In India, it is not essential that a mark needs to be registered. Unregistered trademarks enjoy a certain degree of protection as well. However, registering a trademark allows the proprietor of the trademark to enjoy certain benefits. They are listed below:

1. Exclusive Right:

The successful registration of a trademark gives the proprietor the exclusive right to use the trademark, in relation to the goods and services for which the mark is registered. So if ‘A’ registers the word ‘LEX’ for wallets, the same cannot be used by ‘B’ for wallets, but may be used for pens. This ensures that the consumers will be able to distinguish and identify the proprietor’s mark with respect to that particular good or service, thereby enhancing his reputation in the market.

2. Proof of validity:

In the event that there is any litigation with relation to the trademark, then the registration of the trademark would become evidence, at face value, of the validity of the mark.

3. Lower Burden of Proof:

A registered trademark is afforded a higher degree of protection. A proprietor for a registered trademark may sue for infringement of the trademark. In the case of an unregistered trademark, there is recourse for unjust use of the mark, under passing off.

Infringement is more stringent than passing off. In other words, the level of proof required to establish infringement is lower than that of passing off. For proving infringement, one only needs to establish that there is deceptive similarity between the two marks. However, for proving passing off, there needs to be proof of deceptive similarity and confusion caused among the public, as well as damage to the reputation of the proprietor of the unregistered mark. For instance, if ‘A’ needs to prove that his mark ‘LAKME’ for cosmetics, has been infringed by the mark ’LIKEME’, then he must prove that the elements of deceptive similarity are met. If ‘A’ does not have a registered trademark, he must first prove that ‘LAKME’ has accrued certain goodwill, that it has a reputation. Second, he must prove that there is deceptive similarity. Thereafter, he must establish that there is confusion caused among the public, which causes them to assume ‘LAKME’ products, when they are actually buying ‘LIKEME’ products. Finally, A must show that there has been actual or reasonable loss suffered by the deceptive similarity of the infringing trademark.

Also, in a suit for passing off, the proprietor will need to prove continued, uninterrupted use of the trademark. However, by virtue of the second point discussed here, the proprietor of a registered trademark will not need to do so.

4. International recognition:

Registering the trademark in India would grant some international benefits for the proprietor. First, as India is a signatory to the Paris Convention for the Protection of Industrial Property, registering a trademark in India would give certain priority and privilege when the proprietor would want to register the trademark in any other country which is a signatory to the Convention.  Secondly, by virtue of the Trademark Amendment Act of 2010, the proprietor may register the trademark in any country under the Madrid Protocol.

Therefore, registering a trademark is beneficial in many ways, and ensures the monopoly over the use of the mark, for related goods and services, in a less cumbersome manner than the system in place for unregistered trademarks.

We hope this article was a useful read. 

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