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.
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-
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”.
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.
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.
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.
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.
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.