
Under Section 57 of the Act, any person who is aggrieved by the registered trademark can file an application to the Intellectual Property Board (IPAB) for the cancellation (or rectification) of a registered mark.
The basic principle of the law of passing-off is:
No one can ‘pass-off’ the goods and services of another as his own.
The action of passing-off is defined under the common law in India. Here is a look at the key features of a passing-off action.
In India, in an instance of infringement, a composite suit is filed for both infringement under the Trademarks Act and passing-off under the Indian Penal Code. This is because:
A registered and unregistered owner of a mark can initiate of passing-off if he has:
In case the owner of a mark faces an infringement, passing-off or composite suit, then the following legal defences can be adopted to safeguard his interest in the mark. He can build a good defence against the claims of the plaintiff if he can prove at least one of the following:
The best way to protect your trademark is to create one that is unique, making it easier to defend and protect. When choosing a trademark, think about the strength of the trademark. For instance, a descriptive mark is the weakest, whereas unrelated words and unique names make it the strongest. It’s always best to consult a professional and conduct a trademark comprehensive search before you actually use and register your mark.