Protecting a brand effectively is by no means an easy task. Presently in case global economy, where products and services are meant for consumption in various countries, policing of brands has become more difficult as compared to earlier. Easy travel, internet availability, cheaply available replication technology and brand hungry consumers have made duplication of famous brands an attractive way to make a duplicate easily. Despite spending considerable effort and money on consumer awareness, advertisement and brand promotion, businesses often find their trademarks being diluted b being a result of infringement and passing-off. In the greatest number of cases, such dilution proves to be fatal to the business as its brand is much more valuable than its tangible assets.
As brand owners are somewhat protected in territories in which they have obtained trademark registrations, they often have to struggle to enforce their rightful claims in various countries where their brands are not registered. Not only do brand owners in such cases have to fight against counterfeits but in most of the cases also have to prove their ownership over their brand. On numerous occasions, it comes as a shock for famous business owners to learn that they are close from chartering into new territory as their brands have been completely misappropriated and owned by third parties who have no connection with the brand at all. In that cases, to protect third party misuse of their trademarks, foreign entities have to directly rely on their brand goodwill or trans-border reputation and have also to prove that the same has spilt over in the territory of dispute.
While proving trans-border reputation in a trademark which is well-known in the territory of dispute may be comparatively easy for foreign business, it is usually a heavy task for a foreign entity, whose trademark is not well-known or much famous in the territory of dispute, to enforce their trademark rights, irrespective of the fact that their brand or trademark could be well-known in various other parts of the world. However, to establish their trademark rights, a foreign claimant has to rely on the common law action of passing-off other than an infringement action as it usually does not hold any trademark registrations in the territory of dispute. Passing-off is considered to be the oldest among the modern legal regimes for the need for protection of trademarks. Broadly, an action of passing-off aims to restrict a party from misrepresenting their goods or services as that of another party in a matter to take advantage of the personal reputation.
One of the essential features for a successful passing-off action is that the claimant should establish a reputation in the marks under which they are selling their goods or offering services such that the consuming public associates those marks distinctly with that of the claimant's goods or services. In India, traditionally, a foreign claimant could establish their reputation under their marks only by showing some sort of trade connection concerning the relevant consumers in the Indian territory. However, with India becoming a global economy and the Indian public becoming much more aware of the foreign brands, establishing a reputation in their marks has become less stringent for the foreign claimants in India. Under the new liberal approach adopted by the Indian courts, foreign claimants can now easily prove the trans-border reputation of their marks in India and sustain an action for passing-off by providing evidence of advertisements of their marks in any type of media having circulation in India.
