If the trade mark is a registrable one the best way to protect it is by registration. Infringement of the mark can be easily established.
If the infringing mark is identical and the goods covered by registration, the success in an action” for infringement is almost certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could establish honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user, if the marks are not identical but only similar then the plaintiff will have to establish that the defendants’ mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion which is a proposition not easy to establish.
Ultimately the question of similarity is one for the judge to decide on which opinion may often differ.
ADVERTISEMENTS:
Passing off:
In the case of unregistered marks and marks which are not registrable the only way they can be protected is by an action for passing off. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.
Criminal action:
Criminal action against the infringer is possible whether the mark is registered or unregistered provided the marks are very close. Though men’s intention to deceive need not be proved, evidence of fraudulent intention will be an important factor in favour of the complaint.
ADVERTISEMENTS:
Service marks:
There is now provision for registration of service marks in India under the new Act. Such marks or names are used by business rendering various kinds of services can, therefore, be protected by action of infringement if registered.
The value of a trademark, whether registered or not can be maintained only if the proprietor uses it and takes prompt action against an action for infringement, or passing off or by criminal proceeding
If infringement of the mark is not prevented the mark become generic words, i.e. the name of the goods or common to others-A trade as it is called by the use of the mark or a similar mark by an action for infringement well chosen and well protected trademark is the most valuable o property and the strongest.
