Protection of trademark is a matter of public policy in the interest of trademark owners and the and the public at large as consumers of goods and services. As was highlighted by the Delhi High Court in Cable News Network (CNN) v. Cam News Network Limited. “A trademark is much more than just name or symbol of identity that a trader adopts in relation to his goods and services, it is repository of his business’ hard earned goodwill and reputation in the market. A huge amount of business capital is invested in the promotion and marketing of trademarks which have presently come to be identified with a myriad of roles-from creating brands out of goods and services to defining the market trend, from endorsing business ideologies to even espousing social causes for Benefits of Trademark Registration. However, this is just one side of the picture. The huge stakes involved in trademarks has made them susceptible to economic vices such as infringement and passing off thereby opening floodgates of litigation”.
The Trademarks Act, 1999, which has repealed the Trade and Merchandise Marks Act, 1958, retains the amalgam of the civil and criminal law relating to trade marks effected in the predecessor enactment. The new legislation is designed to provide for registration of trademarks used in relation to services, in addition to goods and consequently affords better protection to trademarks in general. The law seeks to simplify the procedure for registration of trademarks and give more effective protection against infringement, by widening the scope of infringement and strengthening the criminal law. Common law rights are explicitly recognized, vide Section 27 of the Act and brought within the scope of criminal law (other than Section 107). Thus, rights acquired by use of a trademark, not registered under the Act, are protected by an action for passing off and or by criminal action against the infringer for an offence under Section 103 of the Act. However, as compared to the common-law remedy, where the proprietor of the mark must adduce evidence of user of the trademark to establish his title to the mark, registration of the mark affords an easy means of establishing title to the mark. Accordingly, registration under the Act provides better protection to trademarks. The law and procedure for registration is also simplified.
Before the establishment of a system of statutory registration of trade marks, the only way rights in a trademark could be acquired was by public user of the mark in relation to the goods or services. In seeking the aid of the Court to protect such an unregistered trademark, the difficulties of the plaintiff in an action for ‘passing off’ under common law were to establish his title to the mark by adducing evidence of prior use; to show public use by him of his trademark for such time and in such manner that his goods had become known in the market by such mark; and to prove that the use by the defendant of the mark is likely to enable him to pass off his goods as those of the plaintiff.
Another difficulty is that in an action for passing off, the Court determines questions simply between parties and not against all persons, and the owner of the mark, therefore, must prove de novo the contentions in every action against a new infringing defendant. Naturally, the litigation process is tedious, entailing time and high cost.
Registration of trademark mitigates the difficulties. Benefits of Trademark Registration under the Act are as under:
- A distinctive trademark which is proposed to be used may be registered. Registration provides an additional method of acquiring trademarks rights (Section 18).
- The proprietor of a registered trade mark has exclusive right to the use of the trade mark in relation to the goods/service covered by registration (Section 28).
- Subject to the provisions of the Act (Sections 30, 34, 35, 36), registered proprietor is entitled to an action for infringement as provided in the Act (Section 29). In such action the plaintiff may rely solely on registration and need not plead user.
- The scope of infringement in Section 29 is very wide and its application is not limited merely to the prevention of practices which would result in confusion or deception as under common law. The law gives to the proprietor of a registered trademark a right which is not available to proprietor of an unregistered trademark and prohibits for his benefit a form of trading which had been previously considered unobjectionable.
- In all legal proceedings relating to a registered trademark, the fact that a person is registered as proprietor thereof is prima facie evidence of validity of the original registration (Section 31).
- Subject to certain exceptions mentioned in Section 36, the registration of a trademark is not to be deemed to have become invalid by reason only of any use after the date of the registration of any word which the trademark contains or of which it consists as the name or description of an article or substance or service. Extensive advertisements by the proprietor of the trademark in some cases may result in the mark losing its distinctiveness as far as the public are concerned and becoming the popular name of the article. In such cases, whereas the loss of distinctiveness of the mark may become adverse to the success of an action for passing off, if the mark is already registered, the statutory rights would not be affected except to the extent stated in Section 36.
- The Act makes special provisions for registration of “Collective Marks” in Chapter VIII – Sections 61 to 68; and “Certification Trade Mark” in Chapter IX – Sections 69 to 78).
- The necessity of proving distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought to be remedied by statute, which conferred a right of property on the owner of a registered mark.
- In an infringement action, once a mark is used as indicating origin, no amount of added matter intended to show the true origin of the goods can affect the question. In the case of passing off, on the other hand, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
- The Act provides for maintenance of Benefits of Trademark Registration containing all particulars of a registered trademark (Section 6) and which is open to public inspection and for obtaining certified copies of any entry in the Register (Section 148). It seeks to serve one of the important objects of registration, namely to inform the public as to what trademarks have been registered and therefore cannot be adopted by other persons in relation to those goods/service. See also Sections 11 and 12.
- India is a signatory to the Paris Convention for Protection of Industrial Property and accordingly, the right of priority and privileges are available to Indian applicants for securing registration and protection of their trademarks in various countries who are signatories to the convention (as given in the appendix 32) – Sections 154 & 155.
- Under the provisions of the Trademarks (Amendment) Act, 2010, it is possible for Indian applicants to secure international registration and obtain protection of their trademarks in various countries designated by them under the Madrid Protocol (Section 36D).
Thus, registration under the Act confers various statutory Benefits of Trademark Registration, in addition to common law rights as are explicitly provided – Section 27. The registered proprietor may choose to combine an action for infringement and passing off, when the rights of the proprietor are violated.
Benefits of Trademark Registration is in the nature of a collateral security furnishing the trader with a cheaper and more direct remedy against infringers. Cancel the registration, and he has still the right enforceable at common law, to restrain the piracy of his trademark, provided of course he can prove that such piracy amounts to an imposition upon the public.