A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.

1. TRADEMARK RIGHTS
Prasanna R Kovath
Assistant Professor
Department of Biotechnology
St. Mary's College Thrissur

2. OWNERSHIP
• Ownership of a trademark in India is determined on a first-to-use
basis.
• Unlike the law on patents or designs, the trademark law mandates the
first-to-use rule over the first-to-file rule.

3. THE TRADE MARKS ACT, 1999
• An Act to amend and consolidate the law relating to trade marks, to provide
for registration and better protection of trade marks for goods and services
and for the prevention of the use of fraudulent marks .
• The law also provides for the rights acquired by registration of trademark,
modes of transfer and assignment of the rights, nature of infringements,
penalties for such infringement and remedies available to the owner in case
of such infringement.
• This Act may be called the Trade Marks Act, 1999.
• It extends to the whole of India.
• Enactment Date: 1999-12-30
• Act Year: 1999
• Act Number: 47

4. • Statutory protection of trademark is administered by the Controller
General of Patents, Designs and Trade Marks, a government
agency which reports to the Department of Industrial Policy and
Promotion (DIPP), under the Ministry of Commerce and Industry.
• TRADEMARK
• Trademark defined under Section 2 (zb) of the Trade Marks Act, 1999
as, "trade mark means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their
packaging and combination of colours.“
• A mark can include a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any such combinations.

5. • TRADEMARK CLASSES
• Trademark law 2002, suggests that trademark can be registered in
India under 45 different classes.
• The two symbols associated with Indian trademarks
• Trademark symbol (can be used with any common law usage of a
mark)
• Registered trademark symbol represent the status of a mark and
accordingly its level of protection.(only be used by the owner of a
mark following registration with the relevant national authority).

6. • The trademark symbol, is a symbol to indicate that the preceding
mark is a trademark, specifically an unregistered trademark.
• It complements the registered trademark symbol, which is reserved
for trademarks registered with an appropriate government agency.
• USES
• Use of the trademark symbol indicates an assertion that a word, image,
or other sign is a trademark; it does not indicate registration or impart
enhanced protections.
• Registered trademarks are indicated using the registered trademark
symbol, and in some jurisdictions it is unlawful or illegal to use the
registered trademark symbol with a mark that has not been registered.
• The service mark symbol, is used to indicate the assertion of a service
mark (a trademark for the provision of services).

7. REGISTERED TRADEMARK
• A "registered trademark" confers a bundle of exclusive rights upon
the registered owner, including the right to exclusive use of the mark
in relation to the products or services.
• Registration of a trade mark is not a mandatory requirement in India. A
trade mark is registered for a period of 10 years and is subject to
renewal. The Trademarks Act 1999 governs the whole process of
registration. Registration is required for the following reasons:"
• It identifies the origin of goods and services;
• Advertises goods and services;
• Guards the commercial goodwill of a trader; and
• Protects the innocent public from buying the second rate quality
goods.

8. BENEFITS OF REGISTERED TRADEMARKS
• Registration gives a monopoly right to the mark in a particular
territory. It allows the owner of a registered trademark to prevent
unauthorized use of his mark in relation to products or services.
• The test is always whether a consumer of the goods or services will
be confused as to the identity of the source or origin. The
infringement of registered trademarks can lead to legal suits and the
burden of proof of the plaintiff is eased due to registration.

9. • For a registered trademark, an action for infringement lies where the
aggrieved can be sought civil and criminal reliefs. Moreover, section
28 of the act confers certain benefits on registration.
• Registration of a trade mark gives to the registered proprietor of the
trade mark the exclusive right to the use of the trade mark in relation
to the goods or service.
• Further, the registered trademark can obtain relief in respect of
infringement of the trade mark in the manner provided by the Act.
Section 31 of the act enables registration to be a prima facie evidence
of validity.

10. UNREGISTERED TRADEMARKS
• As a first-to-use country, unregistered trademarks with prior use can
be protected under common law in India.
• The passing off of trademarks is a tort actionable under common law
and is mainly used to protect the goodwill attached to unregistered
trademarks.
• It is founded on the basic tenet of law that one party should not benefit
from the labour of another.
• Various judicial decisions have established that a passing-off action is
a misrepresentation made by a person in the course of trade to
prospective customers of the manufacturer or the ultimate consumers
of the goods or services that it supplies:
• which is calculated to injure the business or goodwill of another party.
• which causes actual damage to the business or goodwill of the party
which has brought or is likely to bring the action.

11. • An "unregistered trademark" is one which does not possess legal
benefits. But in some cases, an unregistered trademark may get
common law benefits.
• Unregistered marks are defined as marks which are not registered in
relation to goods or services (that is names, marks or logos used in
relation to a business) under the Trademark Act.
• Though under s. 27 no action for infringement is allowed for
unregistered trademarks, it can still be protected by means of common
law tort of passing off.
• To succeed in such an action, it is necessary to establish that
unregistered mark has comparable goodwill or reputation in
connection with the product, service or business with which it is used.

12. • Thus, owner of an unregistered trademark may be able to prevent use
by another party of an infringing mark pursuant to the common law
tort of passing off.
• The action against passing off is based on the principle that 'a man
may not sell his own goods under the pretense that they are the goods
of another man'.
• Passing off is a species of unfair trade competition by which one
person seeks to profit from the reputation of another in a particular
trade or business.

13. HOW ARE RIGHTS IN UNREGISTERED MARKS
ESTABLISHED?
• In a typical passing-off suit, the courts will generally consider the
following issues:
• whether the plaintiff is a prior user of the mark;
• whether the plaintiff’s goods have acquired distinctiveness and are
associated in the minds of the general public with the plaintiff’s mark;
and
• whether there is a misrepresentation by the defendant with regard to its
goods and such misrepresentation is likely to lead to confusion in the
minds of consumers, with the result that they may treat the defendant’s
goods as those of the plaintiff

14. DIFFERENCE BETWEEN UNREGISTERED AND
REGISTERED TRADEMARKS
• The basic difference between the two is in terms of protections
available for registered trademarks and unregistered trademarks.
• The former is a statutory remedy and the latter is a common law
remedy. It is necessary to establish the infringing mark is
identical/deceptively similar to the registered trademark in order to
establish infringement.
• Unregistered trademarks may gain protection, where the goods and
services have a highly significant position in the market.
• These trademarks are used in the course of trade which is well known
to the public in India. Apart from this, there are different symbols
representing the both.
• Registered trademark is represented by the symbol ®. An unregistered
trademark is represented by the trademark symbol".

15. ARE ANY SPECIAL RIGHTS AND PROTECTIONS AFFORDED
TO OWNERS OF WELL-KNOWN AND FAMOUS MARKS?
• The trademark law accords extraordinary protection to trademarks that
are ‘well known’ and safeguards them from infringement or passing
off. The Trademarks Registry recognises well-known trademarks in
India on the basis of international, national and cross-border
reputation.
• The Trademarks Act 1999 protects well-known trademarks in two
ways:
• an action against the registration of similar marks; and
• an action against the misuse of the well-known mark.

16. WHAT LEGAL RIGHTS AND PROTECTIONS ARE
ACCORDED TO REGISTERED TRADEMARKS?
• A trademark registration:
• provides prima facie evidence of ownership and validity;
• provides statutory protection in India;
• helps to deter others from using the trademark unlawfully; and
• allows a suit for infringement to be brought.
• In contrast, in the case of an unregistered mark, a passing-off suit can
be filed. As passing off is a common law remedy, the burden of proof
is more severe on the plaintiff than in an infringement action.

17. • https://www.mondaq.com/india/trademark/537964/difference-
between-unregistered-and-registered-trademark
• https://www.lexology.com/library/detail.aspx?g=94c66405-135a-
493a-a29e-1487ace18c6b