Any word, phrase, a symbol, or just design that uniquely distinguishes your products or services or a mix of these is considered a trademark. It’s how customers recognize you in the industry and set you apart from the competitors. “Trademark” refers to the unique identity or reputation of a particular good or service. Commodities are identified by trademarks, and services are identified by service marks. register a brand name.
Unregistered Trademarks.
Trademarks that are not registered pursuant to the registered trademark Act are known as unregistered trademarks. An unregistered trademark may be protected under Trademarks Act of 1994 Section 5(4)(a). It is called “passing off” when someone defends an unregistered trademark.
A trademark has the potential to be both registered and unregistered. A “unregistered trademark” is one that has no legal protection. Without being formally registered under the Trademark Act of 1999, a mark may be recognized to be a trademark if it has been used for a certain product or business for a considerable amount of time and has developed a suitable level of reputation. A common law tort known as “Passing off” may nevertheless provide protection for an unregistered mark. Therefore, under the common law concept of passing off, the owner of a trademark that is unregistered may be entitled to stop third parties from using their mark infringing. According to S. 27 of the Trademark Act of 1999, the owner or the proprietor of an unregistered mark is not entitled to file a lawsuit alleging infringement. Yet, such a mark is entitled to common law advantages.
Unregistered trademarks can be protected.
Transnational reputation and the right to prevent dilution of unregistered trademarks were additionally recognized as legal rights as they have evolved. Both registered and unregistered trademarks are granted protection and rights in a variety of remedies under the 1999 Trademarks Act (henceforth referred to as “the Act”). Even though the Act’s Sections 28 and 29 grant a registered trademark statutory remedies, Section 27(2) of the Act allows for the protection of unregistered trademarks’ goodwill through use and reputation, as well as a recourse for the common law in tort for unauthorized utilization of a trademark that has not been registered through an action over passing off. Both authorized and unregistered trademarks may pursue passing off as a remedy; however, only registered trademark misuse may give rise to infringement litigation. Permanent injunctions, temporary injunctions, profits-related damages, delivery of any infringing items for destruction, and legal fees are among the reliefs that can be obtained in both lawsuits.
When contested, the burden of proof and validity
A trade mark’s validity can be shown through initial proof of registration, as stated in Section 31 in the Trade Mark Act. This indicates that in terms of evidentiary value and burden of evidence, the registration offers far greater advantages. Therefore, a trade mark’s legitimacy comes from its registration. Conversely, the burden of proof lies with the proprietor of a trademark that has not been registered to demonstrate the worth and goodwill associated with the product or service, as well as the fact that it has gained popularity and recognition from a significant portion of the general public. Additionally, the owner must be able to demonstrate that the unregistered trademarks and the in question have misleading similarities, and that the public will undoubtedly become confused if the subsequent mark is used.
The fundamental components of an unregistered trademark.
The subsequent characteristics are fundamental to an unregistered trademark:
Protection of an unregistered trademark.
According to Trademark Act of 1999 Sections 34 and 35, unregistered trademarks are protected by statute. By simply stating that an earlier use of a trademark takes precedence against later users, regardless of whether the brand is registered, these clauses safeguard the rights of trademarks that have never been registered.
India has both codified legislation and general legal principles as a common law nation. As a result, it allows legal actions claiming passing off and trademark infringement. Both passing off procedures and infringements are recognized by Trade Marks Act Section 135 of the Act. If a trademark’s utilization in India is going to be hindered by the passing-off statute that protect an unregistered brand, it cannot be registered, according to Section 11(3) in the Act.
Unregistered Trademark Passing Off.
The traditional law of torts provided protection for the legal 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 remedies if the event that trademarks are unregistered.
Now, when applying for protection against an registered 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 registration, which harms the trademark owner.
Trademark infringement and unregistered use.
The Trademarks Act treats unregistered trademarks in the same way as registered trademarks. Conversely, a user with an unregistered trademark is not able to file a lawsuit alleging trademark infringement. Simply stated, Section 3 states that:
No substance in this Act would affect a person’s right of actions or legal remedies if they pass off items as belonging to someone else, but it does forbid anyone from initiating legal action to stop or recover damages for the infringement of a previously unregistered trade mark.
A common law tort known as passing off protects unregistered trademarks from infringement claims, but the Act does not apply to them. However, it must be demonstrated that a trademark that has not been registered has a reputation or comparable goodwill in relation to the goods, companies, or services it is used with in order for a passing-off claims to be successful.
Unregistered Trademark Drawbacks.
Primary distinction between legal solutions based on unregistered and registered trademarks.
Actions for infringement are statutory remedies, but actions for passing off are common law remedies. In contrast to a passing off case predicated on an unregistered mark, the plaintiff’s burden of proof in an infringement complaint brought by the owner of a registered trademark would be lower. In a trademark infringement lawsuit, the registration of a trademark serves as preliminary proof of its validity, and demonstrating misleading likeness is sufficient to prove the infringer’s liability. In a trademark infringement lawsuit, the registration of a trademark serves as prima facie evidence of its validity, and demonstrating misleading similarities would be sufficient to hold the infringer accountable. However, in a passing-off action, the plaintiff must also demonstrate prior created reputation for an unregistered mark, the chance of confusion between the public, and likelihood of harming the plaintiff’s goodwill, all of which must be proven in order to pass the so-called triple trinity test. The plaintiff must demonstrate both previous usage and the level of recognition and uniqueness that their mark has gained in connection with their products or services in order for consumers to connect the mark with those products.