Pravin and Dhruv Anand of Anand and Anand offer practical tips for protecting and enforcing trademarks in India
During the lifetime of a mark, its owner must consider using a range of strategies to protect it. These need to be implemented during its adoption, use and registration, and also while opposing efforts by third parties to register similar marks.
Stay away from descriptions
A cardinal rule while adopting a trademark is to avoid descriptive and generic words. However, despite the red-letter caution, companies choose to ignore this warning. As a result they struggle to protect or enforce their marks even years after beginning to use them.
A case in point is the recent case of Marico Ltd v Agro Tech Foods Ltd. The plaintiff’s efforts to protect the brand “Low Absorb”, used in relation to edible oil, failed miserably in the Supreme Court.
Keep it consistent
While using a mark, another rule is to maintain uniformity. Perhaps Google is the only company that can get away with a deviation from this rule. Most companies lose distinctiveness if they alter their logo and the general trend is to have uniformity in all possible renditions of the mark.
Build your defences
Companies must endeavour to register their trademarks, as the strength of a registered trademark is substantially higher than that of an unregistered one.
If a trademark is not registered, foreign companies must obtain evidence of “use” or “reputation” in India. Reputation is best proved by showing advertising in local publications, or even international publications that are circulated in India. Advertisements are the most valuable tools in the hierarchy of evidence to prove the fame of a mark.
Having said this, the volume of evidence is not important but the quality certainly is. A few invoices with the trademark appearing clearly on them or advertisements that show the name and date of the publication are superior to a thick bundle of invoices with the trademark hardly visible, or advertisements bearing no dates or publication details.
Experience shows that small mom-and-pop businesses that have excellent record-keeping have a high success rate in proving use. As opposed to this, many large corporations have not kept their evidence ready and often struggle to produce meaningful documents.
Companies that need to use scanned documents, as originals are not traceable, must take steps to lead secondary evidence under the provisions of section 65 of the Indian Evidence Act, 1872, or follow the procedure of section 65B to prove electronic documents.
If documents are lost, destroyed or cannot be found despite due diligence, the court’s permission can be taken to rely upon secondary evidence. If the documents are electronically scanned or are emails or other website downloads, they can be proved by filing an affidavit signed by the person in charge of the computer systems.
Keeping the evidence ready can ensure that the company can quickly file a lawsuit or oppose a mark, or even defend a cancellation action. Sometimes the deadline may be so tight that there is no time to collect evidence.
Another way to substantially save time is to appoint an attorney in India who is authorized to sign all the papers once they have been approved. If this is not done, the papers will have to travel back and forth between countries going through the process of notarization, fixation of an apostille or even legalization before an embassy or a consulate. In enforcement, the owner may have to move swiftly, not in days or weeks, but sometimes in a few hours. Having an Indian constituted attorney gives the trademark owner the agility to act quickly.
Proprietors of trademarks should also try to file a few test cases with the objective not just of stopping the infringement, but having the trademark recognized as a well-known mark. If the court does so in one case, then administratively the Registrar of Trademarks could be compelled to put the mark on its recently started register, which currently has 53 marks on it.
Companies should also monitor trademark journals to avoid statutory acquiescence. If a trademark is registered for more than five years, it is difficult to remove the same unless it lacks good faith. Searching the register once every six months and covering as many classes as possible is a good investment.
Strike back with care
A few practical tips for an enforcement action are summarized below:
- While drafting affidavits, ensure that the affiants have properly appeared before a notary public. The affiant should originate the thoughts, ideas and wordings of the affidavit, which can be given shape by an assisting attorney. The verification paragraphs at the end of the affidavit must be carefully drafted to convey facts within personal knowledge or those based on company records.
- Avoid suppression of material facts at any cost. When in doubt include matter rather than exclude it.
- Finally pay special attention to understand the relevant court or tribunal so as not to annoy them, but to move in complete harmony with their likes and dislikes, as these subjective factors dominate the protection and enforcement environment in India.
Pravin Anand is the managing partner of Anand and Anand and Dhruv Anand is a senior associate at the firm. They can be contacted at [email protected] and [email protected] or by telephone on +91 120 4059300.