trademarks

In this article, Tirumala Chakraborty who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses difference between Registered and Unregistered Trademark.

Introduction

  • From the beginning man possesses rights and there was no time when these rights were not infringed or his rights were free from piracies or invasion. And this is where the requirement of trademarks lies. Trademark is a distinctive sign or an indicator that gives identification or distinguishes the goods or services of an individual or a company from those of another or its competitors in the market.
  • Thus trade mark gives protection to the right of one person from getting infringed by another or invaded by means of piracy. With the increase in trade and commerce and with several requests being made; necessity for legislation on trademark was keenly felt by the Indian Trading Public. The demand gained momentum and the then Central Government was compelled to accept the necessity for passing an Act on this subject and a memorandum was prepared and was circulated among all the local governments and commercial bodies for opinions.
  • Ultimately on 11th March 1940, the bill for this was passed and received the assent of the Governor-General. The Trade Marks Act, 1940 was enacted for the protection of trademarks and this Act was modeled on the English Act of 1938. But since then the need has been felt for revising the statute for effective or better protection of trade marks and in recent times the trade mark law has undergone changes to a large extent when the Trade Marks Bill, 1999 was passed. In India, the law relating to trade marks is mainly governed by The Trade Marks Act, 1999 and it provides the mechanism for trademarks registration and once it is registered, it grants status of property to the trademarks.

What is a Trademark

  • The Trade Marks Act, 1999 was developed after reviewing the existing law in a comprehensive manner and mainly because of the fast developments and increasing globalization in the field of trade and commerce. This Act was passed as there was a need to simplify the trade mark system and also to encourage the flow of investment and transfer of technology.
  • To achieve these objectives, the Act of 1999 amended the definition of trademark, considered registration of trademark for services in addition to goods, registration of which are imitation of those of the well-known trademarks are not permitted, grounds for refusal of registration has been enlarged and defensive trademark was omitted. The procedure for registration of the registered users has been simplified and the period of registration and renewal was increased from seven to ten years. This Act made trademark offences as cognizable and increased the punishment for offences relating to trademarks and provides an Appellate Board for speedy resolution of appeals.
  • The term ‘trademark’ has been defined under Section 2(zb) of the Trade Marks Act, 1999. According to this Section, the term ‘trademark’ means a graphical representation of a mark, symbol or sign made in a manner with an objective to distinguish or differentiate the goods or services of one person from another.
  • Such differentiation may include shape of goods, their packaging, and combination of colors. It is pertinent to note that in relation to Chapter XII [Offences, Penalties and Procedure] (other than section 107) [Penalty for falsely representing a trade mark as registered] a registered trademark could either be for the purpose of or in connection to trading activities and/with a view to grant rights to the proprietor to use the mark exclusively.
  • In furtherance to the same and in relation to other provisions of this Act trademark will also refer to a mark used with a view to carry out trade between the goods or services and/for the purpose giving right to any person who may be a proprietor or a permitted user to use the mark whether with or without any indication of the identity of that person. A trademark also includes a certification trade mark or collective mark.
  • A trademark is an indicator or distinctive sign that can include a name, design, symbol, device, brand, label, letter, word, shape of goods, packaging or combination of colors or any such combinations. A trademark is a visual representation of a mark and is used by an individual or an organization or company in order to identify or distinguish his products from those of another.
  • The objective of the use of trade mark is to indicate a connection in trade between the goods or services, and some persons having the right to use such either being the proprietor or by way of permitted use. An extract from Milton Wright’s Inventions, Patents and Trade Marks (2nd Edn., p. 38) that has been universally accepted says that an ideal trademark is a trademark that is easy to speak, remember, spell and is simple in design. An ideal trade mark should be attractive to sound and appearance and suggest the quality of the product. And most importantly an ideal trademark should be made in such a manner that it can be distinctive from other trademarks of the same class and should be registrable and protectable.

In Parle products vs. J.P & Co.,Mysore [AIR 1972 SC 1359, (1972) 1 SCA 184], it was observed by the Hon’ble Supreme Court,  that when a question arises relating to whether one mark is deceptively similar to another, the essential features of the two marks are to be considered before coming to any conclusion. Placing the two marks side by side for pointing out the differences is not adequate. It would be rather enough if the impugned mark has such an overall similarity to the registered mark as would be likely to cause confusion or mislead a person dealing with the registered trademark to the extent that he accepts the product bearing the impugned trademark when offered to him.

A proprietor of a trade mark must understand the class under which it should be registered and choose accordingly as it protects the goodwill of the business. In India, a trademark can be divided into several categories such as word mark, device mark, service mark, collective mark, certification mark, well- known mark and unconventional mark. Different types of

Different types of the trademark are discussed below briefly,

  • A word mark is the form of trademark that gives the owner of the mark a right only in word, letter or numerical.
  • Where a trademark is in the form of a unique representation of a word, letter or numerical, it is called a device mark.
  • A service mark can not be seen in the case of goods but it represents the service offered by a person or a company. A service mark is a mechanism available to protect marks used in the service industry. The Service marks are represented by the symbol SM and not TM.

For example, McDonald’s which has a service mark for restaurant services it provides. Service mark cannot be easily distinguished from other kinds of trademarks and this is the reason why many companies prefer having both.

  • The Collective marks are used by a group of companies or an association or public institution or cooperative to inform the general public about a specific feature of the product for which the mark is used. “CA” which denotes the members of Institute of Chartered Accountants is a prominent example.
  • Certification marks are used to assure the buyers or the consumers that the product has certain standards and has successfully gone through a standard test specified. Woolmark, Agmark, and ISI are the few commonly used certification marks.
  • A trademark achieves the title of a well-known trademark and gets more protection when it is recognized by a large percentage of people.
  • Unconventional trademarks are those trademarks which are recognized for their distinctive feature such as color, sound, smell and shape for example when the smell of a perfume is distinctive and cannot be mistaken for an associated product, such can be registered as a smell mark. The Yahoo yodel was the first Sound Mark that was registered in India followed by Nokia tune.

All about registered Trademark

  • Once a trademark is registered and approved by the Trademarks Registry, a bundle of rights including the right to use such mark is exclusively conferred upon the owner of such registered trademark owner. In India, registered trademark is any mark that is legally registered under The Trade Marks Act, 1999.
  • Registration gives legal protection to the rights of the registered owner and one can approach the judiciary for infringement and can claim damages from the person who is using his trademark without his consent or approval. For registration, the owner of the mark needs to file an application before the Trademark Registry showing that it gives a unique identity to the goods or services, as the case may be, and can be distinguished from the others available in the market.
  • And, once a trademark is registered, (R) is added in place of (TM) that indicates trademark and is usually written in the upper right-hand corner of the mark.
  • In India, though the registration of trademark is not mandatory, but it is always advisable to register the mark because of certain benefits that derive automatically from such registration. Most importantly registration of the mark is required as it plays a vital role in identifying as well as advertising the product.
  • Registration secures the goodwill of the trader and gives protection to the consumers from purchasing the imitation product or the second rate quality product. Chapter IV of the Trade Marks Act, 1999 talks about the effects of registration and by such registration certain rights are conferred under section 28 of the Act. As per Section 27 of the Act, no action for infringement can be taken in case of an unregistered trademark. Whereas, if a registered trademark is infringed, the aggrieved person can sue and take action for such infringement of his mark and can even ask for reliefs.
  • According to Section 31 of the Act which is consistent to Section 31 of the Trade and Merchandise Act, 1958, registration of trade marks is to be a prima facie evidence of its validity. This means that the evidence is liable to be rebutted and the burden of proof is on the person alleging invalidity.

The Hon’ble Supreme Court observed in Corn Products Refining Co. versus Shangrila Food Products Ltd [AIR 1960 SC 142, (1960) 1 SCA 536], that the only presumption that follows from a registration of a trade mark is its prima facie evidentiary value of its validity.

  • Chapter III of the Trade Marks Act, 1999 deals with the procedure and time period or duration of registration. The time period of registration for a trademark is ten years in India and is subject to renewal on expiration of such time period of 10 years. The entire process of registration in India is governed by the Trade Mark Act 1999.
  • The procedure for registration is complex, costly and takes time. The proprietor interested in registering his trademark must make an application as prescribed under Section 18 of the Act.  Once the application is filed, it is examined by the Registrar carefully to find out if there is any discrepancy. The acceptance must be absolute and unconditional. After the application is accepted by the Registrar, the application has to be advertised in the Trademark Journal which is published weekly.
  • Trademark Journal contains all the trademarks those are accepted by the Registrar. Once it is published in the Journal, general public have an opportunity to object such registration if he believes that such registration can be a cause of damage to him. Any third party may object within three months from the date of the advertisement of the application or within such further period not exceeding one month, as provided in the Act may object such registration by giving a notice writing to the Registrar in a prescribed manner. The Registrar is also empowered to withdraw the application under section 19 of the Act in case of any defects or errors.
  • When no objection or opposition is received by the Registrar, the next step has to be the preparation and issuance of the trademark certificate to the applicant and once the certificate is issued, the trademark is considered to be registered trademark under Section 23 of the Act and then the ® symbol can then be placed next to the Trade Mark logo or the ™ symbol.

All about Unregistered Trademark

  • An unregistered trademark is a trademark which is not registered under the Trade Marks Act 1999 and does not have safeguards against infringement. The proprietor of an unregistered trademark does not have the right to use ® symbol. An unregistered trademark only possesses the ™ logo indicating that such trademark is not registered but is distinguishable from other similar goods or services.
  • Under the Trademarks Act, an unregistered trademark does not get much protection and cannot stop any third party from using the same mark. An unregistered trademark is one which does not get statutory protection but possess certain common law rights.
  • There are traders who use trademarks which are not capable of registration and they just prefer not to apply for registration. Sometimes a trademark remains unregistered as the proprietors do not file an application for registration due to ignorance of the Intellectual Property laws. The whole procedure of registration is complex and quite lengthy and due to this, there are lots of cases pending before the Trademark Registry where an application has been filed by a proprietor but the trademark is yet to be considered as registered.
  • An unregistered trademark does not get much security and legal protection as compared to the registered trademarked goods or services. The owner of an unregistered trademark can affix the ™ symbol. This serves as a notice to the public and indicates that mark used by him on his product is unregistered but can be used as a trademark to signify or distinguish his product from those of the other available in the market.
  • Though no action can be taken for infringement of an unregistered trademark under the Trade Marks Act but the third party can be sued for passing off. Unregistered trademarks posses certain benefits under common law and the action against passing off is based on the principle which says that “a man may not sell his own goods under the pretense that they are the goods of another man”.
  • Passing- off is a mechanism of practicing unfair trade and seeking profit from the goodwill of another associate trader. One of the main essential ingredients of a passing-off action is that some confusion has been formed in the minds of the consumers regarding the trade names and in such matters the test to be applied is whether a person of average understanding and a person of imperfect remembrance would be confused so as to identify the source of the product. It is the responsibility of the aggrieved to prove that there is a similarity and the defendant is fraudulently passing off his products as those of the aggrieved.

Difference between Registered and Unregistered Trademark

A registered trademark can be distinguished from an unregistered trademark on the basis of the grounds that are discussed below:

Validity and burden of proof when challenged

According to Sec 31 of the Trade Mark Act, registration of a trade mark has to be the ‘prima facie’ evidence of its validity. From this it can be easily concluded that with the registration, the trademark posses much benefits in terms of its evidential value. Validation is believed to act only upon trademark which are registered. It is the liability of the owner to prove the value and the goodwill attached to the goods or services in case of an unregistered trademark. In India where, registration of a trademark is not mandatory, an unregistered trademark may gain some protection only after the product earns some level of reputation in the market, manages a highly convincing position in the industry and gets well known among the large percentage of public. Hence the burden of proof lies with the proprietor when the validity of an unregistered trademark is challenged by someone.

Remedies available

A registered trademark gets much protection and if any dispute arises relating to the mark and its validity, the registered owner has a provision for statutory remedy under the Trade Mark Act, whereas, an unregistered mark is less protected and gets benefits under common law. In case any third party uses the mark of the registered proprietor without his consent, the proprietor has a legal remedy in his hand and he can take action for such infringement. An unregistered trademark, on the other hand, does not acquire the statutory right of infringement but can sue the third party and take an action for passing- off. An unregistered trademark can seek for remedies under the common law system.

The judgment given by the Hon’ble Supreme Court in the famous case of State of U.P. Vs. Ram Nath, Partner M/S Panna Lal, [AIR 1972 SC 232] still holds good and applicable on offences, penalties and procedures described in chapter XII of the Trade Marks Act, 1999. In this case, the Hon’ble Supreme Court has clearly distinguished a registered trade mark from an unregistered trade mark. The necessity was felt to interpret certain section such as section 77, 78 and 79 of the Trade and Merchandise Act, 1958 to lay down that the legislature is silent and has deliberately not used the word “registered” before the words trade mark, mark or trade description in the chapter while dealing with offences, penalties and procedure. It further adds that registration of the trade mark is not compulsory for initiating a criminal action. Hence, an unregistered trade mark holder can also take recourse to criminal action.

Right to use the symbol or the logo

The proprietor can use the TM symbol once they apply the mark on their goods or services as the case may be. TM symbol indicates that the mark used by the proprietor is a trademark of that particular proprietor. This logo is usually written in small font and is placed beside the mark. An unregistered trademark holder can use the TM or the trademark symbol but an unregistered trademark holder has no right to use the ® symbol. The ® symbol is a representation of registered trademark. Once a trademark is registered successfully without any objection and the certificate is issued, the proprietor can use the ® logo along with the ™ logo.

Time period or duration of registration and renewal

Once a trademark is registered and entered in the book of Trademark Registry, it lasts long for 10 years. It can be renewed from time to time upon the expiry of the time period of registration. Each renewal has to be made within a period of six months before the expiration of the last registration of the trademark. In case the renewal fee has not been paid by the proprietor at the expiration of the last registration, the Registrar is empowered to remove such trade mark from the Register and make the fact known to the public by advertising such in the Journal. But in case of an unregistered trademark, the proprietor is under the liability to prove the length of time or duration for which the reputation of his good or services exist or existed in the trade market system.

Territory or geographical area

Registered trademark gets nationwide protection resulting from such registration and if any applicant wishes to get his mark registered internationally, then he can do so by making an international application on the form prescribed by the Common Regulations for international registration of the trademark. In short, registration makes it easier for a trademark to survive in the market while on the other hand the proprietor of an unregistered trademark has to prove the geographical area in which his product has gained significant credibility among the consumers.

Conclusion

The Trade Marks Act deals with protections which are only applicable to the registered trademarks therefore registered trademark are more secured and protected when compared to unregistered trademarks. In brief, it is always better to register a trademark even if it is not mandatory in India and many other countries. Registration of a trademark has several incentives. Registration guards it from any action of infringement which somewhat gives relief to the registered trademark holders. The registered trademark holders can file a legal suit for infringement and since the trademark is registered, the burden of proof does not lie upon the holder.  Registered trademarked products create a better brand image in the market and get more preference over the unregistered trademarks by the consumers. And lastly but most importantly registration also plays a vital role in brand development which is extremely crucial for the growth of trade and commerce.

Hence we can say it is important to register a trademark to create good will in the trade market system. To survive in easy manner and for a longer period of time in the market, every individual, partnerships, company or organization, trade unions or legal associations should apply for the trademark provided the requirements of the Trademarks Act are met.

LIST OF ABBREVIATIONS/ SYMBOLS

SC Supreme Court of India
Trade mark symbol
® Symbol for registered trade mark

 INDEX OF AUTHORITIES

  • Books referred

Trade Marks Act, 1999 (Bare Act)

Commentary on the Trade Marks Act by Iyengar

  • Websites referred

www.manupatra.com

www.indiankanoon.com

www.wikipedia.org

http://www.advocatekhoj.com/library/bareacts/trademarks/index.php?Title=Trade%20Marks%20Act,%201999

https://www.intepat.com/blog/trademark/unregistered-vs-registered-trademark/

http://patentinindia.com/trademark-registration-india/

https://www.indiafilings.com/learn/trademark-registration-process/

  • Dictionaries referred

Oxford Dictionary

Black’s law Dictionary

  • Table of Case Laws referred
Name of the Case Law Citation
Parle products vs. J.P & Co., Mysore [AIR 1972 SC 1359, (1972) 1 SCA 184]
Corn Products Refining Co. versus Shangrila Food Products Ltd [AIR 1960 SC 142, (1960) 1 SCA 536]
State of U.P. Vs. Ram Nath, Partner M/S Panna Lal [AIR 1972 SC 232]

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