Trade Mark Infringement Laws

The expression “registered proprietor”, as defined under Section 2(v) of the Trade Marks Act, includes “the person for the time being entered in the register as the proprietor of the trade mark.”

Section 34 of the Trade Marks Act provides that the exclusive rights conferred by registration are subject to the rights of a prior user.

Section 28(1) of the Trade Marks Act, which confers an exclusive right to use the mark in relation to the specified goods

Section 45(1) of the Trade Marks Act, an assignment of a registered trademark must be in writing and must also comply with the formalities prescribed by law.

Section 34 of the Trade Marks Act provides that the exclusive rights conferred by registration are subject to the rights of a prior user

Section 28(1) confers statutory rights, If  prior use is established, it operates as a statutory defence under Section 34 and takes precedence over the rights conferred by registration

document is “proved,” “not proved”, or “disproved” within the meaning of Section 3 of the Indian Evidence Act, 1872.

Points to remember in Trade Mark infringement cases

i) Registration does not prove use of the Trade Mark. User has to be proved

ii) Registrant cannot claim right over all the goods covered by  a  certain Class  as its use and registration is for limited goods

iii) Registration obtained  by false claim of user which means registration  obtained by false claim of user amounts to fraud.

Section 35  of the Trade Marks Act, 1999 (“the Act”). Section 35 of the Act protects the bona fide use of a person’s own name or place of business, or that of their predecessor, against any remedy under the Act, including trademark infringement . The dispute began in June 2019, when Vasundhra Jewellers became aware of the respondent’s use of the ‘identical’ mark VASUNDHARA. CS(COMM) 363/2022 Date of decision: 21.09.2022

VASUNDHRA JEWELLERS PVT. LTD versus  KIRAT VINODBHAI JADVANI & ANR