Limits on effect of registered trademark – Trademark Registration

Limits on effect of registered trademark:

Nothing in section 29 shall be construed as preventing the use of a registered trademark by any person for the purposes of identifying goods or services as those of the proprietor provided the use.

• Is in accordance with honest practices in industrial or commercial matters and
• Is not such as to take unfair advantage of or be detrimental to the distinctive character or repute to the trademark

A registered trademark is not infringed where-

• The use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of the rendering of services or other characteristics of goods or services;
• A trademark is registered subject to any conditions or limitations the use of the trademark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to the exported to any market or in any relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;

The use by a person of a trademark–

• In relation to goods connected in the course of trade with the proprietor or a registered user of a trademark if, as to those goods or a bulk of which they form part, the proprietor of the registered user confirms about the permitted use which has applied for the trademark and hasn’t subsequently removed or obliterated it
• or has at any time expressly or impliedly consented to the use of the trademark; or
• In relation to services in which the proprietor of a particular mark of a registered user confirms to the permitted use has applied the mark,
• The effect and the purpose of the use of the mark are to indicate accordance with the fact, that the services have been performed by the registered user of the mark.

• The trademark usage by a person regards to the goods which are adapted or to be accessory to, other services or goods in relation to which the trademark been used without the infringement of the right which have been given by the registration under this act or might for the time being used, if the use of the trademark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;
• The use of a registered trademark, being one of two or more trademarks registered under this act which are identical or nearly resemble each other in the exercise of the right to the use of that trademark given by registration under this act.

Where the goods bearing registered trademarks are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not an infringement of a trade by reason only of-

• The registered trademark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or
• The goods having been put on the market under the registered trademark by the proprietor or with his consent.

Under sub-section (3) would not apply where there exist the legitimate reasons for the registered proprietor to oppose the upcoming dealings in the goods in particular, where the conditions of the goods have been impaired or changed after they have been put on the market.