Exclusive Rights Conferred by Trademark Registration

This clause deals with the exclusive rights conferred by registration. This corresponds to the existing Section 28 of the Trade and Merchandise Marks Act, 1958; this right has now been extended to include services also.



The section states what are the rights conferred by registration and corresponding to section 28 of the Trade and Merchandise Marks Act 1958. Since the present enactment provides registration of trademarks for services, a suitable addition has been made to cover rights conferred by such registration. The references to part A or part B of the registrar occurring in the 1958 Act have been deleted, with the abolition of the dual concept of registration under the present law. Subject to other provisions of this Act, the registration of trademark, if valid, shall give to the registered proprietor of the trademark the exclusive right to the utilization of the trademark in connection to the goods or services in respect of which the trademark is already registered and to acquire relief in respect of infringement of the trademark in the manner provided by the act. The exclusive right shall be subject to any conditions and limitations to which the registration is subject. Where two or more persons are registered as proprietors of trademarks, which are identical or nearly resemble each other, on a concurrent basis they cannot claim exclusive right against one another. But each proprietor otherwise will have the same rights as against other persons (not being registered users by way of permitted use) as he would have if he were the sole registered proprietor.

The ingredients of the section are:

  • Registration, if valid, gives to the proprietor exclusive right to the use of the trademark in relation to the goods or services in respect of which the mark is registered.
  • The Exclusive right is subject to any conditions and limitations imposed on the registration and entered on the register.
  • Where two or more persons are registered for identical or nearly resembling marks, the exclusive right does not operate against each other.
  • The rights are subject to other provisions of the Act.

Exclusive rights to use of a mark

BY implication, registered trademarks, like all other statutory intellectual property rights do not give a right to the proprietor to use but give him the right to exclude others from using. The types of activities which can be prohibited by the existence of a registered trademark are those which are set out in Section 29 of the Act. None of this gives rise to an entitlement to the proprietor to use. Registration thus gives the proprietor exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. It is a statutory right, and cannot be lost merely on the question of principles of delay, latches or acquiescence. The law is that mere delay after knowledge of infringement does not deprive the registered proprietor of statutory rights or of the appropriate remedy for the enforcement of those rights, so long as the said delay is not inordinate delay. Under the provision of section 28 of the Trade and Merchandise Marks Act 1958, a registered owner of a trademark has the exclusive right to use the trademark registration whereof is validly granted but under section 33 if another person is using the same or identical trademark earlier in point then injunction necessarily cannot be granted. Indeed that is the proposition of law which has not to be found fault with.

Statutory right limited to registered Goods or services

No doubt when a person gets his trademark registered, he acquires the valuable right by reason of such registration and registration of his trademark gives him the exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. If there is an invasion of these rights by any other person using his trademark which is same or deceptively similar to his trademark he can protect his trademark by an action for infringement in which he can obtain injunction, damages or account of profits made by the other person. However, this right of the owner of the registered trademark is subject to other provisions contained in the Act, including in particular sections 12 and 34, which confer absolute protection or immunity on a defendant who is able to prove or establish continuous user prior to the date of registration of a trademark. The plaintiffs are the registered proprietors of trademark JONTUE in respect of cosmetics and perfumes etc., in India and various other countries. The suit was filed to restrain the defendant from using the same trademark in respect of talcum powder. The court held that by virtue of the trademark registration in India, plaintiffs have exclusive statutory rights to use the said registered trademark and the use of his trademark by the defendants amounts to infringement of the plaintiff’s trademark. The adoption of the mark “JONTUE” is clearly dishonest and motivated with a view to benefit from the reputation and the goodwill attached to it and with an intention to deceive the innocent public into falsely believing that defendant’s products are that of plaintiffs or have been manufactured under same collaboration with the plaintiffs. The plaintiffs are accordingly entitled to the decree as prayed. In Decree and Co. versus Harcharan Singh, the Delhi High Court held that the defendant had blatantly copied the registered trademark of the plaintiff with the unique green and yellow color scheme and logo, and also the manner use of the colors. Such deceptively similar adoption by the defendant amounted to infringement. Defendants were restrained from using the plaintiff’s work mark ‘John Deere’, the logo, trade dress and the color combination thereof and any other mark deceptively similar to plaintiff’s mark ‘John Deere’. Plaintiffs were held entitled to the decree. The exclusive right to use of a trademark is limited to the goods or services in respect of which the trademark is registered, falling in one or more of the classes in the fourth schedule. The various classes in which the various articles are divided by the Trademarks Act are, in many cases extraordinary wide. There are included in one class all kinds of articles which in themselves differ widely from each other, but which are included because they have a common source, are made from the same kind of material or some such reason as that if a person chooses to register a mark in a class which is a wide one, without limiting it in any way at all, he may find that he does not get protection for the whole class, as he may not have the monopoly of the mark in connection with some of the goods or articles which come within that class. In cases where the mark, in fact, has been used by the registered owner in connection with or upon a particular class of goods and no others, that protection may not extend to prevent other persons using the mark in connection with the articles in the same class, so long as they are clearly different articles, easily distinguishable from one another.

 On the question of registrability of marks for specific goods, not particularly mentioned in the fourth schedule may subsume or comprise a number of goods or services which are separately identifiable and which are not goods (or services) of the same description as commonly understood in a trade or in common parlance. There are a number of distinctly identifiable goods (or services) which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised”.

Registration of trademark for a class as a whole unless the proprietor intends to use the mark in respect of all the goods or services falling in the class is discouraged by the Registrar. In Michael Holterhoff versus Ulrich Frieslenben, the European Court of Justice observed: “A trader registers or acquires a trademark primarily not in order to prevent others from using it but in order to use it himself (although exclusively of use is, of course, a necessary corollary). Use by the proprietor means being able to prevent others from using the mark to identify their goods or services since that would negate its essential function. Where a sign identical or similar to a registered trademark is used by a competitor for a purpose other than that essential function, however, it is much more difficult to see why the proprietor should be entitled to prevent such use. The use which may be prevented is confined to use for the purpose of distinguishable goods or services. Where registration of the mark of the defendant is not correctly granted in accordance with the Trademark Act and Rules, the defendant cannot take the benefits o sections 28(3) and 30 of the Trademarks act, 1999 and thus, there is no bar to the suit for infringement against the defendant.

“If valid”

The words “if valid” circumscribe the rights of the proprietor. It is to be noted that section 31 explicitly enacts that in all legal proceedings relating to a trademark registered under this Act, the original registration of the trademark and of all subsequent assignments and transmissions shall be the evidence of the validity thereof. At the same time under section 124 in any suit for infringement of a trademark, the defendant may plead that the registration of the plaintiff’s trademark is invalid. In that case, the proceedings in the matter will be governed by section 124 and 125 of the Act. Section 124 expressly recognizes the right to file an action for infringement even if the defendant’s mark is registered. Whether or not the plaintiff has challenged the defendant’s registration as yet or not, is not relevant. Section 124 establishes that the Legislature did not intend to prohibit the filing of a suit of infringement merely because the defendant’s mark is also registered. Section 124, in fact, expressly recognizes the right to file such an action. This is clear from the fact that section 124 provides that such an action may have stayed if it otherwise satisfies the provisions thereof. If it were not so, the Act would have provided for a bar to the filing of such an action. The right conferred by registration for exclusive use of the trademark in relation to the goods is subject to the registration being held ‘valid’. This is evident from the legislation intent flowing from the expression “if valid” occurring in section 28. The expression “if valid” has been included for the purpose that post trademark registration a particular person is entitled to apply for cancellation of trademark registration under section 57 of the Act even if no suit is filed alleging infringement of the registered trademark.

In this connection, the recommendation of Mr. Justice Ayyangar in his Report on Trademarks law Revision (1955) may be noted with interest. “Section 21 of the Trademarks Act of 1940 contained the words of section 4(1) of the U.K. Act, If these words were present, the validity of registration could be attacked by a defendant in an infringement Action, the usual procedure in England being for such a party to make a cross-claim for rectification. These words were deleted by the Trademarks Amendment Act, 12 of 1946 because of the reciprocal arrangements made with the Indian states as also to avoid every District Court trying an infringement action from having jurisdiction to determine the validity of the registration. In view, however, of the recommendation I have made, vesting an exclusive jurisdiction to rectify the register, in particular, High Courts, the allowance of such defense obtains In England, Canada, Australia and the United States of America, I do not see any reason why this should not be permitted here. I would, therefore, restore the words “If valid” at the place where they were before their deletion in 1946.” Following the above recommendation, the words “if valid” were restored in the Trade and Merchandise Marks Act, 1999. While the scheme of the present Act of 1999 is the same in regard to the infringement action, as existed in the earlier Act of 1958. Section 125 explicitly enacts that where in a suit for infringement of a registered trademark, the validity of the registration is questioned by the defendant, the issue as to the validity of registration shall be determined only on an application for rectification made before the Appellate Board.

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