Infringement of Registered Trade Ma

INFRINGEMENT OF REGISTERED TRADE MARKS
It deals with the effect of registered trade mark and unregistered trade mark,
rights conferred on the proprietor of registered trade mark and infringement of
registered trade marks under Sections 27 to 36. The reliefs in suits for
nfringement or for passing off is dealt with under Section 135. Now we will proceed
to consider these topics in detail. order to get protection under the Act,
registration is necessary. Now lets disCuss what are the rights conferred on the
proprietor on registration of mark and then we will see what is effect of
unregistered trade mark.
1. Rights conferred by registration
Section 28 deals with rights conferred by registration. There are four modes of
acquiring a protectable right in trade mark.
They are:
1. By by user;
(ii) By registration
(iii) By permission or licence ; and
(iv) By Sgnment.
When a person gets his trade mark registered, he acquires valuable "gnts by reason
of such rights. Section 28 confers two rights to the proprietor Of registered trade
mark. They are :
1. Exclusive right to use it in relation to the goods or services;
2. The ripht to take action in case of ts intringement against those who might be
infringing it, by using it or its deceptive similar in relation to their goods or
services.
INERINGEMENT OF REGISTERED TRADE MARKS

The trade mark is a kind of property and is entitled to protection under the law
irrespective of its value in money so long as it has some business or commercial
value. It is not only the interest of the public but also the interest of the owner
which is subject concerning trade mark legislation.! The Registration of his trade
mark gives him exclusive right to the use of the trade mark : connection with the
goods in respect of which it is registered and if there js any invasion of this
right by any other person using a mark which is the same or deceptively similar to
his trade mark, he can protect his trade mark by an action of infringement in which
he can obtain injunction, damages or account of profits made by the other person.
In Indo-Pharma Pharmaceutical Works Lid Vs. Citadel Fine Pharmaceuticals Ltd, the
Madras High Court has held that the registration of a trade mark shall give to the
registered proprietor of the trade mark, the exclusive right to the use of trade
mark in relation to the goods respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark in the manner provided
under the Act.
The Act confers an exclusive use of the right in respect of a trade mark only in
relation to the goods in respect of which it has been out by registered. This is
pointed In this the case,
Madras High Court in Parry and Co. Ltd., Madras Vs. Perry & Co." under the
registered the appellant marks have been manufacturing confectionary products
Parry's' writen in 'Parry's' and the design which contains the word script form in
respect of sugar and all kinds of confectionary, while the latter was confined to
all kinds of confectionary. The respondents were engaged in the manufacture and
sale of biscuits since the year 195+ under the registered trade mark Perry
(Registered in 1950). The appellant protested against the use of the words Perry as
according to them, they woula 61 amount to colourable imitation of that mark. In
this connection, the Madras High Court held that the Act gives an exclusive use of
the right in respect of a trade mark only in relation to the goods in respect of
which it has been registered. If a registered owner wants to use a mark in respect
of several goods in a particular class, he will have to apply for registration in
respect of all those goods. The court observed that biscuits and confectionary are
identical. When registration is granted under the Trade Marks Act, with respect to
biscuits, it cannot obviously give a right to its proprietor of the mark to use
that mark for confectionary. The court restrained the respondents from selling
their confectionary under label containing words, 'Perry's or Perry & Co.'
London Rubber Co Lid Vs. Durex Products and Another AIR 1959 Cal 56.
2 American Home Products Corporation Vs. Mac Laboratories 3 AIR 1998 Mad 347 at
350.
4 AIR 1963 Mad 46
Pvt. Lsd. AIR 1986 SC C137.
2. Effect of unregistered trade mark :
The owner in respect of that trade

infringement.
thal no person shall
2. Effect of unregistered trade mark
Without
MARKS
Over damages for, the infringement of unregistered trade mark. However
the provisO clause provides i remedics to the unregistered proprietor of a trade
mark. This provISO clause, recognises the common law rights of the another trade
mark peson as services provided by another person as the remedies thereof.
oWner to take action against any person for passing-off goods as the goods of
mark and he can takc legal action in case of its
mark has becn given the registration exclusive rights he cannot bring that action.
Section 27 provides
be entitled to institute any procecding to preve

Infringement of Registered Trade Ma

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INFRINGEMENT OF REGISTERED TRADE MARKS

1. Rights conferred by registration

INERINGEMENT OF REGISTERED TRADE MARKS

2. Effect of unregistered trade mark :

The owner in respect of that trade

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