Where a registration is affect to any elements or regulations as announced in the Trademarks Journal and as subsequently get into the register, the complete right appearing out of the trademark is registered naturally subject to those conditions and limitations. The condition or limitations may be as follows:
- Variation condition, where the owner has agreed that the name and relation of goods appearing on the mark will be varied when the trademark is used in parallel to goods services protected by the statement, other than those specified in the field.
- Conditions regarding association with other marks of the holder under section 16.
- Condition that the registered mark shall not be used in respect of certain specific goods/services.
- Blank space condition requiring that any blank space in the label shall be occupied only by matter of non-trademark character.
- Limitation condition as to the area within which the registration is to operate for example, limitation is imposed as “goods for sale in the state of..”
When two or more persons are registered for identical or nearly resembling marks, the full right does not operate one each other.
If two or more persons are registered for the same or similar mark in respect of the aforesaid goods or services are complete legal to the use of any of those marks shall not work against as per section 28(3), read with section 30(2)(e). The total rights are subject to other provisions of the act. A non-exclusive license cannot restrain the statutory rights vested in the registered owner of the trademark and also cannot prevent the use of the mark by any other licenses.
In RS healthcare Pvt Ltd v. Gopala Krishnan, a suit for infringement was held maintainable against another registered holder of identical or similar trademark and in such suit, while staying further proceeding pending decision on rectification, an interim order including injunction restraining the use of trademark registration by the suspect can be made by the court, if the court is prima facie convinced of the invalidity of registration of the suspect’s mark.
Limits on effect of trademark registration
- Section 30 specifically enumerates circumstances where use of a trademark registration by any person for the point of identifying goods or services as those of the proprietor, will not constitute infringement:
- If the use in conformity with honest works in industrial or commercial matters and is not such as to take unfair trademark. For example, comparative advertisement.
- The use of the mark in parallel to goods or services indicates the quantity, type, quality, etc. which are form in nature. The tradename contains a logo it should also be registered on the same time.
- The use of the mark in any manner, having regard to the circumstances or restrictions, the registration does not extend.
- The work by a person of the trademark in association to the goods/services attached in the course of trade with the holder or the person who registered trademark, the trademark registration and has not subsequently removed or obliterated or has at any time directly or intimately responded to the use of the trademark.
- Where the purpose and result of the work of the trademark is to specify which the services have been performed by the holder or the person who registered trademark.
- Person has a right to work the trademark in bond to the goods adopted to form or accessory to other goods or services of the registered proprietor. If the use of the trademark is logically need in request to specify that the goods or services are so adapted and the purpose of the work of the mark is just to show a relation in the way of trade between the holder and the goods/service.
- Use of a trademark in exercise of the right given by registration under section 12 of the act.
- Sale of the goods in the market or other dealing in those goods after the goods having a trademark registration which are lawfully acquired by a person is not an offense (section 30(3)), Section 34 protects the vested rights, so that the holder have to registered a trademark. if the person have been using the mark from an earlier date in relation to his goods or service.
- Section 35 expressly saves the valid use by a user of his own name or his precursor in business, his point of business or valid explanation of the characteristic or value of the goods or services. The brand name or your company logo should also be registered under the trademark.
Essential requirements for a case of infringement
- The petitioner’s mark is registered.
- The suspects mark is similar with or misleading near to the petitioners.
- The appellant’s use of the mark is in the way of trade in respect of goods/services managed by the registration of trademark.
- While the above in general statement of law, as per section 29(1), the different situations in which the trademark is violated are listed in sub-section (2) to (9) of section 29.