A Trade Mark is a visual representation in the form of words or symbols or label or device used in relation to certain goods or services to indicate that the goods or services emanate from a particular source or that they are of a particular kind or quality. Trade Mark is a sort of exclusive right or monopoly to use the mark to the goods or services and is recognised as a form of property. Trade Mark rights are obtained by use or by registration. It is protected by common law as well as under the Trade Marks Act, 1999 (Act). Registration though not compulsory to protect a trade mark but it provides better protection to the mark. Property rights acquired by use are superior to rights obtained by registration and hence prior users of the mark are protected against the monopoly granted to registered trade marks under the Act.
In order to fully protect your rights in respect of your trade mark, it is essential not only to register the mark but to keep it in force by renewing it regularly. Another important aspect is to monitor it, use it correctly and prevent it from becoming generic or common to the trade. If your mark is registered you should use ® next to the mark and if it is not registered you may use “TM” next to it.
Some important aspects which businesses should keep in mind are:
– The mark they select is distinctive and not descriptive of the goods or services that it is being used for
– It is being used correctly
– It is being proactively protected from infringement
Monitoring the Mark
Once you have a mark it is extremely important to monitor it and check if anyone else is misusing it. The longer someone uses the same or deceptively similar mark, the more difficult it is to stop them. Monitoring can be done through market research, searches on the internet, searches of the trade mark registry and other means. Immediately upon learning that someone is infringing your mark, you must take proactive action by issuing a cease and desist notice and if the person fails to stop using the mark follow it up with a suit for infringement and passing off. Delay in doing so will hamper your chances of success in the suit.
Use or Loose the Mark
It is essential that the mark is kept in continuous use. If you fail to use it for more than 5 years it is likely that someone could apply to have it removed from the register of trade marks on the ground of non-use. You may also loose the goodwill that you would have generated in the mark. Failure to use the mark will definitely weaken it.
Infringement and Passing Off
If the mark is unregistered but has been used, the proprietor has common law rights which arise by virtue of use of the mark and can sue for Passing Off. However, if the mark is registered, the proprietor can sue for Passing Off as well as for Infringement.
What constitutes infringement is defined under the Act. In simple words a registered trade mark is infringed when:
- The rival marks are identical or deceptively similar to each other and the goods/services are the same
- The rival marks are identical and the goods/services are similar
- The rival marks are similar but the goods/services are identical or similar
- The rival marks and goods/services are both identical
and the goods are likely to cause confusion or indicate an association with the registered mark
It is also essential that the rival mark is used as a trademark and not in a descriptive sense. Where the mark and goods are identical, the courts presume that use of the rival mark is likely to cause confusion.
Where a mark is a well-known trade mark even use of the mark in respect of totally different goods may amount to infringement.
In cases of infringement, the district court within whose jurisdiction the Plaintiff resides or carries on business shall have jurisdiction.
In cases of passing off, the district court within whose jurisdiction the Defendant resides or carries on business or where his goods/services are commercially available, will have jurisdiction.
In cases where the Plaintiff sues for infringement as well as for passing off, the suit may be filed in the district court either where the Plaintiff carries on business or where the Defendant carries on business or where the Defendant’s goods are available.
Likelihood of Confusion
Whether the mark is likely to cause confusion has been a matter of lengthy arguments in many court battles. Assessment of confusion in cases where the marks are not identical is usually a matter of first or general impression created by the rival marks. This fact has been repeatedly emphasised by various courts. However, what is first impression may not always be conclusive and other evidence may lead you to a different conclusion. In deciding the question of similarity, multiple factors have to be considered such as visual, phonetic and structural similarities. The marks also have to be considered as a whole and cannot be broken up in parts and compared with a part of the other mark. The courts work is cut out while deciding likelihood of confusion. It has to consider many factors such as, the strength of the mark, how distinctive is the mark, how similar are the goods or services, whether the trade channels and consumers are similar, etc. It has to put itself in the shoes of a consumer of average intelligence and imperfect recollection, which itself is a tough task. In a country like India, where there are several regional languages and dialects, the courts have to consider whether the rival marks will sound similar in another language or dialect. Courts have held that the proprietor need not prove actual instances of confusion. Words conveying the same meaning are generally likely to deceive or cause confusion. However, where words are in common use, each conveying a different idea, the consideration may be different. Where the rival marks have a different prefix some regard will be given to the prefix which may be sufficient to distinguish the marks. Common prefix but different suffix may not be able to distinguish the rival marks as there is a tendency to slur the last part of a word. If one mark subsumes the other or its essential feature, it is a factor to be considered. Where the goods are medicines, the Supreme Court has laid down several factors to be considered. Courts have held that in cases of medicines, there can be no provision for mistakes as even a possibility of mistake may prove to be fatal. Hence due consideration should be given to bad handwriting of doctors and ordering medicine over the telephone to avoid confusion.
In passing off actions three elements are essential-the mark has acquired goodwill, there has been some misrepresentation by the Defendant and this has caused or is likely to cause damage to the goodwill.
The courts may permit identical or similar trademarks on completely different products or services to co-exist if the consumer is not likely to be confused as to the source. However, if the mark has acquired distinctiveness by long extensive user and advertisement, the court may prevent use of the rival mark even on different goods or services. There is also a provision that in case of a well-known mark, the court may prevent use of the identical mark or deceptively similar mark on totally unrelated goods. What is a well-known mark has been defined in the Act.
Defences to an action for Infringement or Passing Off
There could be several defences to an action for infringement such as:
- the Plaintiff’s mark is not distinctive,
- the Plaintiff has no right to sue,
- the Plaintiff has no goodwill in the mark,
- the Plaintiff is not the proprietor of the mark,
- the Plaintiff ‘s registration is invalid or descriptive and needs to be expunged from the register,
- the Defendant is prior user of the mark,
- the Defendant’s mark is registered,
- the Defendant is using the mark in a descriptive manner and not as a trade mark,
- the Defendant has used the mark concurrently and honestly
- the Plaintiff has acquiesced in the use by the Defendant
- the Plaintiff is guilty of delay, estoppel and latches which disentitles him to any relief
- the Plaintiff’s mark has become common to the trade
- the rival goods/services are different
Relief which the court may grant
The court may grant the following ad-interim, interim or final relief depending upon the circumstances and urgency:
- an injunction restraining the Defendant from using the impugned mark and dealing with or disposing off the same
- appointment of a court receiver to seize the impugned goods and/or make an inventory
- discovery of documents
- order for preserving evidence related to the subject matter
- damages or account for profits
- order for delivery up for destruction all the impugned goods
The court can also restrain the Defendant from dealing with and disposing off any of its assets in a manner that may adversely affect the Plaintiff’s rights to recover damages and costs which may be awarded to the Plaintiff.
The court may while refusing to grant any interim relief order the Defendant to maintain accounts and submit the same periodically in court.
The court also has powers to grant ex-parte orders without prior notice to the Defendants if the circumstances so demand.
Courts have also granted quia timet injunctions to prevent or restrain some threatened act which if done would cause substantial harm or damage to the Plaintiff, which cannot be compensated monetarily.
Trade Mark owners can also initiate criminal proceedings against infringers. However, it should be kept in mind that the criminal court can only punish the offender and not grant any injunction to restrain any person from infringing the mark.
The Law relating to Trade Marks is quite complicated it would be advisable to immediately take advice from a competent Trade Mark lawyer if you feel that your rights are being violated or affected in any way. The quicker you act, the better it is.