Is Registration of Trademarks Mandatory?
In India trademark are protected by the Trade Mark Act, 1999. Under the Act the registration of trademark provide monopoly to the owner of the trademark to use the Trademark in relation to the goods for which it has been registered. The owner has full rights to sue in the court of law for infringement of trademark.
The Trademarks Act also provides certain incentives for registration through its various provisions. Chapter 4 of the Trademarks Act deals with the Effects of Registration. Section 27 of the act provides that no action for infringement can be taken for an unregistered trademark. But 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 trademark gives to the registered proprietor of the trademark the exclusive right to the use of the trademark in relation to the goods or services. Further, the registered trademark can obtain relief in respect of infringement of the trademark in the manner provided by the Act. Section 31 of the act enables registration to be a prima facie evidence of validity.
Therefore, it is not compulsory to register your trademark in India, but it is advisable to do so. For example, suppose someone is infringing your wordmark i.e. name of your company. Now to stop him you shall have to prove that you have using this mark before him and there is certain goodwill associated with the mark that the other person is passing off as his.
Benefits of registering a trademark:
1.To provide Statutory Protection for the Trademark
2.To enjoy the benefit of taking an infringement action rather than a passing off action
3.In an infringement action, the trademark registration is a prima-facie evidence of ownership but in case of a passing of action, the trademark owner has to first establish ownership over the trademark
4.To identify origin and source of the goods and/or services
5.To build reputation/goodwill in the market
6.To protect consumers from purchasing inferior quality products
However, an action for passing off can be brought by a prior user of the mark and registration has no bearing/impact in an action for passing off. The factors that govern a passing off action are as under:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resemblance between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trademarks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Following is the process for registration of trademarks in India:
1.Public search has to be made before filing the application and in the public search the [articular class has to be checked whether there is a previous trademark with the same type or not.
2.If there is no similar trademark found, then an application can be made either online or offline.
Offline registration:
Application for registration has to be made in the Form TM1 for the goods and services and authorization of an agent has be obtained by filling the Form TM 48. If the application is made by the company then it should be accompanied by the Board resolution and the list of directors.
Online registration:
Class III digital signature has to be obtained from the Indian Certifying Authorities and the signing component has to be downloaded and installed. Registration has to be completed by creating an ID and a password and a number will be generated after submitting the documents (either online or offline) and the status of the application can be checked using this number. If there are any objections, the same are looked into and then the trademark is registered.