Everything about Registered users of Trademark in India

Everything about Registered users of Trademark in India

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Focus keyword- Registered users

Additional keyword- Section 49, registered proprietor, registration as a registered user

Intellectual Property law has many sub-divisions within it. However, among them, one of the most popular is trademark law. Trademark law primarily protects unfair competition between companies and business enterprises by using a logo, symbol, design, or a domain name.

A trademark is a sign or symbol which aids in distinguishing the goods and services of one enterprise from another enterprise.1 It creates the uniqueness of the goods and services. Registering a trademark is a crucial step for any business enterprise. It guarantees protection from infringement, along with giving it a distinct character. 

Who Is A Registered User?

Section 2(V)(x) defines a registered user under the Act of 1999. A registered user is someone who has been reported for the time being under Section 49.

Section 48 of the Trade Marks Act 1999 further states in detail which is a registered user.  It has been defined as someone other than the registered proprietor of a trademark may be registered as a registered user in respect of any, all, or some of the goods or services regarding which the brand has been reported.2 In other words, a registered user is someone other than the proprietor of the trademark who registers himself with the Trademark Registry and shall, therefore, be called a registered user. Section 48 of the Trade Marks Act, 1999 read with Section 2(1)(r) of the said Act, only applies to registered users, was stated in Exxon Mobil Corporation, and Ors. vs. P.K. Sen.3The use of the trademark will be considered to be used by the proprietor.

How To Be A Registered User?

This provision of how a person can become a registered user is mentioned under Section 49 of the Act. In a case, if it is seen that a person should be registered as a registered user, both the proprietor and the proposed proprietor will write to the Registrar. This applies to the Registrar will be accompanied by the following, as laid down under Section 49(1)(b).

  • Firstly, the agreement should be either in writing or by a duly authenticated copy. This has to be entered into between the registered proprietor and the proposed registered user, i.e., the person registered as the user. This should be concerning the permitted use of the trademark.
  • Secondly, an affidavit is made by the registered proprietor or by any person who is authorized by the Registrar to act on behalf of the registered proprietor.
  • Thirdly, the particulars of the relationship proposed or existing between the proprietor and the proposed registered user. Along with this, the details showing the degree of control by the proprietor over the permitted use. Lastly, it will include whether there will be a term of the relationship that the proposed registered user shall be the sole registered user or that there shall be any other restrictions as to persons for whose registration as registered users application may be made. 

Apart from these three major requirements, there are specific other necessities that need to be fulfilled.

  • Firstly, the goods and services for which the registration is being proposed have to be stated.
  • Secondly, the conditions or restrictions proposed concerning the characteristics of the goods or services, the mode or place of permitted use, or any other matter.
  • Thirdly, it has to be mentioned whether the trademark’s permitted use is for a limited period or without a limited period.
  • Fourthly, and lastly, any other such documents or evidence which the Registrar may require or prescribes.

When the requirements mentioned above have been fulfilled, the Registrar will register the proposed registered user regarding the services or goods in question.

Following Section 49(3), the Registrar shall issue a notice in the prescribed manner of registering the registered user to the other registered users of the trademark. This is only if there exist such other registered users.

The Rights Of The Registered User 

The registered user possesses some rights as enshrined under Section 52 of the Act of 1999. 

The registered user may institute any proceedings in his name for the infringement, keeping in mind that there is an agreement between the parties. The proceedings will be initiated as if the registered user were the registered proprietor himself. In this situation, the registered proprietor will be made a defendant. The rights and obligations of such registered use in such cases are concurrent with those of the registered proprietor.4 However, according to Section 52(2), the registered proprietor who has been made the defendant shall not be liable for any cost unless he enters an appearance and further takes part in the proceedings. In the case of Exxon Mobil Corporation & Anr vs. P.K. Sen, 5it was stated that a registered user of a trademark to institute a suit for infringement without making the registered proprietor a plaintiff in such a case, the registered proprietor has to be impleaded as a defendant.

The Registrar has the power to give notice requiring the registered proprietor to confirm to him within one month that the agreement, at any time during the continuance of the registered user’s registration. Suppose this confirmation is not furnished within one month, then in that scenario. In that case, the registered user shall cease to be a registered user on the day immediately after the exit period’s expiry. This shall further be notified and communicated by the Registrar.

However, it is to be kept in mind that the Act does not give the registered user any assignable or transmissible right to the use.

While reading and analyzing Section 49, Section 50 must also be looked at. This section gives the Registrar the power for variation or cancellation of the registration of the registered user. 

  • Firstly, there may be variation by the Registrar with regards to the goods or services in respect of which it affects the application in writing in the prescribed manner of the registered proprietor of the trademark.
  • Secondly, the Registrar may be cancelled on the application in writing in the prescribed manner of the registered proprietor or the registered user or any other registered user of the specific trademark.
  • Thirdly, it may be cancelled by the Registrar on his own or the application in writing by any person, on the ground that any agreement between the registered proprietor and the registered user regarding the quantity of the goods or services about which the trademark is to be used is either not being enforced or is it being complied with.
  • Fourthly, the registered user has used the registered trademark in a manner not mentioned in Section 49 or in such a way that it can cause deception or confusion.
  • Fifthly, the proprietor or the registered user had misrepresented or failed to disclose some facts essential to the application for registration. If it had been accurately represented or informed, t the proposed use registration would not have been justified.
  • Sixthly, the circumstances have changed since the date the registration was done so that they would not have justified registration of the registered user at the date of such application for cancellation.
  • Seventhly, and lastly, the registration should not have been affected concerning the rights vested in the applicant under a contract in the performance of which he is interested.

Registered Proprietor

Before concluding this discussion, we must discuss who exactly is a registered proprietor. According to chapter I, section  2(V)(v), a registered proprietor is the person for the time being entered in the register as the trademarks’ etiquette.

The protection given to the registered user is not bulletproof. It has some loopholes. It was said that passing off would lie at the instance of a prior user, even against the registered user. This was stated in the case of Lupin Ltd Johnson And Johnson.6

Conclusion

There has always been a conflict between a registered and a proprietary user. Although they seem to be different, there lie numerous similarities between them; however, both have their distinct character.

This aspect once again proves the intricacies of TradeMark law. Although a part of intellectual property law, it stands out on its own with its distinct features and complexities. Despite being involved, it forms one of the most exciting parts of intellectual property law.

Endnotes

1.  World Intellectual Property Organization;https://www.wipo.int/trademarks/en/

2.  Section 48(1) of the Trade Marks Act 1999.

3.  2018(76)PTC263(Cal)

4.  Section 52(1) Trade Marks Act 1999.

5.  I.A. No. 20626/2015 in C.S. No. 2375/2015

6.  Appel 674.2012-23.12.2014-D


Nayantara Bhattacharya

Nayantara Bhattacharya

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Nayantara has incredible writing skills and you will never miss a flow in her writings. Her favourite leisure activity is reading. She is also a very humble person. In other words, she is as bright as a new penny. For any clarifications, feedback, and advice, you can reach us at editor@lawcirca.com

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