WHAT RIGHTS DOES TRADEMARK REGISTRATION PROVIDE?
Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used. Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act.
Therefore, prior user of the marks should be protected against monopoly rights conferred by the Act. A trademark has no meaning even if it is registered unless it is in relation to goods. Otherwise, its non-use may lead to its death. A trade mark which drops out of use dies. Where there are no goods offered for sale, there is no use of trademark.
An infringement action is a suit on trademark and not on reputation. The defendant who copies the mark cannot plead as a defence particularly because the defendant is dishonest as he has copied the mark. But, priority in use cannot be dishonest and, therefore, the defendant who has prima facie evidence of priority in use, could plead delay as a strong defence.
Registration itself does no create a trademark. A trademark exists independently of the registration. Registration under the Trade Mark Act, 1999 does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration.
Registration merely affords further protection under the statute, common law rights are left wholly unaffected. It is for a person to decide whether to get his mark registered or not. Use of a trade mark, in fact, it is very important.
A trader acquires a right of property in a trade mark merely by using it in connection with his goods or services irrespective of the length of such user and the extent of his trade.
The registration of a trade mark provides exclusive right to the registered proprietor of the trade mark to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. Section 28 of the Trade mark Act, 1999 makes the registered proprietor entitled to obtain relief in respect of a trade mark shall be subject to any conditions and limitations to which the registration is subject to.
In N.R. Dongre and Others v. Whirlpool Corporation and Another, the Delhi High Court observed that According to Section 28(1) of the Act, registration of a trade mark gives to the registered proprietor thereof proprietor thereof exclusive right to use the same in relation to the goods in respect of which it has been registered.
But from the opening words of section 28(1) namely, “subject to other provisions” it is clear that the right conferred on a trader is not an indefeasible right as the same is expressly made subject to other provisions of the Act.
This is further made clear by section 27(2) of the Act, which provides that “nothing in this Act shall be deemed to affect the right of action against any person for passing off the goods as goods another person or the remedies in respect thereof.”
Thus it is manifest that Section 28 of the Act and all other provisions come within the overriding sway of Section 27 (2) of the Act. Similarly, Section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same.
Thus the right created by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right and in subservient to other provisions of the Act.
In addition, to protect a registered owner’s exclusive right to use, the Act provides that a trade mark which is identical or deceptively similar to another proprietor’s registered trade mark in respect of the same goods or description of goods cannot be registered.
(Section 12 (1) of the Act) However, there is an exception toSection 12(1) of the Act, in case of honest or concurrent use, or use in special circumstances, when the Registrar of Trade Marks has the discretion to permit more than one proprietor to register identical or similar trade marks in respect of the same goods.
Another restriction on the exclusive right of the registered proprietor of a trade mark is under Section 33 of the Act. It prohibits the proprietor of a registered trade mark from interfering with the use of a mark identical with his registered trade mark, by a person who has vested rights in the use of such mark, prior to the use or the registration (whichever date is earlier) of the registered mark.
Hence, Section 33 of the Act negates the exclusive right conferred by the Act on a registered proprietor of a trade mark, provided the prior use is proved by documentary evidence.