Protection of Unregistered Trademarks
As law developed, trans-border reputation and a right to protect Unregistered Trademarks against dilution have also been recognized.
The Trademarks Act, 1999 (hereinafter referred to as ‘the Act”) gives rights and protection in the form of remedies to not only registered, but also unregistered trademarks. Even though a registered trademark is given a statutory remedy under Sections 28 and 29 of the Act, under Section 27(2), the Act provides for remedy for unauthorized use of an unregistered trademark by recourse to the common law in tort, that is through an action for passing off, and protect the goodwill that is attached to unregistered trademarks through use and reputation.
Passing off is a remedy available to both registered and unregistered trademarks, but an infringement suit can be filed only in respect of misuse of a registered trademark. Reliefs available in both suits are permanent injunction, interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.
Validity and burden of proof when challenged
Under Section 31 of the Trade Mark Act, prima facie evidence of registration of a trade mark is the proof of its validity. This means that the registration has much more benefits in terms of the burden of proof and evidentiary value. So the validation of a trade mark is through its registration. But on the contrary the onus is on the owner of an unregistered trademark to prove the value and goodwill attached to the goods or the services and that it has become popular and well recognized among a substantial segment of the public. The owner should also be able to establish that there is deceptive similarity between its unregistered trademark and the trademark in question, and that the use of the subsequent mark is bound to lead to confusion among the general public. The House of Lords in the case of Reckitt & Colman Ltd V Borden Inc6 has observed that Reputation, Misrepresentation and Damage to goodwill are the fundamental elements that have to be established for a case of passing off.
The difference between legal remedies based on an unregistered trademark as compared to a registered mark mainly lies in the fact that action on infringement is a statutory remedy whereas action on passing off is a common law remedy. The burden of proof resting on the plaintiff in a suit for infringement filed by a registered trademark owner, would not be as high as it is under a passing off action based on an unregistered mark. While in an infringement suit for a registered trademark, the registration of the trademark is prima facie proof of validity of the trademark, and proving deceptive similarity would be enough to establish that the infringer is liable, in an action for passing off, the plaintiff will not only have to prove deceptive similarity but also prove prior established reputation for the unregistered mark, likelihood of confusion among the public and also likelihood of causing injury to plaintiff’s goodwill, thus passing the test the triple trinity test. It is important for the plaintiff to prove prior use, as well as such reputation and distinctiveness acquired by his / her mark in relation to their goods / services, that people associate the mark to his / her goods. As stated in Consolidated Foods Corporation v. Brandon & Co. pvt Ltd 1,“Priority in adoption and use of a trade mark is superior to priority in registration”. Supreme Court has also laid emphasis on priority in use in the case of Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd, (2004) 6 SCC 145 The Hon’ble Supreme Court in Dhariwal Industries Ltd. & And. Vs. M.S.S. Food Products , has stated that Section 27 of the Trademarks Act, 1999 provides that nothing in Trade Marks Act shall be deemed to affect the right of action against any person for passing off goods or services as the goods of another person or as services by another person or the remedies in respect thereof. Therefore, the fact that neither party has a registered trade mark as on the date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting the plaintiff an injunction in case the plaintiff is in a position to show prima facie that it was the prior user of his/her mark, that he/she had a prima facie case and that the balance of convenience was in his/her favour of the grant of an interim injunction.
Another very important ingredient in a passing off action is Misrepresentation. Misrepresentation can be both intentional and unintentional, what has to be seen is whether the defendant is selling his goods in such a way that a common ordinary man would confuse his good to that of the plaintiff’s. As stated in Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr5: The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public, (the word “public” being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff.
The common law provides remedies for an unregistered Trademark to certain extent under the Act which is relief to users of prior, reputed trademarks who may not have registered their trademarks.
The judgment given by the Hon’ble Supreme Court in the famous case of State of U.P. Vs. Ram Nath, Partner M/S Panna Lal , [AIR 1972 SC 232] further laid emphasis on the fact that the provisions dealing with offences, penalties and procedure under criminal law for falsifying, falsely applying and using false description of trademarks, are also silent and have deliberately not used the word ‘Registered”. Hence, law does not forbid unregistered trademark holders from initiating criminal action for remedy against falsification and false application of their trademarks.
Nevertheless, weighing the stronger benefits, easier remedies available and lesser burden of proof required for registered trademarks, it would be advisable to register the trade mark to ensure quicker and easier remedies as well as to reduce the complexity of procedure to protect trademarks. .
 Dhariwal Industries Ltd. & And. Vs. M.S.S. Food Products 2004 (29) PTC 45 MP
 Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and Ors. 2004 (73) DRJ 647, 2004 (28) PTC 121 SC, 2004 (2) SCALE 231, (2004) 3 SCC 90
 State of U.P. Vs. Ram Nath, Partner M/S Panna Lal, [AIR 1972 SC 232]
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.