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It has been a frequently discussed question in India, whether the registration of a trademark gives an absolute right in regard of the trademark to a registered owner, and assuming this is the case, are there any dangers or legal hurdles that can compromise such a right.

At the start, the rights of a registered owner under the Trademark Act should be analysed. The Act gives that the registered owner has an exclusive right to the trademark in regard of the goods and services for which the mark has been registered and can get reliefs against the individuals who use a similar mark. Section 28(1) of the Trademark Act incorporates that an individual is entitled to institute proceedings to avert the infringement of a registered trademark and damages.

According to Section 27(1) of the Trademark Act, the following conditions must be fulfilled to initiate an action for infringement:

  • the plaintiff must be the registered proprietor of the trademark;
  • the respondent must use a deceptively similar mark to that of plaintiff’s mark;
  • such use must be in connection to the goods or services in regard to which the plaintiff’s mark is registered; and
  • the use by the defendant must not be accidental or unintentional, however in the course of trade.

Along these, where a registered trademark is infringed by an unregistered mark, and the previously mentioned conditions are fulfilled, the registered owner can obtain an order for injunction against the infringer.

Section 29 of the Trademark Act likewise, to secure a registered owner’s exclusive right to use, the Act provides that a trademark which is identical or deceptively similar like another owner’s registered trademark in regard of same goods or description of goods can’t be registered.

However, there is an exemption to Section 12(1) of the Trademark Act, if there arises the circumstances of honest or concurrent use, or use in special circumstances, when the Registrar of Trade Marks has the discretion to allow more than one proprietor to register identical or similar trademark in respect of same goods.

Further, the Act gives a right to an unregistered trademark user to keep others from using a similar trademark through an action for passing off, which is a common law remedy. In such manner, the Supreme Court, in N.R Dongre v. Whirlpool Corp. (1996) 5 SCC 714, as referred in J. S. Sarkar’s Trade Marks Law and Practice (3rd ed.) p.165, has held that the act for passing off is available to an unregistered user even against a registered proprietor.

Another restriction on the exclusive rights of the registered owner of a trademark is incorporated under Section 33 of the Trademark Act. It restricts the owner of a registered trademark from interfering with the use of a mark identical with his registered trademark, by an individual who has vested rights in the use of such mark, prior to  the use or the registration (whichever date is prior) of the registered mark. Henceforth, Section 33 of the Act nullifies the exclusive right conferred by the Act on a registered proprietor of a trademark, provided the prior use is proved by documentary evidence.

The Trademark Act gives the registered owner an exclusive right to use the trademark and to keep others from using a similar mark, this is subjected to limitations. There is plenty of case laws of different Indian High Courts and the Supreme Court on the foregoing provisions, and a conclusive supposition in the aforementioned conditions will be subject to judicial decisions and interpretations. Because of the advent of globalization and free-market economies, where brands and product names are key factors in deciding the achievement of a business, a trademark proprietor ought to examine its rights with care and caution.

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