INTRODUCTION
Registratio n o f a trademar k unde r th e India n Trad e Mark s Act , 199 9 , i s no t mandatory. As a result, both registered and unregistered trademarks are defendabl e i n Indi a throug h a passin g of f o r infringemen t lawsui t i n a cour t o f law. India, a common law nation, upholds both codified law and common law principles , an d a s a result , i t offer s bot h infringement san d passin g of f action s for trademark infringement. In India, r ights to a trademark can be obtained by earlier adoption as well as through extensive, continuous, honest, legitimate, and uninterrupted use of the mark. Both passing off and trademark
WHAT ARE REGISTERED AND UNREGISTERED MARKS?
A trademark that has been registered under the Trademark Act of 1999 grants
i t s owne r exclusiv e r ights . Hi s ownershi p o f suc h a trademar k afte r registratio n becomes the initial piece of proof.
A s w e previousl y noted ,th e Ac t doe s no t requir e tha t a trademar k b e registered, therefore unregistered trademarks are those that are not registered . However , compare d t o th e lega l protectio n provide d t o registere d trademarks, the protection they receive is quite l imited.
WHAT IS PASSING OFF?
Passin g of f i s a commo n la w tort , whic h ca n b euse d t o enforc e unregistere d trademark r ights. In the case of PerryvTruefitt ( 1842 ) for the f i rst t ime the principl e o f passin g of f wa s introduced , i . e . “ Nobod y ha s th e r igh t t o represen t his goods as the goods of somebody else”.
CRITERIA FOR A PASSING OFF ACTION
Th e primar y purpos e o f India ' s passin g of f statute , whic h i s actionabl e unde r common law, is to safeguard the goodwill associated with unregistered trademarks . Th e fundamenta l rul e o fla w state s tha t on e shoul d no t profi t fro m another person' s labor. The following are the criteria for a passing- off action-
WHAT IS PASSING OFF?
Reputation: It is crucial to prove in court that an unregistered trademark has a reputation in the market and can be easily differentiated under the class of goods, businesses, or services for which it is used. An unregistered trademark must have some goodwill and reputation in the market which means, people should recognize such a mark.
Prior user: Unregistered trademarks are given statutory protection under Sections 34 and 35 of the Trademark Act, 1999. These clauses essentially state that a prior user of a trademark will have priority over later users notwithstanding being registered in order to protect the interests of an unregistered trademark.
Misrepresentation: The party instituting an action against passing off needs to prove that such passing off by a third party has caused him actual damage in business and profit due to the misrepresentation.
FINDING & CONCLUSION
A n unregistere d trademar k owne r ha s som e r ight s an d remedie s accordin g t o the Trademark Act of 1999 and common law remedies, but i t also puts a burde n o n him . Th e unregistere d trademar k owne r ma y believ e tha t takin g lega l action to prevent passing off provides adequate protection, but there are still requirements that must be completed.
A trademark serves as a brand' s and a product' s identification. The r ights derived from such a brand must be very carefully considered and understood. I t is advised for such a person to register his trademark in order to take advantage of the range of r ights
offered by the Trademarks of
