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Aug, 09 2011

TRADEMARK PROTECTION IN INDIA

Brand protection has gained importance in the wake of globalisation, thus there is a need for uniform standard for protection of unique identity.

FOREIGN brands, looking at coming to India through franchising, are always keen to protect their intellectual property before they start their operations here. Acquiring trademark protection in India should be a priority with brands looking to franchise. It has to be verified whether a particular trademark can be used in India without any challenge. Before the start of the business operations, the application for registration of trademark should be filed with the office concerned under the Trademarks Act, 1999. Indian Trademarks Act provides protection for goods and services that are distinctive, afford provisions for periodical renewal of registration, assignment, protection against infringing use and passing off, classification of goods and services and recognition of the concept of well-known trademarks.

Trademarks and trans-border reputation

Foreign trademarks that have acquired popularity and acknowledgment in India can be protected even if they are not registered or used here. This is called ‘Principle of Trans-border Reputation’ and such marks are nomenclatured as ‘Well-known Trademarks’; the implication being that the mark has become popular among people, who use such goods or receive such services, that the use of such a mark in relation to other goods and services is likely to be taken as indicating a connection between the two marks.

Incidents of trademarks' protection

The most important incident is of the use of the mark “WHIRLPOOL”, which was protected on the basis of acquired reputation and goodwill. It was also held to have become associated in the minds of people with Whirlpool Corporation on account of circulation of the advertisements in the magazines despite no evidence of actual sale and irrespective of its actual use or registration in India.

Recently, the court had granted permanent injunction in favour of Louis Vuitton, manufacturer of leather goods and accessories, to check counterfeiting of Louis Vuitton products. The Delhi High Court restrained others from selling any product bearing the Louis Vuitton mark or any other mark deceptively or confusingly similar. Louis Vuitton also claimed an order for delivery of all finished and unfinished materials and accessories, packaging, labels, dyes, blocks and other material bearing any of the Louis Vuitton trademarks or bearing any other mark/logo/device similar thereto for the purpose of erasure/destruction. The court further directed the defendants to destroy the goods seized by the local commissioner on a date to be intimated to the plaintiff in its presence or in the presence of the plaintiff's representative. The defendants were also directed to bear the costs.

Earlier, the Indian courts had also restrained the use of the well-known trademark LACOSTE by local traders holding them liable for infringement and dilution of the mark. Further, it's not just the trademark, also the logo can be restrained from unauthorised use, as was decided in the case of Mercedes Benz, the luxury car manufacturer of Germany. Once, the geographical extent and duration of the use of the trademark is established, unauthorised commercial use thereof in relation to any goods or business can be prevented.

(Author is a Senior Consultant at FranLegal)

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