Registering a Trademark May Not Be Enough: Protect Your Brand From Infringers
A brand serves as a unique identity that imparts a personality to a product or service. It can range from a slogan, a logo, a graphic, a color scheme, a sound, a smell, a taste, or even a person’s name.
After a few basic application steps, the requested trademark must be approved by the trademark offices in India. A product can usually start using the TM mark after initial approval which is granted in up to 3 days. The TM sign shows that the trademark registration application for that particular product/brand is under review. The entire registration process takes up to 2 years to complete. Later, a TM sign can be changed to an R sign.
The Trademark Registration provides legal protection against any type of infringement due to the unauthorized use of the trademark. Trademark objection can be filed if a third party violates your prerogative over the proprietary trademark. Even if the trademark is not registered, its illegal duplication entitles the owner to bring the offender to court. Use of a mark deceptively similar to the existing trademark, deliberately made to mislead the general public, is considered infringement. There are two types of remedies available for trademark infringement:
- An infringement action: This course of action is taken when the trademark is registered. It is a statutory action in which the plaintiff has to prove that the infringing mark is a misleading imitation of the registered mark. No further proof is required as the registration of the trademark has already been registered by the Government of India under the Trade Marks Act 1999. It should be noted that the court protects the consistent prior user of the trademark on the owner of the registered trademark according to the principles of common law. .
- Passing off action: This procedure is followed when the brand is not registered. It is a common law remedy. The impersonation action allows the trademark owner to take action against the infringer for impersonating goods or services on behalf of another person. Here it is imperative to prove in court that the trademark infringement is causing goodwill damage or causing a monetary loss to the plaintiff. The action of passing is not affected by the registration or deregistration of the mark.
Resources for action of infringement and action of usurpation:
Remedy for action of infringement or usurpation, govt. may grant permanent or temporary precautionary measures, prohibiting the infringer from stopping the use of the trademark. Alternatively, the court may order monetary damages for loss of business or/and forfeiture/destruction of the infringing merchandise.
