Strategies For Dealing With A Mark Pre-Emptively Registered By Another Party

Trademarks are territorial and the Trade Marks Act, 1999 starts by declaring that the act extends to the whole of India. It is well established that one who uses the trademark first i.e. the prior user, is the proprietor of the mark and has a better right than a subsequent user.

It is often seen that when one goes to register a trademark, the mark is already registered by another entity. This is very common in respect of foreign marks that are quite well known in foreign countries. Since the law is territorial, the registry does not check whether the mark is registered in other countries.

How can one tackle such a situation?

Step 1 is to make a critical assessment of your mark and rights. Have you been using the mark in India? Have your goods bearing the said mark been imported in India? How well is your mark known in foreign countries? Is your mark a common place mark or is it a fancy or invented mark? Since how long has it been used abroad? Has the prior registrant used the mark in India? Are the rival goods/services identical?

All these factors will play an important part in assessing whether or not you can contest the prior registration in India.

Step 2 is to immediately apply for registration of the mark. If the mark has been used in India, one should claim user in the application and file appropriate evidence in support. It will obviously be objected by the Registrar on the ground that there is already a similar mark on the register. Courts in India have also upheld the concept of transborder reputation. The Supreme Court has held that the reputation of a trademark is not bound by borders of the country. In these days it has to be kept in mind that even if the product is not sold in India, people become aware of products sold in other countries via the internet, foreign travel, advertisements, magazines, movies, etc.

Step 3 is to file a cancellation/rectification petition against the registered mark on the ground that the application was filed in bad-faith and that the applicant can never be the proprietor of the mark as it has been copied. It may also be challenged on the ground that the applicant is the subsequent user of the mark. This will all depend upon the nature of the evidence that is available.

Step 4 is to consider filing a suit for passing off. The courts in India have held that an action of passing off can be maintained even against a registered proprietor of a trademark by a person who is not the registered proprietor based on transborder reputation. In the Whirlpool case, the Supreme Court held that although the products were not sold in the Indian market but were only sold to the US Embassy in India and they were advertised in various magazines which had a circulation in India and as a result it acquired a reputation in India.

It is the rapid development and globalization that make it essential to acknowledge and protect the reputation of well-known trademarks of different countries. It is, however, advisable to register the mark in India at the earliest to avoid conflicts.

If you are confused or require any additional information you may visit our website for more information or contact us to talk to one of our experienced attorneys.


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