Protection of unregistered trademarks in India
The first and most important point to note for the protection of a trademark in India is that the “registration” of a trademark under the (Indian) Trademarks Act 1999 (hereinafter also referred to as “law”) is not a prerequisite for seeking protection in India. Accordingly, both registered and unregistered trademarks can be protected in India through an action for infringement or deception in court.
Registration of a trade mark under the Trade Marks Act 1999 as an obstacle to other parties obtaining registration of a similar or deceptively similar trade mark, in the same class of products/services. A trademark registration acts as a deterrent to other parties adopting a similar mark. In addition, an additional remedy for trademark infringement has been provided under the Trade Marks Act 1999 against unauthorized use of the mark by infringers, which helps to obtain relief at the time of dispute.
India, being a common law country, not only follows codified law but also common law principles, and as such provides for infringement actions as well as deceit actions against infringement of trademarks. Section 135 of the Trademarks Act recognizes both actions for infringement and actions for deception.
Even under Section 11(3) of the Act, a mark need not be registered if its use in India is likely to be prevented under the Marketing Act protecting an unregistered mark.
In India, trademark rights can be acquired by priority in adoption, long, continuous, honest, good faith and uninterrupted use of the mark.
A prior user of a mark is considered superior to the registered owner of the mark in India. Pursuant to Section 34 of the Act, the registered owner of the trademark registration has no right to interfere with or restrict the use of an identical trademark in connection with goods or services for which such person has used this mark continuously since the date before the use of the registered mark by the registered owner or the date of registration of this mark.
The law of passing off can be summed up in a short general proposition: no one can “pass off” his goods as those of another. Moreover, in the absence of registration of a trademark or the same dispute, in India, the law of misleading marketing must be invoked to resolve various aspects related to the infringement of any trademark.
Marketing fraud is a common law right that protects the goodwill and reputation associated with a person’s mark/products and prevents the dishonest or improper use of goodwill by a third party in a mark. The term deception has not been defined in the Trade Marks Act 1999, and is primarily based on the law of ‘judge-made’ equity.
It is further important to note that in the event of a trademark dispute, statutory law as well as common law law become important. Sometimes common law rights may prevail over rights acquired by trademark registration.
The Indian Marketing Fraud Act is mainly based on the following principles:-
- Honest and bona fide “prior adoption” and user.
- Long, continuous, open, competitive, honest and uninterrupted user.
The classic Trinity test posits that the following must be proven: (1) the goodwill held by the plaintiff; (2) the defendant’s misrepresentations; and (3) the likelihood of harm to that goodwill, in the passing off action, as reaffirmed by the UK House of Lords in the case Reckitt & Colman Ltd V Borden Inc. 1
That in India, the courts have also accepted the standards stipulated in the classic Trinity test and to establish a passing record, a party is required to demonstrate the following in court:
- Customer traffic and brand awareness;
- Deception/confusion in the marketplace; and
- Damage or likelihood of damage to plaintiff2
It is recalled that even an unregistered trade mark may claim protection against deception under the Trade Marks Act 1999.3
The difference between the concept of passing off and that of infringement was clearly established in the Indian case of Rob Mathys India Pvt. Ltd.c. Synthes Ag Coire4as under:
- First of all, nature of the remedy in the two types of action is different.
a) A passing off claim is a common law remedy;
b) An action for infringement is a legal remedy (which is based on a right granted or created by virtue of registration under the Trade Marks Act 1999).
(c) The issue in a passing off action is: “Does the defendant sell goods in the marketplace in such a way as to be designed or calculated to lead the purchaser to believe that they are plaintiff’s goods?
d) The question in an action for infringement, on the other hand, will be: “Does the defendant use a mark which is identical to or which is a disguised imitation of the plaintiff’s registered mark?
e) In an action for infringement, the legal protection is absolute in the sense that once it is shown that a mark offends, whether there is imitation phonetically, visually or otherwise to lead the buyer to believe and to purchase the property of others like that of the plaintiff, no further proof of the breach of the plaintiff’s statutory right is necessary.
(f) But in a passing off action, the defendant can escape liability if he can show that the addition is sufficient to distinguish his property from that of the plaintiff.
That in the case of Neon Laboratories Ltd. against Medical Technologies Ltd. and Ors.5 , the Honorable Supreme Court has ruled that the registered owner of a mark does not have the right to prevent another party’s use of an identical or similar mark where such use commenced before the use or registration by the owner. The Honorable Court also observed that the “first user” rule is a fundamental part of the Act.
In deciding the above-mentioned case, the Honorable Supreme Court also relied on the following judgments:
- In the case of NR Dongre v. Whirlpool Corporation6, the global prior user was found to have preference and predominance over the mark registered in India.
- In Milmet Oftho Industries v. Allergan Inc.7 it was found that the pharmaceutical preparation marks were similar but the prior user in the world did not register his trademark in India while his opponent did. This Court approved the granting of an injunction in favor of the prior user.
- In S. Syed Mohiden v. P. Sulochana Bai8, it has been observed that the rights in an action for deceit arise from the common law and not from the statutory provisions, nevertheless the rights of the prior user will prevail over those of a subsequent user even though he has obtained registration of its mark.
Considering the above, it can be concluded that even unregistered trademarks in India can be protected and there is no mandatory requirement for trademark registration in India to enforce these common law rights against an offender. Prior trade adoption and use is of the utmost importance and will supersede trademark registration.