Is Trademark Protection Available for Unregistered Marks

Trademarks that are not registered in accordance with the Act are known as unregistered. Trademarks that are not registered may be used in connection with products and services, however they will not be protected by the Act. Nonetheless, the common law provides protection for unregistered trademarks. 

Unregistered trademarks are not eligible for infringement lawsuits under the Act, but they are protected under the generally recognized tort of passing off. On the other hand, in order to prevail in a passing-off lawsuit, it must be proven that the unregistered trademark is associated with a reputable product, service, or enterprise.

The Trademark Act of 1999 provides protection for unregistered trademarks

Although the unlawful use of an unregistered trademark has very little protection from legislation under the Act on Trademarks 1999, it has a legal recourse under the law of torts in the form of passing off. Unregistered trademarks have statutory safeguards according to Sections 34 and 35 within the Trademarks Act of 1999. These sections just state that an earlier user of a trademark will receive precedence over subsequent users, even if the trademark is registered, protecting the interests of an unregistered trademark. 

As a result, the Trademark Act of 1999 attempts to safeguard the rights of a valid user of a mark based on prior usage, even though it does not offer any legal recourse for the unauthorized use of marks that are not registered. This clause protects former users’ rights and enables them to carry on with their businesses without worrying about being sued for trademark infringement by a later register a brand user of the same mark.

 

The fundamental components of an unregistered trademark

The subsequent characteristics are fundamental to an unregistered trademark:

1. As per the Trademarks Act 1999, the Trademark has not been registered.
2. An unregistered trademark’s owner uses the symbol “TM”.
3. Instead of being protected by the Trade Marks Act of 1999, it has protection by customary/common law.
4. The owner must confirm the product’s reputation, which forms the basis of its protection.
5. The owner of a registered trademark must provide evidence of its use in an instance of a dispute with another registered trademark that is identical or similar.

 

Protection of Trademarks That Are Not Registered

According to Trademark Act of 1999 Sections 34 and 35, unregistered trademarks are protected by statute. By simply stating that an earlier user of the trademark has precedent over later users, regardless of whether the brand is registered, these clauses safeguard the legal protection of unregistered trademarks.

India is a common law country that upholds both codified laws and common law principles. As such, it permits lawsuits alleging trademark infringement and passing off. Both passing off procedures and infringements are recognized by Trade Marks Act Section 135 of the Act. A trademark cannot be registered underneath Section 11(3) in the acts if the passing-off law that safeguards an unregistered brand is likely to hinder its use in India.

 

Passing off an unregistered trademark

The traditional common law of torts provided protection for the owner of a trademark that was unregistered before trademark legislation was passed. Trademarks that were registered or unregistered were both covered by the same protection. The underlying principle of passing-off is the fact that no one is allowed to claim ownership of another person’s assets as their own. Therefore, filing a lawsuit against passing-off is the appropriate course of action to pursue remedy in the event that trademarks are unregistered.

1. The claimant/owner must have been the prior user of the particular registered brand name/trademark, and it must be unique.
2. There must be a sizable amount of market acceptance and recognition for the particular trademark.
3. Your market reputation will suffer if someone copies or reuses your not registered brand.
4. Reusing your unregistered trademark will cause misunderstanding about it.
5. A false impression of the contested goods or services is given to customers, causing to misunderstanding and a link with the owner’s products and services.
6. This kind of deception has caused losses or damages for the owner of the registered brand.

Today, when applying for protection for a previously unregistered trademark, the relevant authorities will look at the aforementioned requirements. It must be clear that the defendant is deceiving the public and consumers by using a similar brand are registered, which harms the trademark owner.

Trademark infringement and unregistered utilization

Unregistered trademarks are recognized by the Trademarks Act in the same manner as registered trademarks. Conversely, someone who makes use of a previously unregistered trademark is not able to file a lawsuit alleging trademark infringement. It is put concisely in Section 3:

Nothing in this Act will impact the right of action or remedies available to anyone who passes off goods as the property of another, but it does prohibit anyone from initiating legal action to stop or recover damages for the infringement against an unregistered trade mark. 

Unregistered trademarks are shielded by the generally recognized tort of passing off, but they are not subject to infringement proceedings under the Act. However, in order to prove a passing-off allegation successful, one must be showed how an unregistered trademark is associated with goods or services that are reputable or have comparable goodwill.

 

Unregistered Trademark Drawbacks

1. One of the largest drawbacks of not having your trademark registered is that, in the event of a legal dispute, you will have to prove to the court that your unregistered brand has a positive reputation and is used to sell goods or render services.
2. It lacks the statutory rights granted by the Act on Trademarks, including the right to file a lawsuit according to Section 27 of that Act alleging infringement.
3. The burden of proof for intellectual property ownership rests with the individual who owns of an unregistered trademark, who must face the repercussions of their lack of documentation.
4. The burden of proof rests with the owner of a trademark that is unregistered in cases of dispute.
5. A trademark that is not registered will only be recognized in a few particular areas. Undoubtedly, it will reduce the register a brand’s awareness.
6. An unregistered mark’s owner must use “TM,” signaling that the trademark is not registered, rather than the letter “R.”

 

The necessities for passing for someone

The unregistered trademark user must meet these requirements in order for any action regarding passing off to be taken.

1. Kindness: An unregistered trademark needs to be well-known and have some goodwill in the industry for others to recognize it. The proprietor for an unregistered trademark who initiates a passing-off action bears the responsibility of demonstrating that his mark has gained a notable reputation in the industry. This market can now refer to both domestic and global markets.
2. Previously used: In the event that the first necessary condition is satisfied, an unregistered trademark user will not be successful in their action against passing off because Sections 34 and 35 of the 1999 Trade Mark Act stipulate that the rights of the prior trademark user will always prevail over those of subsequent users, even if the latter may be registered. Therefore, to safeguard their rights regarding an unregistered trademark, users will need to demonstrate that they had previously used the mark, making them qualified to file a lawsuit against passing off.
3. Damages: The party initiating the action regarding passing off must demonstrate that the misrepresentation caused him actual harm in terms of profit and business from being passed off by a third party. This condition is typically hard to show and necessitates looking into book accounts.
4. Evaluation: While the Trademark Act of 1999 grants certain rights and remedies to an unregistered trademark owners in conjunction with common law remedies, it also imposes certain obligations on him. Even if the legal owner of a trademark that is unregistered might think that filing a lawsuit for passing off offers sufficient protection, there are other conditions that must be met. The remedy will not be given to the owner if one or both of the two requirements is not met. The Trademark Act of 1999 has to be amended to include a clause stating that the court will penalize the party found guilty of passing off following its decision in the passing off case. This would have the deterrent effect of discouraging the party making the fraudulent representation and prevent others from employing such unscrupulous business practices.

In India, unlike many other countries, there is no requirement for trademark registration. Undoubtedly, unregistered trademarks are somewhat protected by law. But such protection is incomparable to the rights associated with a registered trademark.

Naturally, the burden of proof is lower for the owner of a registered trademark than for the owner of an unregistered trademark. It is advised to register a trademark due to its significance as proof and the advantages it provides.