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Exclusive Rights of Trademark Owner 0

BY SETINDIABIZ CATEGORY: TRADEMARK REGISTRATION CREATED ON JANUARY 18, 2017


Reading Time: 5 minutes | Last Updated On: March 30, 2018

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.

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.

1. Rights of Unregistered Trademark Holder/Owner


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;


(ii) The act of the defendant amounts to misrepresentation;
(iii) The claimant has suffered or is likely to suffer damage due to the act of the
defendant.

2. Rights Of Registered Trademark Holder/Owner


Following are the rights which are at disposal of the owner or holder of a registered
trademark

(i) Right to Exclusive Use


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
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trademark In Ramdev Food


is registered.

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 favour 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”.

(ii) Right to Seek Statutory Remedy Against an Infringement


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.

(iii) Right of Registered Trademark holder of Identical 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.

(iv) Right to Assign


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
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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.

(v) Right to Seek Correction of Register


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.

(vi) Right to Alter 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.

Related Article:

Process and Procedure of Importance and Benefits of


Trademark Registration in Trademark Registration
India

How to Do Trademark Search   Flow Chart of Trademark


Registration

Madrid System of Trademark Attorney Search Report


International Trademark and its Benefits
Registration

Common Problems of How trademark is Classified Among


Trademark Registration 45 Classes as per NICE Classification

More information about Company registration, GST and Trademark Service Company

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Trademark Registration

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