Trademark law in India is governed by the Trade Marks Act, 1999 & Trade Marks Rules, 2002 (and amendments thereof). The Trademark Act & Trademark Rules seeks to provide for the registration of Trademarks relating to goods and services in India.
The advantage of having a Trademark registered is that the owner can give its Trademark a unique image thereby ensuring a brand name. Registration of a Trademark helps in instant recognition for buyers thereby ensuring that brand loyalty is created. Under the Indian laws a letter, number, word, phrase, logo, graphic, shape, smell, sound or combination of these things is registerable.
Effect of Registration
The valid registration of a Trade Mark under the Act gives to the registered proprietor the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark has been registered. He becomes entitled to obtain relief for infringement of his trade mark in the manner provided in the Act. An action for infringement of Trademark can be initiated only once registration is complete. No person is entitled to maintain any proceedings to prevent, or to recover any damages for, the infringement of an unregistered trade mark. The Act, however, does not affect the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person or remedies in respect of such wrong.
Under the Trademarks Act 1999 a person is deemed to have infringed a registered Trademark if the person uses as a Trademark:
1. A sign which is substantially identical with or deceptively similar to the registered Trademark on goods or services covered by the Trademark registration;
2. Substantially identical with or deceptively similar to the registered Trademark on goods or services of the same description as, or closely related to, the goods or services of the registration, where such use is likely to deceive or to cause confusion;
3. Substantially identical with or deceptively similar to a well-known Trademark on unrelated goods or services, if it can be demonstrated that such use would be likely to suggest a connection between those unrelated goods or services and the proprietor of the well-known mark, such that the interests of the registered proprietor are likely to be adversely affected.
A use of the Trademark in comparative advertising or to indicate the purpose of the goods or services, for example as being accessories or spare parts for the Trademarked goods or services, does not constitute infringement.
There are two types of remedies available for the infringement of Trademark. These remedies are:
1. Infringement Action:
An action for infringement, which is a statutory right, is dependent on the validity of the registration of the mark. Infringement of a Trademark is a violation of property rights. Trademark registration is prima facie proof of ownership of the mark. In case of infringement there is often no need to prove that the Trademark has a reputation or goodwill. The question of fraud or the probability of deception is immaterial, the plaintiff just has to prove that he is the true owner of the Trademark and the defendant is using a mark that is identical or deceptively similar to the registered mark and no further proof is required.
The relief and remedy in infringement proceedings include:
2. Restriction on the future use of the mark;
3. Damages or account of profits;
4. Order for delivery of the infringing labels and marks for destruction;
5. Seizure and confiscation of the infringing goods by the police department;
6. Arrest of the infringes;
7. Fines and penalties.
2. Passing Off:
An action of passing off is a direct subject matter of the law of tort or common law. Passing off is not defined in The Trade Marks Act, but it provides the rules of procedure and the remedies available. In the case of unregistered yet well-known marks, the owner of the mark can initiate a passing off action in the appropriate Court of law. The cause of action in favour of the plaintiff will arise if the defendant in the course of trade misrepresents to prospective or ultimate customers of goods and services that the goods or services of the defendant is connected to the goods or services of the plaintiff and is calculated to injure the business or goodwill of the plaintiff or which actually causes damages to the business or goodwill of the plaintiff. Actual deception and actual damage has to be proved for any relief. Passing off action can only be initiated in a place where the defendant resides or carries on business or where any part of the cause of action arose.
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