Trademark Registration is an effective way to protect your brand’s most important trademarks like brand names, logos, and product labels. However, the process has both advantages and disadvantages and it is crucial that you are aware of both to make informed decisions. Hence, the purpose of this blog!
“A trademark is much more than just a name or symbol of identity that a trader adopts in relation to his goods and services, it is a repository of his business’ hard-earned goodwill and reputation in the market.”
– Delhi High Court in Cable News Network (CNN) v. Cam News Network Limited
Lately, businesses have been investing huge amounts of capital in promoting and marketing their trademarks as these have been identified to have a myriad of roles from creating and enhancing brand recognition to defining market trends, from endorsing entrepreneurial vision to espousing social causes and much more. However, this is just one side of the picture. The reality is that there are huge stakes involved in the introducing trademarks into the busy and highly competitive markets across the globe as they are highly vulnerable to infringement activities. This is exactly where the role of Trademark Registration comes in!
Trademark Registration is the one-stop solution against trademark infringement as it grants exclusive rights over the mark to the one person who owns it. A registered trademark is way better protected in legal terms than unregistered marks as their rightful owner is well-established under law and any unauthorised use can be easily detected and challenged. Moreover, registration provides valid evidence of ownership and can be easily used in cases of Trademark conflict and disputes. Let’s delve a little deeper into the advantages of registered trademark in further sections of this blog.
Unregistered Trademarks are still recognized by the Trademark Act and receive Common law rights protection against infringement activities. This implies that any infringement activity against an unregistered trademark is considered as a criminal offence under Section 103 of the Trademark Act, and the owner of such mark has the right to challenge the activity in a court of law. However, the legal remedy here will only stand ground if the owner of the mark produces valid evidence of first usership to quash the claims of the disputing party. Compared to that, a registered trademark can easily establish both rightful ownership and usership over the mark, thanks to the legal procedure of registration it undergoes with the apex trademark authorities of the country.
Before the introduction of trademark registration, the only way to acquire trademark ownership rights was by public use of the mark in relation to specific goods or services. In seeking the aid of the Court to protect such an unregistered trademark, the difficulties of the plaintiff lied in establishing his rightful ownership over the mark through evidence of prior use. Another difficulty often faced was the Court not considering the claims of the disputed party as claims by each and every individual belonging to that party. So, the owner of the unregistered mark had to prove de novo the contentions in every action against a new infringing defendant. Naturally, the litigation process was tedious, entailing high time and cost expenses. Trademark Registration solves all these problems in a single go.
Trademark registration plays a vital role in safeguarding the identity and reputation of businesses in India. Beyond its fundamental purpose of protecting intellectual property rights of trademark owners, trademark registration offers a wide range of other advantages that can positively impact the growth and success of Indian businesses. We will delve deeper into understanding each of these benefits one by one so that getting Trademark Registration for your business seems an inevitable task to you!
Trademark registration in India enables individuals and businesses to establish their ownership over a unique and distinctive mark that they intend to use for their goods or services. By successfully registering their trademark, they obtain valuable intellectual property rights, granting them legal protection and exclusivity in the use of that mark. These rights are governed by Section 18 of the Trademarks Act, allowing the trademark owner to protect their brand identity from unauthorised use and potential infringement by others.
Upon obtaining a trademark registration, the proprietor secures exclusive rights to use the registered mark in connection with the specific goods or services covered by the registration, as per Section 28 of the Act. This exclusivity ensures that no other entity can use an identical or confusingly similar mark for similar products or services in the marketplace. It empowers the trademark owner to take legal action against any unauthorised use, thereby safeguarding their brand reputation and market position.
Trademark registration offers strong legal protection against infringement under Section 29 of the Act. With a registered mark, the proprietor has a clear advantage in enforcing their rights in case of any unauthorised use or attempts to pass off a similar mark. This legal provision enables the trademark owner to initiate legal proceedings and seek appropriate remedies, such as injunctions and damages, against infringing parties, thus ensuring the mark’s integrity and distinctiveness.
Unlike common law protection, which mainly revolves around preventing consumer confusion, Section 29 of the Trademarks Act provides broader protection. It prohibits objectionable use of a registered mark, giving the owner an advantage not available to proprietors of unregistered marks. This means that even if the mark’s distinctiveness is eroded due to widespread use, its statutory protection remains intact, offering a more comprehensive shield against unauthorised use.
Trademark registration establishes a legal record of ownership, which holds significant weight in legal proceedings. According to Section 31 of the Act, in any legal dispute involving a registered mark, the fact that a person is the registered proprietor serves as prima facie evidence of the mark’s validity. This recognition simplifies the process of enforcing trademark rights, as the burden of proof is reduced, making it easier for the proprietor to defend their mark against infringement or counterfeiting.
Section 36 of the Act protects the registered trademark from becoming invalid merely due to its popularity or widespread use as a common name. Even if extensive advertising or usage leads to the mark gaining popularity and becoming synonymous with the product, the registered rights endure, providing continued legal protection against unauthorised use by third parties.
The Trademarks Act accommodates various types of marks, such as “Collective Marks” (Sections 61 to 68) and “Certification Trade Marks” (Sections 69 to 78). This allows individuals or organisations to register not only standard trademarks but also collective marks representing associations of traders, and certification marks indicating specific qualities or standards of goods or services.
Trademark registration confers exclusive ownership rights to the proprietor. This transformation of the mark into a valuable intangible asset enhances the brand’s overall value and marketability. The proprietor can leverage their registered trademark for licensing, franchising, or other commercial purposes, thereby generating additional revenue streams and strengthening the brand’s position in the market.
By registering a trademark and using it as an indicator of the product’s origin, the proprietor establishes a strong association between the mark and the goods or services it represents. This eliminates any doubt about the source of the products in the minds of consumers, thereby enhancing brand recognition, consumer trust, and loyalty.
Sections 6, 11, and 12 of the Act mandate the maintenance of a public register containing all registered trademarks’ particulars, which is open to public inspection. This publicising of registered trademarks serves the crucial purpose of informing the public about existing trademarks and preventing others from adopting similar marks. It acts as a deterrent against potential infringers, as they can easily access information about registered marks and avoid unauthorised use to avoid legal repercussions.
India’s membership in the Paris Convention for Protection of Industrial Property (Sections 154 & 155) enables Indian applicants to secure priority and privileges for trademark registration in other member countries. This international recognition ensures that Indian brands can protect their trademarks abroad, facilitating global expansion and safeguarding their intellectual property rights in international markets.
Trademark registration provides a strong foundation for businesses planning to expand their operations or enter new markets in India. With the protection granted by registration, businesses can confidently invest in their brand and marketing efforts without fear of infringing on other trademarks. Moreover, it establishes a clear path for future growth, licensing, and franchising opportunities, as potential partners or investors recognize the value and legal standing of the registered mark.
Trademark registration offers numerous benefits, as discussed in the previous section. However, like any legal process, it comes with certain limitations and drawbacks that trademark owners must be aware of. Understanding these drawbacks is quite crucial for businesses and can help them make informed decisions when seeking trademark protection for their valuable assets.
Once a trademark application is filed and accepted for registration in a specific class of goods or services, it becomes challenging to make changes or alterations to the chosen class. This lack of flexibility could be a disadvantage if the business expands its offerings into new categories that were not initially covered by the registered class. In such cases, a new trademark application may be required, leading to additional costs and potential risks of someone else registering a similar mark in the new class.
During the trademark registration process in India, there is a window for third parties to oppose the registration of a mark. If any party believes that the proposed mark is too similar to an existing registered or pending trademark, they can file an opposition. This can result in delays, legal costs, and uncertainty for the applicant. In some cases, opposition proceedings may lead to the rejection of the trademark application altogether, hindering the brand’s protection and market presence.
Trademark registration in India is valid for a period of ten years. After the initial registration, the trademark owner must renew the registration every ten years to maintain its validity and protection. While renewal offers continued trademark protection, the periodic requirement adds administrative burdens and costs to the trademark owner, particularly if they have multiple marks to renew simultaneously.
Trademark registration provides protection only within the classes of goods or services for which the mark is registered. This means that if someone else starts using a similar mark for different goods or services not covered by the registration, the owner’s rights might not apply, and enforcement options could be limited. This limitation could pose challenges when trying to prevent unauthorised use of a mark outside the registered classes.
Certain types of trademarks cannot be registered in India due to legal restrictions. These include marks that are generic, descriptive, deceptive, or common terms used in everyday language. Additionally, marks that may cause confusion with existing registered trademarks or those considered offensive or against public morality cannot be registered. As a result, businesses with trademarks falling into these categories may face challenges in obtaining exclusive protection for their marks, necessitating the adoption of distinctive and non-generic branding strategies.
Trademark registration in India offers valuable intellectual property rights, exclusive control over brand use, and legal protection against infringement. While it empowers businesses to establish a unique brand identity and gain recognition in the market, there are considerations such as renewal requirements and limited protection within registered classes. By navigating these factors strategically, businesses can leverage the advantages of trademark registration to fortify their brand presence and foster long-term success in a competitive business landscape.