In October 2017, in a rather unprecedented move, the Assistant Registrar of Trade Marks, Chennai filed a criminal complaint under Section 107 against four proprietors for using the “®” symbol alongside their unregistered marks, thus falsely representing their marks as registered.
As per Section 107 of the Trademarks Act, any person who makes a false representation that their mark is a registered trade mark, when in fact it is not; or makes a false representation that a part of a registered trade mark is separately registered as a trade mark, shall be punishable with imprisonment up to three years, or with fine, or both.
A complaint was filed by the Assistant Registrar for offences committed under Section 107, against four proprietors, namely ‘Quality Sweets & Namkeens’, ‘Kids Fun Foods India Pvt. Ltd.’, ‘Gunal Foods Pvt. Ltd.’ and ‘SRK Food Products’ for using the “®” symbol alongside their unregistered marks, “Kidsfun” and “Tofo”, thus falsely representing their marks as registered.
In these cases, the marks that were being falsely represented as registered were either different from the marks that were actually registered by the proprietors; or application for registration of the falsely represented marks had been filed, but such application was still pending for registration.
Here, it must be noted that the symbol “™” may be used for an unregistered mark, i.e. when is a mark is pending registration, or even if no application for registration of the mark has been filed. On the other hand, the symbol “®” indicates that the mark has been registered, and cannot otherwise be used in respect of unregistered marks.
In this instance, one “Rajini Food” brought the information of false representation before the Registrar in August 2016, following which the Registrar sent show cause notices to the accused. The parties were given opportunity to show cause, after which a hearing date was prescribed. However, none of the accused proprietors appeared in the said hearing, prompting the Assistant Registrar to file the said complaint.
This is a pertinent development as it demonstrates the criminal liabilities prescribed in the Trade Marks Act, which are rarely resorted to by the IPO and is a welcome move to deter any false use of the “®” symbol with any unregistered marks. It also serves as a reminder to brand owners to strictly implement a brand usage policy and not use the “®” symbol alongside their trademarks unless they have been granted registration in India.