The registration of a trademark is a costly and time-consuming process. However, once the registration is obtained, the proprietor of a registered trademark is vested with certain valuable rights. These rights exist for ten years which can be renewed further. On the other hand, a proprietor of an unregistered trademark is also vested with rights under the common law. One such right conferred on both, registered as well as unregistered trademark proprietor, is to prevent the third party from using an identical or deceptively similar trademark under certain circumstances.
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It is pertinent to note that an unregistered trademark can be protected with the help of common law after an extensive use made of it however, the registered trademark can be protected from the date of registration only and before they are used. This brings into sharp focus that a right of registered trademark holder to prevent an unauthorized use of his trademark is more convenient than that of an unregistered trademark holder.
Rights of Unregistered Trademark Holder/Owner in India
The proprietor of an unregistered trademark can prevent any third party from using an identical or deceptively similar trademark, provided such an unauthorized use by the rival results into passing-off. For this purpose, he can initiate the proceedings under common law. Therefore, such a right is known as a common law right. Apart from an injunction, the claimant may at his option, obtain either damages or an account of profits. The claimant must establish three important factors in order to bring an action against the pass-off, namely-
- He has acquired goodwill in his trademark
- The act of the defendant amounts to misrepresentation;
- The claimant has suffered or is likely to suffer damage due to the act of the defendant.
Rights Of Registered Trademark Holder/Owner in India
Following are the rights which are at disposal of the owner or holder of a registered trademark
1. Right to Exclusive use : Right of Trademark Holder
Section 28(1) of the Act provides that subject to the other provisions of this Act, registration of a trademark, if valid, give to the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the Supreme Court observed “Section 28…. confers an exclusive right of using trademark to a person who has the trademark registered in his name. Such right is, thus, absolute.
However, from the opening of Section 28(1) of the Act namely, “subject to the provisions” the right conferred on the registered proprietor is not an indefeasible right. This is further, made clear by Section 27(2) of the Act, which says “nothing in this Act shall be deemed to affect the right of action any person for passing off the goods as goods of another person, or the remedies in respect thereof.
Thus, the right created by Section 28(1) of the Act in favor of a registered proprietor of a trademark is not an absolute right and is subservient to other provisions of the Act Namely Sections 27(3), 33 (saving for vested rights) etc. It is also pertinent to note that the registered proprietor of a trademark gets exclusive rights to use the trademark in relation to goods or services in respect of which it is registered and that person may not have the right to use the trademark in respect of the other goods or services in respect of which the trademark is registered”.
2. Right to Seek Statutory Remedy Against an Infringement : Right of Trademark Holder
Section 28(1) also provides that the registered proprietor of a trademark can seek legal remedy in case of an infringement of his trademark in the manner provided by this Act. He may obtain an injunction and at his option, either damages or an account of profits by instituting a suit against the alleged infringer. The proprietor of an unregistered trademark cannot initiate the infringement proceeding in the event of a deliberate counterfeiting. The Delhi High Court has observed that registration of a trademark confers on the person some very valuable rights. To mention only one such right, one may turn to Sub-section (1) of Section 27 which provides that no person shall be entitled to institute any proceedings to prevent or to recover damages for, the infringement of an unregistered trademark.
3. Right of Registered Trademark holder of Identical Trademark : Right of Trademark Holder
Section 28(3) provides that where two or more persons are registered proprietor of trademarks, which are identical with or nearly resembling with each other, the exclusive right to use of any of those trademarks shall not (except so far as their respective rights are subject to conditions or limitations entered on the register) be deemed to have been acquired by any of those persons as against any other of those persons merely by registration of trademarks. However, each of those persons has otherwise the same rights against other persons excluding registered users using by way of permitted use, as he would have if he were the sole registered proprietor.
4. Right to Assign : Right of Trademark Holder
Section 37 of the Act provides that the registered proprietor of a trademark shall have the power to assign the trademark and to give effectual receipts for any consideration for such assignment. However, this right shall be subject to the provisions of the Act and to any rights appearing from the register to be vested in any other person.
5. Right to Seek Correction of Register : Right of Trademark Holder
The registered proprietor of a trademark has a right to make an application to the registrar seeking correction of register regarding the errors pertaining to the particulars of the registered proprietor and other aspects relating to the registered trademark.
6. Right to Alter Registered Trademark : Right of Trademark Holder
The registered proprietor of a trademark must make an application to the registrar seeking leave to add to or after the trademark in any manner not substantially affecting the identity thereof. The Registrar may refuse the leave or grant it on such terms and may be subject to such limitations as he may think fit.
Conclusion
The registration of a trademark grants the proprietor exclusive rights to its use, offering a more convenient means of preventing unauthorized use compared to common law protection. Registered trademark holders in India can seek statutory remedies against infringement, obtain injunctions, damages, or accounts of profits. They also have the right to assign the trademark, seek corrections to the register, and make alterations, providing flexibility and control over their intellectual property. While the registration process may be costly and time-consuming, the valuable rights bestowed upon registered trademark holders make it a worthwhile investment for long-term protection and enforcement of their brand.
FAQs
Q1: What are the rights of a trademark holder in India?
Trademark holders in India have the exclusive right to use their registered trademark in relation to the specific goods or services for which it is registered. They can also seek legal remedies against infringement, including obtaining injunctions, damages, or accounts of profits from infringers.
Q2: How long does a trademark registration last in India?
In India, a trademark registration is initially valid for ten years from the date of filing the application. However, it can be renewed indefinitely for successive periods of ten years each, ensuring ongoing protection for the trademark.
Q3: Can an unregistered trademark holder take legal action against infringement?
Yes, an unregistered trademark holder in India can initiate legal action against infringement through the common law concept of passing off. To establish a case, the unregistered trademark holder must demonstrate acquired goodwill in their trademark, misrepresentation by the alleged infringer, and resulting or potential damage to their business.
Q4: What is the process for enforcing trademark rights in India?
The process for enforcing trademark rights in India typically involves initiating legal proceedings before the appropriate court or authority. This may include filing a lawsuit for infringement, seeking injunctions, damages, or accounts of profits, and presenting evidence to establish the violation of trademark rights.
Q5: Can I assign or transfer my trademark rights to someone else?
Yes, trademark holders in India have the right to assign or transfer their trademark rights to another party. The process typically involves executing a legal agreement or deed of assignment, which transfers the ownership of the trademark from the assignor to the assignee. However, it is important to adhere to the provisions of the Trademarks Act and any existing rights registered on the trademark register.
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