BASICS OF TRADEMARK
A trademark is any sign, symbol, word, or combination of words that are registered or authorized for use in identifying a company’s goods or services. As a result, any alteration or unauthorized use of this trademark by any other person or entity provides the owner and proprietor of the Trademark the right to pursue legal action, making the trademark of a corporation the most crucial aspect of its existence.
In India, trademarks are governed by the Trademarks Act, of 1999 (‘Act’). The Trademarks Act follows the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement).
Trademarks can generally be divided into two categories keeping in mind the legal protection they get: registered trademarks and unregistered trademarks. In this blog, you will get a brief insight into the difference between the two.
The Trademarks Act of 1999 establishes the legal framework for trademarks in India. The Trademarks Act follows international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement)
REGISTERED TRADEMARK
In order to statutory stop others from using identical or similar names, a trademark has been filed with the trademark registry and get it registered. It gives the owner legal protection and enables them to file a lawsuit for trademark infringement. The registration of a trademark preserves a proprietor rights, reputation, goodwill and gives them the right to take legal action. A Trademark Registration certificate is prima facie evidence of ownership of a brand name.
LEGALITIES OF REGISTERED TRADEMARK
The Trademarks Act, through its different sections, also provides specific incentives for trademark registration. The effects of Registration are covered in Chapter 4 of the Trademarks Act. In the case of a registered trademark, the aggrieved might seek civil and criminal redress in a trademark infringement action. Furthermore, registration offers some benefits under Section 28 of the Act.
The exclusive right to use a trademark in connection to products or services is granted to the registered proprietor of the trademark when it is registered. Furthermore, the registered trademark can seek remedy against infringement of the trademark under the Act’s provisions. Registration can be used as prima facie proof of legitimacy under Section 31 of the Act.
Registration grants the mark a monopoly right in a particular region. It enables a registered trademark owner to prohibit unlawful use of his mark in connection with goods or services. Here are some benefits that will excite you:
1. Legal defence: Having your trademark registered gives you legal protection from third parties using it without your permission.
2. Uniqueness: A registered trademark sets your company apart from competitors and aids in creating a strong sense of brand identification.
3. Exclusive usage rights: When a trademark is registered, the owner is granted exclusive usage rights in connection with the goods and services listed in the registration.
4. National protection is offered through federal trademark registration in India.
5. Public recognition: A registered trademark improves brand recognition and contributes to reputation-building.
6. Evidence of ownership: A trademark’s right to use and ownership are both shown by a registered trademark.
7. An expensive asset that can be licensed or sold is a registered trademark.
8. Legal presumptions are attached to a registered trademark. The validity and ownership simplify the enforcement of trademark rights.
VALIDITY OF REGISTERED TRADEMARK
A trademark’s registration serves as prima facie proof of its validity. As a result, regardless of public awareness, the trademark has an evidentiary value from the time of registration. The Online trademark registration is valid for a period of ten years from the date of application and a Trademark renewal request can be filed before the trademark office one year prior to the date of expiry. A trademark can be valid for an infinite time subject to a renewal request.
UNREGISTERED TRADEMARK
A trademark that has not been formally registered with the government or trademark office is said to be unregistered. The owner can still use this form of trademark, which is protected by common law, but they are not afforded the full range of advantages and safeguards that come with trademark registration. A trademark that is not registered may be more difficult to enforce and defend against infringement, it is crucial to understand.
LEGALITIES OF UNREGISTERED TRADEMARK
Although there is no action for infringement for unregistered trademarks under the Act, they can still be protected under the common law tort of passing off. To be successful in such an action, the owner must demonstrate that the unregistered mark has equivalent goodwill or reputation concerning the product, service, or company with which it is associated.
As a result, under the common law tort of passing off, the owner of an unregistered trademark may be entitled to restrict the use of an infringing mark by a third party. The notion that “a man may not sell his own products under the pretense that they are the property of another man” underpins the action against passing off. Passing off is a type of unfair trade competition in which one person attempts to profit off another’s reputation in a specific trade or company.
BENEFITS OF UNREGISTERED TRADEMARK
Here are some of the benefits of going with an unregistered trademark:
1. Low Cost: Unregistered trademarks are less expensive because there are no official registration costs to pay, which makes them more affordable for startups and small businesses.
2. Flexibility: Unregistered trademarks can be used more creatively and freely because they are not subject to the same stringent guidelines and limitations as registered trademarks.
3. Unregistered trademarks are simple to modify or abandon without the requirement for formal documentation or legal action.
4. Swift start: It is possible to utilize an unregistered trademark right away without having to go through the drawn-out trademark registration procedure.
5. Unregistered trademarks do not need to be renewed on a regular basis, unlike registered trademarks, which do.
6. Potential for later registration: If an unregistered trademark proves to be successful, it can always be registered at a later date for greater legal protection.
VALIDITY OF UNREGISTERED TRADEMARK
It is the owner’s responsibility to demonstrate the unregistered trademark’s value and goodwill. It is only when it has established a positive public image that it is granted protection. Please note- The owner of an unregistered trademark is responsible for demonstrating the duration or length of time that the reputation of the services or goods existing or existing in the market.
DIFFERENCE BETWEEN REGISTERED TRADEMARK AND UNREGISTERED TRADEMARK
Some key differences between Registered Trademark and Unregistered Trademark are:
1. Legal protection: Under trademark law, registered trademarks grant the owner legal protection, but unregistered trademarks do not.
2. Trademark registration: Unlike unregistered trademarks, registered trademarks are formally registered with the government.
3. Ownership proof: Registered trademarks offer ownership proof, whereas unregistered trademarks do not.
4. Registered trademarks grant the owner the sole authority to use the mark in a certain territory, whereas unregistered trademarks do not.
5. Owners of registered trademarks have the right to file a lawsuit to stop trademark infringement; owners of unregistered trademarks are not entitled to do so.
6. Government, courts, and the general public all recognize registered trademarks, whereas only the general public does so for unregistered trademarks.
7. Renewal: Registered trademarks require a 10-year renewal, however, unregistered trademarks do not have to be renewed.
REGISTERED v. UNREGISTERED TRADEMARK
FEATURE | REGISTERED TRADEMARK | UNREGISTERED TRADEMARK |
Legal Protection | Strong Protection from a legal perspective that is granted by the government and appropriate authority. | Only limited protection is available from the legal perspective based on common law. |
Official Records | Officially recorded with the government trademark office. | Not officially recorded. |
Symbol | Can use the ® symbol. | Cannot use the ® symbol. |
Enforceability | In case of infringement they are easier to enforce. | The owner encounters certain difficulties enforcing them. |
Renewal | Must be renewed periodically with a fixed fee. | No need for renewal or any fee payment. |
Exclusive Use | Only the owner possesses the exclusive rights to use it. | Only the owner shall use it but it may be difficult to prove exclusivity and ownership. |
Transferability | Can be sold, assigned, or licensed to another party. | May be transferred but the process is unclear and difficult to navigate through. |
National Protection | Protects the trademark where it is registered (nation). | Only protected in the particular region where it is prominently used. |
Legal Proceedings | In case of infringement, a legal proceeding can be instituted and won. | In case of infringement, a legal proceeding can be initiated but the chances of winning are very slim. |
won. | chances of winning are very slim. |
CONCLUSION
To conclude in a nutshell, there lie various similarities between a registered and an unregistered trademark but the differences are quite stark too. From a simple overview of the two, it is highly recommended to get your trademark registered because it increases your chances of staying protected. After all, precaution is always better than cure!
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association
Last update – 13-10-2023
