ISSN: 2041-6792

Clinical Investigation

Trade Mark Related-articles

 In India, the Trade Marks Act 1999 and the rules thereunder guide the process of registration and enforcement of rights relating to trademarks. The Indian regime affords protection to registered as well as unregistered marks. In case of misuse of a registered mark, the right holder can initiate an infringement action against the violating party. For misuse of unregistered marks, the right holder is entitled to claim protection under the law of passing off. In order to succeed in an action for passing off, the plaintiff must meet these three criteria: (1) established goodwill or reputation of the plaintiff attached to the relevant goods or services under its mark, (2) misrepresentation by the defendant which is likely to deceive the public into believing that the defendant’s goods/services emanate from the plaintiff and (3) damage suffered or likely to be suffered by the plaintiff. It is important to remember that the Indian regime affords high importance to prior use. Therefore, an infringement action on the basis of a prior registered mark by a registered proprietor may not succeed against a prior user. Trans-border reputation also holds huge weight, but a party relying on trans-border reputation must be able to prove the acquisition of this reputation in India before the date of adoption and use of the relevant mark by the other party in India. Even though remedies have been provided to owners of unregistered marks, it is still always advisable to register a mark because in actions based on registered marks, the onus of disproving infringement lies with the defendant. On the contrary, when an action is initiated on the basis of unregistered marks, the plaintiff has to discharge a heavy burden of meeting the threefold criteria of passing off as mentioned above.  

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