Registering a trademark may not be enough – protect your brand from infringers
A trademark serves as a unique identity which imparts a personality to a product or service. It can range from a slogan, logo, graphic, color combination, sound, smell, taste or even an individual’s name.
After the few basic steps of application, the applied trademark needs to be approved by the trademark offices in India. Usually a product can start using TM mark after initial approval which is given in upto 3 days. TM sign shows that the application for trademark registration for that particular product/ brand trademark registration is under review. Entire registration process takes upto 2 years for completion. Subsequently a TM sign can be changed to R sign.
Trademark Registration provides a statutory protection against any type of infringement due to unauthorized usage of the trademark. Trademark Objection can be raised if your prerogative over the owned trademark is violated by a third party. Even if the trademark is not registered, its illegal duplication gives the right to the owner to take the infringer to the court of law. Using a deceptively similar mark as the existing registered trademark, deliberately done to misguide the general public is counted under infringement. There are two types of remedies available for trademark violation:
- An action of Infringement: This course of action is taken when the trademark is registered. It is a statuary action wherein the plaintiff has to prove that the infringing mark is a deceptive imitation of the trademark. No further proof is required as the registration of trademark has already been registered by the Government of India under Trademark Act 1999. It needs to be noted that court protects the prior consistent user of the trademark over the registered trademark proprietor based on the common law principles.
- Action of Passing off: This procedure is followed when the trademark is unregistered. It is a common law remedy. Passing off action allows the trademark owner to take action against the infringer for passing off goods or services in the name of another person. Here it is imperative to prove in the court that the infringement of the mark is leading to the damages of goodwill or causing monetary loss to the plaintiff. Action of passing off is unaffected by registration or unregistration of the trademark.
Remedies for infringement action and action of passing off:
Remedy for action of infringement or passing off, govt. can grant relief of permanent or temporary injunction, banning the infringer to stop the usage of trademark. Alternately the court can order a monetary compensation against the damage for loss of business or/ and confiscation /destruction of infringing merchandise.
