A Trademark is a I n of the most valuable asset in the business, it helps to protect the brand and gives it a unique identity. To protect the Trademark from using by someone else registration of Trademark is very important. Trademark Registration is a type of intellectual property protection.
To register a Trademark, a Trademark application is filed by the applicant with the relevant Trademark registrar in the prescribed format. Once a Trademark application is filed , the Trademark registrar would process the application and issue an examination report. After which, the Trademark examiner can also raised an objection for Registration of the mark.
In that case, the applicant have to submit a written reply for the objection raised. Trademark objection reply filing must be done in a very professional way. The reply to Trademark examination report should contain reasons, facts and evidences s to why the mark should be registered in favor of the application. Trademark objection reply filing have to done within 3 days.
If the examiner finds the reply sufficient, he would allow the Trademark to register.
Once a Trademark Is registered no person other than the owner of Trademark has the right to use the Trademark. Trademark rights are the exclusive rights provided to an owner, after the registration of Trademark for use in the course of business.
However, these rights to use the Trademark shall be subject to certain conditions and limitations. These rights can also be passed on the other by different means such as license assignment.
Using someone else’s Trademark without their permission is known as Infringement. But after getting permission, one can use someone else’s Trademark by OnlineAssignment of Trademark in India .
The use of the Trademark by any third party with the permission (Trademark Assignment) of the Trademark owner is described as Permitted use under the Indian Trademark act and hence that will be treated as a infringement.
Getting direct permission from the Trademark owner is the best way to avoid a lawsuit. This permission can also be done orally but some sort of written consent is preferable because it will be easier to prove if any dispute arises.
Permitted use under the Indian Trademark Act, 1999
According to the Act, there can be two kinds of permitted uses by the third party:
- With Registration: Use of the Trademark by a third party who is registered user under the act
- Without registration: Permitted use by the third party without registration.
Section 2 (1)(r) of the act, defines permitted use as “ if the permitted use is by a third party without registration as a registered user, then the following conditions must be met:
- The Trademark should be remain in the register for the time being
- Should be used by permitted user in the course of his trade
- The permitted user has to take the consent of the registered proprietor in a written agreement.
The permitted user must follow all the terms and conditions of which the registration of the Trademark is subject to and those which has been laid out by the registered owner.
Under the act, the written agreement between the parties is an important element for proving that any use by a third party is a valid use under the act and not an Infringement of rights of the owner of the Trademark.
Section 48(2) expressly provides that any permitted use of a Trademark shall be deemed to used by the proprietor of Trademark and would not be taken as being used by a person other the proprietor and hence the permitted user under any condition cannot claim rights over a Trademark even if he was permitted to use it under an oral arrangement.
When it comes to Comparative Advertising, the permission is not required.Those Advertising includes electronic media, magazines etc. Which make use of methods such as comparative studies to show more of the advertised brand.
But, it becomes necessary to take permission when there is an alteration in a Trademark that can cause any kind of dilution.
When there is commercial uses include activities, permission is required to use the Trademark, such as displaying information or publishing an article or printing pictures in newspaper or hoardings.
Permission is also required for public promotion during events, informational advertisement, firm sponsored advertisement and the merchandise and other products sold by the business.
For Trademark assignment deed and agreements contactour legal advisors at company vakil