The owner of the trademark becomes entrusted with certain exclusive rights as a result of registration of the trademark. There are two different rights that are granted as a part of the exclusive rights that are, firstly, the right to exclusive use of the trademark and secondly is prohibiting the others from using the trademark.
The owner of the trademark is conferred with the following rights on registration of trademark
- Right to exclusive use of the trademark
- Right to Apply it on the goods and services
- Right to transfer the rights on the mark
- Right of Assigning (with or without goodwill)
- Right to authorize other person to use the mark
Any unauthorized use of a registered trademark, exploitation of registered trademark and violation of rights conferred on the owner of trademark constitutes infringement. The section 29 (1) of the Trademarks Act, 1999 talks about infringement of registered trademarks. In the case of DM Entertainment v Baby Gift Houseit was observed by the court that section 29 of the Trademarks Act, 1991 lays down the aspects of infringement of trademark. In order to determine whether there is an actual infringement, there are certain ingredient that are as below:
- Use of a registered mark in whole
- Taking out the essential features of a mark with additions or alterations
- Use of a similar or identical mark to that of the registered trademark owner
- Use of the mark in regular trade similar to that of the registered trademark owner
- Use of the mark in respect of similar goods and services to that of the registered mark
In such cases of infringement, a suit can be filed by Proprietor/Owner, assignee, exclusive licensee, agent, representative and registered user before the appropriate forum not below the rank of District Court.
DETERMINATION OF INFRINGEMENT:
In the case of Durga Dutt Sharma v Narayan Pharmacy Laboratories, the court observed the test to determine infringement of marks. It held that firstly the similarity between the registered mark and alleged mark is to ascertained by following rules of comparison. The court also laid down the comparison postulate as given below
- Comparison of the marks visually, phonetically and conceptually.
- Comparison of the exact words, letters and numbers used in the mark.
- Comparison of the business and goods of the parties.
DEFENCES IN CASE OF INFRINGEMENT:
The following are the defenses that are available against infringement. The section 30 to 35 of the Trademark Act, 1999 talks about the same.
- Ineligibility of the plaintiff to institute the suit
- Fair use of the mark (non-commercial purpose)
- Generic mark (common in course of trade)
- Prior use of the trademark
- Concurrent registration of trademark
- Using the trademark with the consent of the owner of the mark
- No knowledge of registration by the proprietor
Thus, the registration of the trademark becomes quite important but certainly there are also remedies that are available against infringement of unregistered trade mark (passing off). But registration of trademark confers upon the owner of the trademark exclusive rights that are highly inevitable.
3rd year BA LLB (Hons)
UPES School of Law
 DM Entertainment v Baby Gift House MANU/DE/2043/2010.
Durga Dutt Sharma v Narayan Pharmacy Laboratories AIR 1965 SC 980