To enjoy the anatomical beauty of the provision of Section 29 (4) of the Act, it is requisite to discuss the provision of Section 28 in nutshell. S. 28 throbs the rights of the registered proprietor by way of valid registration of a trade mark. The registration of a trademark gives exclusive right to use of that trademark in relation to the goods or services for which the trademark is registered and to obtain relief in case if such trademark is infringed.
Plain reading of section 28(1) establishes that (1) the registration of a trademark must be valid (2) it gives exclusive rights to the registered proprietor to use the Trademark (3) for goods or services in respect of which it is registered (4) for obtaining relief of infringement as provided in the Act.
It means that if a trademark is not registered for a particular goods or services, there is no infringement in that case as per provision of Section 28 (1) and plaintiff is not entitled to claim relief of infringement unless it is registered for the goods or services and no exclusive right to use of that trademark is claimed.
Section 28 (3) says when there are two registered proprietors of Trademarks, neither of them takes action for infringement of his trademark against each other, however, they can take action against the third party who is not registered proprietor or registered user of the trademark in dispute.
Section 29 beautifies the action in case of infringement of registered trademarks. It informs that understand which circumstances, an infringement of registered trademark can be considered.
Now coming back to the subject matter of this blog i.e. section 29 (4)(b) of the Act, the moonlight of this provision is that a registered trademark is infringed if a mark which is used to goods or services which are not similar to those for which the trade mark is registered.
That means, is Section 29(4) contrary to section 28 and rest of the provisions of section 29 of the Act ? The answer is No. It is not contrary to them but Legislature may think that registered proprietor of a trademark ought to be protected even if a mark is used for dissimilar goods or services to those for which the trademark is registered. This is the beauty of the provision of Section 29 of the Act, however, this walk path has certain limitations or condition precedents.
Let me discuss those condition precedents for applicability of section 29 (4) of the Act
1) the trade mark of the plaintiff must be registered.
2) the trademark of defendant is identical and/or deceptively similar to the registered trademark of the plaintiff.
3) the goods or services of the defendant must be dissimilar to that of plaintiff who is a registered proprietor.
4) the important condition is that the registered trademark of the plaintiff has a reputation in India.
5) the use of mark, by the defendant without due cause, takes unfair advantage of the registered trademark of the plaintiff.
6) the use of a mark of defendant is detrimental to the distinctive character or repute of the registered trademark.
It is pertinent to note that all the above mentioned criterias have to be satisfied together and not individually by the plaintiff to restrain the use of a mark by the defendant for dissimilar goods or services. Unless these conditions are satisfied by the plaintiff in his case, section 29 (4) is not applicable.
Section 29 (4) & Section 28 (3) of the Act:
If the trademark of the defendant is registered, then can section 29(4) is applicable ?
The answer is NO.
Reasons:
1) one registered proprietor can not file a suit for infringement against another registered proprietor as per Section 28 (3) of the Act.
2) the plaintiff must be registered proprietor of the trade in dispute for applying section 29 (4).
3) the defendant must not be registered proprietor of a mark.
4) if plaintiff is not registered proprietor in and defendant is registered proprietor of a trademark for the goods or services used or provided by the defendant, section 29 (4) is not remotely applicable.
(5) if plaintiff has failed to prove his USE of the trademark for the goods or services in respect of which the defendant is using the trade mark as a registered proprietor, section 29 (4) is not at all applicable.
The main object is Trademarks Act is to protect the use of the Trademarks of a proprietor and the public interest at large. When there is no use of a mark in trade, there is no protection. Mere registration of a trademark does not protect the registered proprietor at all.
Chirag Bhatt
Partner
Y.J.Trivedi & Co.
9824025041
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