Court : Chennai
Reported in : LC2007(1)107
..... (j) section 50 of the trade marks act, 1999 confers powers upon the registrar for variation or cancellation of registration of a registered user ..... (n) in so far as the trade marks act, 1999 is concerned, the period of limitation for seeking renewal starts from the date of registration, since section 25(1) prescribes a period of validity of ten years for a registered trade mark and sub-section (2) of section 25 uses the words 'from the date of expiration of the original registration' ..... (h) under section 25(1) of the trade marks act, 1999, a certificate of registration issued by the registry is valid only for a period of ten years from the date of registration ..... . section 38 of the trade marks act, 1999 makes a registered trade mark both 'assignable' and ' ..... since the parties hereto have wielded against one another, almost all the weapons available under the trade marks act, 1999, such as (i) opposition for registration, (ii) assignment (iii) appeals and review petitions before the appellate board, (iv) rectification petition, (v) petition for prosecution (vi) civil suit and (vii) proceedings under article 226/227 of the constitution, it is necessary to give a brief prelude ..... a suit for infringement of a registered trade mark was pending before a court and the validity of the registration of the plaintiff's mark or the defendant's mark itself was questioned in the said suit, the application for rectification was made entertainable, only by the high court under section 107 of the act. .....
Tag this Judgment!Court : Mumbai
..... thus, an action for infringement of registered trade marks may succeed in the event the limitations on effect of registered trade marks set out in section 30(2) of the trade marks act, 1999 are not attracted. ..... section 28 of the trade marks act, 1999 deals with rights conferred by registration and reads as under: 28. ..... sonpal is right in submitting that in chapter iv of the trade marks act, 1999 the effect of registration is set out. ..... each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same right as against other persons (not being registered users using by way of permitted use) as he would have if he were the .....
Tag this Judgment!Court : Intellectual Property Appellate Board IPAB
..... (j) section 50 of the trade marks act, 1999 confers powers upon the registrar for variation or cancellation of registration of a registered user. ..... according to mr.s.j.jagadev, learned counsel appearing for the delhi party, section 124 of the trade marks act, 1999 mandates the leave of the court to be obtained before filing the rectification application, in cases where a civil suit for infringement is pending. ..... 1 in the rectification application) for dismissal of the rectification proceedings under the provisions of section 124 of the trade marks act, 1999 (hereinafter the act). ..... --- (a) the defendant pleads that registration of the plaintiffs trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall, --- (i) if any proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the registrar or the appellate board, stay the suit pending the final disposal of such proceedings; (ii) if no such proceedings are .....
Tag this Judgment!Court : Chennai
Reported in : 2009(40)PTC428(Mad)
..... air 2000 sc 2114 that the pendency of rectification proceedings under section 124 of the trade marks act, 1999 does not bar the right to file a suit and obtain interim orders to protect the interest of the registered trade mark holders. ..... prior user:- under section 34 of the trade marks act, 1999, a vital right on the prior user of the trade mark has been well recognised. ..... under section 45 of the trade marks act, registration of assignment is mandatory. ..... prior registration of the recent user cannot be a ground to reject the plea of the prior user to register the trade mark on the ground that he is the prior user of the trade mark. 22. ..... nakoda distributors private limited applied for registration of the trade mark nakoda on 23.9.2005 claiming user of the trade mark nakoda since 19th march 2004. 28. ..... applying the yardstick adumbrated under section 34 of the trade marks act, the business activity of the defendants shall not be restrained just because the recent user of the trade mark has obtained registration certificate, it is effectively contended.24. ..... the registrar is bound to register the trade mark of the prior user even if the very same trade mark was already registered in favour of a person whose use is of recent origin. ..... there is no dispute to the fact that the second defendant has challenged the registration of trade mark nakoda by the plaintiff before the intellectual property appellate board, chennai. .....
Tag this Judgment!Court : Delhi
..... . section 34 of the trade marks act, 1999 provides that nothing in this act shall entitle the registered proprietor or registered user to interfere with the rights of prior user ..... . conjoint reading of sections 34, 27 and 28 would show that the rights of registration are subject to section 34 which can be seen from the opening words of section 28 of the act which states subject to the other provisions of this act, the registration of a trade mark shall, if valid, give to the registered proprietor ..... . (2) notwithstanding anything contained in sub-section (1), when a trade mark-- (a) contains any part-- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration i.a ..... . clause (1) of the said section reads- (1) subject to the other provisions of this act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this act .....
Tag this Judgment!Court : Delhi
..... . section 34 of the trade marks act, 1999 provides that nothing in this act shall entitle the registered proprietor or registered user to interfere with the rights of prior user ..... . conjoint reading of sections 34, 27 and 28 would show that the rights of registration are subject to section 34 which can be seen from the opening words of section 28 of the act which states subject to the other provisions of this act, the registration of a trade mark shall, if valid, give to the registered proprietor ..... . (2) notwithstanding anything contained in sub-section (1), when a trade mark-- (a) contains any part-- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration i.a ..... . clause (1) of the said section reads- (1) subject to the other provisions of this act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this act .....
Tag this Judgment!Court : Delhi
..... learned senior counsel for plaintiff submitted that under section 34 of the trade marks act, 1999 the defendant was entitled to protection if he was a user prior to the plaintiff s registration or plaintiff s use, whichever was earlier. ..... consequently, according to him, a case of infringement of registered trade mark under section 29(2) of the trade marks act, 1999 was made out.31. ..... section 29(2)(a) of the trade marks act, 1999, postulates that a registered trademark is infringed if a person, not being the registered proprietor uses an identical/deceptively similar mark in relation to goods or services similar to that for which the trademark has been registered. ..... ropi industries (supra) are an authority for a defence under section 34 of the trade marks act, 1999 in an action for infringement of a registered trade mark.51. ..... in opinion of the court, in the event of non-use of a registered trademark, the trade marks act, 1999 provides a remedy to the aggrieved party to seek removal of the registered trademark from the register under section 47(1)(b). ..... having heard learned counsel for the parties, this court is of the opinion that it is essential to first analyze the scheme of the trade marks act, 1999, to examine the rights of registered proprietors of the trade mark as well as the remedies available to an aggrieved party on account of non-use of a registered trade mark, as the plaintiff has restricted its suit for infringement.35. .....
Tag this Judgment!Court : Delhi
..... collective reading of the provisions especially sections 27, 28, 29 and 34 of the trade marks act, 1999 would show that the rights conferred by registration are subject to the rights of the prior user of the trade mark. ..... section 34 of the trade marks act, 1999 provides that nothing in this act shall entitle the registered proprietor or registered user to interfere with the rights of prior user. ..... hence, under section 34 of the trade marks act, 1999 the registered proprietor of the trademark cannot interfere with the rights of prior user by a defendant to a proceeding. ..... appellate board by any person aggrieved on the ground either (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the .....
Tag this Judgment!Court : Delhi
Reported in : AIR2008Delhi1992; 2008(2)ALD(Cri)547
..... use of name, address or description of goods-section 8no registration of a trade mark shall interfere with-the trade marks act, 1999saving for use of name, address or description of goods or servicessection 35nothing in this act shall entitle the proprietor or a registered user of a registered trade mark to(a) any bon fide use by a person of his own name or that of his place of business, or of the name, or of the name, or of the name of the place of business, of any of his predecessors in business; or(b) ..... under section 28 of the trade mark act, 1999 the registration confers exclusive right in favour of the plaintiffs and under section 29 of the act when the defendant is using identical or deceptively similar trade mark then a clear case ..... goenka being a part of trust, school, college, pharmacy and girl colleges is to be considered as bona fide use being common surname of the defendant proprietor/partners/directors and, therefore, under section 35 of the trade marks act, 1999, the defendant is entitled to use the same as a bona fide user. ..... defendant's claim is protected under section 34 of the trade mark act, 1999 being the prior user.d] there is a delay on the part of the plaintiffs for bringing the action, hence, the balance of convenience lies in favour of the defendant and, thus, the injunction is liable to be vacated.e) there are other parties who are using the mark/name goenka in relation to the same services and some of them are using the name/mark goenka as part of their .....
Tag this Judgment!Court : Delhi
..... in this act, unless the xxxxx xxxxx xxxxx fao (os) no.2page 7 of 22 permitted use , in relation to a registered trade mark, means the use of trade mark (r) (i) by a registered user of the trade mark in relation to goods or services (a) with which he is connected in the course of (ii) (b) (c) trade; and in respect of which the trade mark remains registered for the time being; and for which he is registered as registered user; and (d) which complies with any conditions or limitations to which the registration of registered user is subject; or by a person other than the registered proprietor and registered user in relation to goods or services (a) with which he is connected in the course of (b) (c) trade; and in respect ..... but, the plaintiff no.1 is a company registered in usa and, therefore, it cannot take advantage of section 134(2) of the said act which is available only to suits under the trade marks act, 1999 filed in india. ..... by virtue thereof and by virtue of the provisions of section 134(2) of the trade marks act, 1999, this hon ble court has the territorial jurisdiction to try and entertain the present suit. ..... thus, in addition to the places where suits could be filed under section 20 of the code, the plaintiff can also institute a suit under the trade marks act, 1999 and the copyright act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. .....
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