Trade mark act
Querist :
Anonymous
(Querist) 07 December 2011
This query is : Resolved
what is the position of a suit of passing off filed by a unregistered owner of trade mark on a registered firm using the same name?
Raj Kumar Makkad
(Expert) 07 December 2011
Such suit by unregistered owner is not maintainable as registered trade mark is only having value in the eyes of law.
Devajyoti Barman
(Expert) 07 December 2011
Yes the suit would fail hopelessly.
The Act gives protection ot the registered trade name holders only.
Anirudh
(Expert) 08 December 2011
I am afraid.
The querist did not say that the trademark was registered. But only the Firm was registered.
The complainant (Owner of the trade mark) if could prove his prior user of the trade mark will succeed, about passing off, even against a Registered Firm or a Limited Company, so long as the Trademark has not been registered in the name of the Registered Firm or anybody else.
As rightly opined by Mr. Makkad and Mr. Barman, if the trade mark had been registered in favour of the Firm, then the passing off action cannot succeed. Rather, it will affect the complainant himself since he cannot use the registered trade mark which is owned by somebody else without their permission/licence.
Guest
(Expert) 08 December 2011
Whosoever registers the trademark first, he becomes the lawful owner, unless contested through a court case and proved that the unregistered trademark had long been used by the the firm and that affects adversely his business on unlawful acquisition of the trademark by the other firm.
Raj Kumar Makkad
(Expert) 09 December 2011
if unregistered trade mark is being used for a long time, then also it do not give right to the owner of such firm to have any legal right against the registered trade mark user.
Anirudh
(Expert) 09 December 2011
I am sorry again. That is not the law.
While nobody can have any second opinion to the statement that "Against a Registered Trade mark", a person cannot claim a right to use the same being user of the same for long time.
However, if the prior user of the Trade Mark is established, then the question of registering the Trade mark in favour of anybody else would not arise. Therefore, it is unthinkable that a prior user trade mark being registered in favour of any new person.
Therefore, to bring clarity to the issue, we have to put things in proper perspective.
For example, if I am a user of a Trademark for quite some period, and if anyone else tries to obtain the said Trademark to get it registered in his or his Company's name, then he will be making an application to the Registrar of Trade Marks. The Registrar of Trade Marks will publish such an application. Whereupon, I can object to the grant of registration to the Company by saying that I am the prior user of the Trade Mark. If I prove successfully, that I have been using the trademark (though not registered) already, then the Registration of the Trade Mark in favour of the Applicant will be rejected. The Applicant cannot obtain a Registered Trade mark.
If I fail to prove that I have been the prior user of the Trademark, then the Registration will be granted to the Applicant. The Applicant will successfully obtain a Registered Trade Mark.
Once the Trade Mark is registered in favour of the Applicant, then I will become an infringer of the Trade mark.
On the contrary, if the Trade Mark Registration is refused to the Applicant, then any use of the said Trade Mark by the applicant will amount to passing off (I being the owner of the unregistered Trade Mark).
