The whole procedure of registering a trademark is expensive and time-consuming. Nonetheless, the owner of a registered trademark is granted a number of significant rights as soon as the registration is secured. These privileges are valid for ten years and are renewable. On the other hand, a trademark owner who does not have a registered trademark also has rights under common law. The ability to forbid a third party from using an identical or confusingly similar trademark in certain situations is one of the rights granted to both registered and unregistered trademark owners.
Any third party that uses a trademark that is confusingly similar to one that is owned by the owner is prohibited from doing so. Competitors pass off when they engage in such improper use. Under Common Law Rights, legal action can be taken for an unregistered trademark violation.
In order to take legal action against the pass-off, the owner must be able to establish the following crucial elements;
Rights Of Registered Trademark Holder/Owner
In accordance with Section 28(1) of the Act, the registered proprietor of a trademark has the sole right to use the trademark in connection with the products or services for which the trademark is registered, subject to the provisions of the Act. As the Supreme Court noted, “Section 28.. grants an exclusive right of utilizing the trademark to a person who has the trademark registered in his name. this makes such a right unalienable. However, from the start of Section 28(1) of the Act namely, “subject to the provisions” the right bestowed on the registered propriety is not an indefeasible right.
The Act’s Section 27(2), which states that “nothing in this Act will be interpreted to impede the right of action of any person for passing off the products as the goods of another person or the remedies therefor,“ further clarifies this. This means that the right granted by Section 28(1) of the Act to a registered trademark owner is not absolute and is subject to other provisions of the Act, such as Section 27(3), 33 (saving for vested rights), etc.
It’s important to remember that the registered owner of a trademark has the sole right to use it in connection with the products or services for which it is registered, and may not have that right in connection with other goods or services for which the trademark is registered.
In accordance with the provisions of this Act, the registered owner of a trademark may seek legal redress in the event that his trademark is violated, according to section 28(1). He can file a lawsuit against the suspected infringer to get an injunction and, at his discretion, damages or accounts of profits. If willful counterfeiting occurs, the owner of an unregistered trademark cannot start an infringement case. The Delhi High Court has noted that registering a trademark grants the owner of the mark some extremely significant rights. One such significant privilege is mentioned in Sub-section (1) of section 27, which states that no one shall be permitted to bring a lawsuit to stop or recoup damages for the infringement of an unregistered trademark.
According to Section 28(3), the exclusive right to use any trademark owned by two or more registered proprietors that is identical to or nearly identical to another person’s trademark shall not (except to the extent that such rights are subject to the conditions or limitations entered on the register) be deemed to have been acquired by any such person as against such other person merely by registration of trademarks. Each of those individuals, however, has the same rights against people who are not registered users and who are using the service in accordance with permissible usage as he would have if he were the only registered owner.
According to Section 37 of the Act, the registered owner of a trademark has the authority to assign the trademark and to issue effective receipts for any price for such assignments. The Act’s provisions and any rights that the register indicates may belong to another person will, however, be subject to this right’s limitation.
The registered owner of a trademark has the right to submit an application to the registrar for the rectification of any mistakes in the register relating to the registered proprietor’s information and other features of the registered trademark.
The owner of a trademark who has registered it must submit an application to the registrar asking for permission to add to or after the trademark in any way that does not materially alter its identity. The registrar has the right to deny the leave or grant it under the conditions and conditions that he sees proper.