Answer ... The Trade Marks Act, 1999 provides common law benefits to unregistered trademarks.
Even though Section 27 of the Trade Marks Act, 1999 provides no action for infringement of unregistered trademarks, it can still be protected by means of the common law tort of ‘passing off’. Section 27(2) of the Trade Marks Act, 1999 provides a remedy for the unauthorised use of an unregistered trademark. Passing off is a common law tort which is most commonly used to protect goodwill and reputation that is attached to unregistered trademarks. Passing off is based on the principle that a person may not pass off its goods or services as those of another person. In order for a passing off action to succeed, the owner of an unregistered trademark must be able to establish that its unregistered trademark has accrued goodwill or reputation in connection with the products, services or business with which it is used. The owner should also be able to establish that there is deceptive similarity between its unregistered trademark and the trademark in question, which is bound to lead to confusion among the general public.
Answer ... A registered trademark confers a bundle of exclusive rights upon the registered owner under Section 28 of the Trade Marks Act, 1999. The owner of a registered trademark can prevent unauthorised use of the trademark in relation to the products or services for which it is registered.
Section 31 allows registration to be treated as prima facie evidence of validity. Section 28 also confers certain benefits on registration, including the following:
- Right to exclusive use: Registration of a trademark shall, if valid, grant the registered owner the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered.
- Right to seek statutory remedy against infringement: The registered owner of a trademark can seek legal remedy in case of infringement of the trademark in the manner provided by the Trade Marks Act, 1999. The owner may obtain an injunction and, at its option, either damages or an account of profits by instituting a suit against the alleged infringer.
Answer ... Various precedents have held that a descriptive word which lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.
In order to trademark a descriptive mark, the owner of the trademark must show that the mark has acquired a ‘secondary meaning’ in the marketplace. Accordingly, considering that a descriptive mark proceeds to registration based on acquired distinctiveness, there is no separate register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record – the Trademarks Register – shall be kept at the head office of the Trade Marks Registry, in which the details of all registered trademarks are recorded, including:
- the names, addresses and descriptions of the owners;
- notifications of assignment and transmissions;
- the names, addresses and descriptions of registered users; and
- conditions, limitations and such other matters as may be prescribed.