India: Advantage Trade Mark Registration

Last Updated: 20 November 2017
Article by N. Mahabir and Prakash C. Arya
  1. In India, The Trade Mark Act, 1999 or its predecessor legislations do not make registration of a trade mark mandatory.  A trade mark is protected by virtue of its use under the Common Law rights.  As held in Century Traders vs. Roshan Lal Duggar Co., registration under the Act does not create the trade mark but the right accrues from first commercial use of the mark. 
  1. Under Section 31 of Trade Marks Act, registration of a trade mark shows that it is prima facie valid.  This is a rebuttable presumption and it can be proved otherwise.  However, the burden to show invalidity of the registration rests on the person asserting it. 
  1. Registration of a mark gives comfort to an adjudicating Judge that the mark has already been approved by a statutory authority.  As held in the case of Advance Magazine Publishers Inc. vs. Bombay Rayon Fashions Ltd, of 23 August 2017 by Delhi High Court, right to claim injunction by pleading passing off is a right which is a step/shade below the right asserted of infringement of a trademark.  This statement of law may not be entirely correct but is reflects the comfort of a Judge while dealing with a registered trade mark and the rights arising therefrom.
  1. In a situation, where a person files application on a 'proposed to be used' basis i.e. intending to use the mark on a future date, registration is of great significance.  The filing of a trade mark application clearly shows the date of filing of the application.  This date will be the undisputed date, if not an earlier date, to show that the applicant had adopted the mark.   Therefore, the honesty in adoption and prior adoption question would be squarely answered by this date itself. 
  1. Recordal of a registration at the Trade Mark office notifies any person desirous of adopting a new mark of filing a new trade mark application, who conduct a search, or at the examination stage about the prior rights of a trade mark registration.  Such person are thus dissuaded from adopting the mark or proceeding further with the application.  Thus, lot of potential disputes are avoided, most importantly, without any knowledge or costs of the registered proprietor.
  1. Existence of a registered trade mark registration or a pending trade mark application in the home country is essential for filing International application under the Madrid Protocol.  Since, Madrid Protocol is a cost-effective way of obtaining registration in the member countries, it is very critical for expanding Indian businesses.
  1. A trade mark registration has a persuasive value in some other jurisdictions, if the person desires to obtain registration in other countries.  This again become important for businesses which desire to expand outside or stop misuse of their brand by parties outside India.
  1. Registration enables the recordal of a licensee as a Registered User under the Trade Mark Act.  The Registered User has the right to initiate infringement proceedings against an infringer.  This frees the owner from the logistics of initiating infringement action in his own name.
  1. A registered trade mark can only use the symbol ® along with the trade mark.  Under Section 107 of Trade Marks Act, it is an offence to denote a mark as registered when it is not registered.  The symbol ® is a recognized indication of assertion and exclusivity of a trade mark.  The competition is thus put to notice to not adopt such a mark. 
  1. Another important advantage is the forum of enforcement.  The registered proprietor does not have to chase an infringer by filing case at the place of an infringer or where the infringing activity is happening.   Trade Mark Act creates a special jurisdiction to file a suit for infringement against an infringer at the place of registered office of the registered trade mark owner.  This becomes very critical considering that India is a large country.  A registered proprietor would get exhausted if it is required to chase infringers throughout the country.  This special jurisdiction is not available for an un-registered trade mark.
  1. As part of due diligence, online platforms require vendors on their portal to provide particulars of trade mark registration or application.  The Bureau of Indian Standards (BIS) also requires applicants to provide particulars of trade mark registration or application.  In order to register an Intellectual Property Right before the Customs Office to prevent import of unauthorized work, a registered trademark is essential. 
  1. As laws and systems evolve, it is possible that a registered trade mark may become mandatory to carry on trade akin to other trade licenses.  In future it cannot be ruled out that a registered trade mark may trump a common law user.  Therefore, it is prudent to apply for trade mark registration prior to commencing business.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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