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Rights Conferred By Registration Of A Trade Mark

The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trade marks registry").

Registration of a trademark by itself does not create an absolute right in the owner. The rights as are acquired by a person under the common law on account of priority in adoption and use are much superior to that of a person who may acquire registration of an identical mark prior in point of time.

The registration of a trade mark under the provisions of the Act confers statutory right on the registered proprietor not only to the exclusive use of the said mark in relation to the goods or services for which the same is registered but also to restrain others from using an identical or deceptively similar mark in respect of the goods for which the earlier mark is registered in respect of the goods of the same description or similar in nature. The goods that are cognate or allied in their nature and character on account of having common trade channel, class of purchasers or overlapping in business activities are considered as the goods of same description.

Prior to the coming into force of The Trade Marks Act, 1999, the rights of the registered proprietors were confined in an infringement action, to restrain others from using an identical or similar mark only in respect of those goods for which the earlier registration had been made. The proprietor of a trademark was entitled to restrain the use of an identical or deceptively similar mark in respect of similar goods or goods of the same description in an action of passing off. Such a common law right of a proprietor have acquired statutory recognition under the Trade Marks Act, 1999.

The question, which arises for consideration, is that if the right to a trademark is vested on account of priority in adoption and use and such right is superior to that of the registration obtained by a third party, then why it is necessary to obtain registration under the Act?

It is no doubt true that under the common law, a person not only acquires proprietary right to the exclusive use of a trade mark on account of his being first to adopt and use the same in the course of trade but also has an exclusive right to restrain others in the same manner and obtain the same relief as in the case of a registered trade mark. However, registration of a trademark not only facilitates a remedy but also confers a presumption of statutory right to the exclusive use of such mark and to restrain others from using the identical or deceptively similar mark in respect of the same or similar goods or services in favour of Registered proprietor. The rights of registered proprietor can be defeated by such person who can establish his prior rights under common law.

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