Section 28 of Trademark Act, 1999 grants the rights that come with trademark registration. It grants registered proprietors exclusive use of their trademark and the right to seek remedies for infringement. It shifts the burden of proof in legal disputes and offers protections unavailable to unregistered marks. Section 28 of Trademark Act It forms the foundation for many infringement lawsuits and defenses. Without registration, trademark owners must rely on common law remedies like passing off, which require more evidence. This article dives into Section 28, exploring its subsections, implications, and judicial interpretations.
Step into the future of legal expertise! Join our Advanced Certification Program in Intellectual Property Law, created by The Legal School in collaboration with Khaitan & Co. Designed for fresh law graduates and professionals, this unique course boosts your legal career. Don’t miss this opportunity—enquire today to secure your spot!
What is Section 28 of Trademark Act?
Section 28 of Trademark Act is called as "Rights conferred by registration," defines the privileges of a registered trademark owner. It shows that the trademark registration process is not just a formality but a source of strong legal rights. The section has three subsections, each covering a specific aspect of these rights.
Subsection (1): A valid trademark registration gives the owner the exclusive right to use the mark for specific goods or services and to take legal action against anyone who uses it without permission, as defined in Section 29 and other parts of the Act.
Subsection (2): These exclusive rights are limited by any conditions in the registration, like specific colors or regions, meaning the owner can only enforce the mark within those terms.
Subsection (3): If multiple people register identical or similar trademarks, none has superior rights over the others just because of registration. Each can protect their mark against outsiders, but not against each other, unless specific conditions apply.
In simple terms, Section 28 makes a registered trademark a valuable legal asset, but its protections depend on the registration being valid and following the Act’s rules. Lawyers use this section to prove a client’s rights in court, supported by Section 31’s assumption that a registered mark is valid.
Exclusive Rights Under Section 28(1) of Trademark Act
Section 28(1) gives the registered proprietor exclusive rights to use the trademark for specific goods or services. This exclusivity is "negative," meaning it mainly allows the owner to stop others from using identical or similar marks. It does not guarantee market control. The rights apply only to the goods or services listed in the registration, based on the Nice Agreement’s Trademark Class 45 system.
For example, a trademark registered for clothing in Trademark Class 25 does not cover electronics in Class 9. This keeps claims focused and encourages precise applications. The right to seek relief is vital. It allows civil remedies like injunctions, damages, or profits, as outlined in Section 135. Criminal remedies under Sections 103-104 also apply for falsification or false use of trademarks.
These rights depend on valid registration. Section 31 offers a rebuttable presumption of validity but challenges can arise under Section 57 of Trademark Act for rectification. Courts often refer validity disputes to the Intellectual Property Appellate Board (IPAB) or, after 2021 amendments, to High Court divisions. Section 34 allows prior use to override registration if an earlier user proves continuous, good-faith use without knowledge of the registered mark.
Lawyers must note that Section 28 of Trademark Act does not cover all uses. Fair use exceptions under Section 30 like descriptive or nominative use, apply. This balance ensures trademarks function without harming legitimate trade.
Know How to Name a Trademark in India.
Conditions and Limitations Under Section 28(2)
Section 28(2) clarifies that exclusive rights come with conditions or limitations from the registration process. These may include geographic restrictions, color specifications under Section 10, or disclaimers for non-distinctive parts. For instance, a mark limited to "red color only" cannot claim rights in other colors.
These conditions often resolve conflicts or meet absolute grounds under Section 9 or relative grounds under Section 11. They may stem from voluntary amendments or opposition proceedings. Courts enforce these limits strictly in cases where proprietors tried to exceed their registered scope.
This clause prevents misuse and upholds the trademark system’s fairness. Lawyers should review the registration certificate for any conditions, as missing them could weaken infringement claims. Subsection (2) ensures rights are specific, not universal.
Rights for Multiple Proprietors Under Section 28(3)
Section 28(3) handles cases where different proprietors register identical or similar marks. It states that registration alone does not give one owner priority over another. Each enjoys equal rights against third parties, as if they were the sole owner. However, disputes between these proprietors rely on common law or other provisions, not exclusivity under this section.
This applies to honest concurrent use under Section 12. Rights remain subject to registered conditions and permitted users like licensees, are excluded from conflicts. This prevents "mutual exclusivity" claims, allowing coexistence of similar marks.
In practice, proprietors cannot sue each other for infringement based only on registration. However, passing off claims may succeed if deception is proven. For lawyers, this connects to Section 30(2)(e), which limits infringement claims against other registered marks.
Learn How to Check Trademark Availability.
Comparison with Unregistered Trademarks
Section 28 of Trademark Act provides statutory rights for registered marks, while unregistered marks rely on common law under Section 27. Here’s a comparison:
Aspect | Registered Trademarks (Section 28) | Unregistered Trademarks (Section 27) |
Basis of Protection | Statutory rights from registration | Common law action for passing off |
Exclusive Rights | Automatic exclusivity for specified goods/services | Must prove goodwill, misrepresentation, and damage |
Presumption of Validity | Yes, rebuttable under Section 31 | No presumption; burden on owner |
Remedies | Injunction, damages, criminal penalties | Mainly civil remedies; no criminal action |
Geographical Scope | Nationwide in India | Limited to areas of established reputation |
Prior Use Defense | Subject to Section 34 | Prior use can defeat claims |
This shows why registration under Section 28 offers stronger protection.
Know How to Name a Trademark in India.
Judicial Interpretations and Case Laws
Indian courts have clarified Section 28 of Trademark Act through key rulings. These rulings guide lawyers in handling infringement cases, emphasizing evidence and statutory connections:
In Revlon Inc v. Hosiden Laboratories (India) (2001), the Delhi High Court upheld Section 28(1) rights, granting an injunction against the use of "JONTUE" for talcum powder, as it infringed the plaintiff’s cosmetic mark due to similarity.
In Vishnudas Trading v. Vazir Sultan Tobacco Co. (1996), the Supreme Court stressed that Section 28 rights are limited to listed goods, not entire classes. It advised detailed descriptions to avoid gaps.
In SM Dyechem v. Cadbury (India) Ltd (2000), the Supreme Court ruled that validity challenges belong in rectification proceedings, upholding the presumption under Section 31 tied to Section 28.
The Bombay High Court in Lupin Limited v. Johnson & Johnson (2014) allowed courts to review registration validity at interim stages if fraud is evident, but set a high bar for defendants.
For Subsection (3), Eagle Flask Industries Pvt Ltd v. Bon Jour International (2011) by the Madras High Court confirmed that one registered proprietor cannot block another with a similar mark, aligning with Section 30(2)(e).
In P.M. Diesels Private Limited v. Thukral Mechanical Works, the Supreme Court noted that identical marks for different goods prevent inter se lawsuits but both can act against third parties.
Recent cases like Wipro Enterprises (P) Ltd v. Himalaya Wellness Co. (2024) also confirm that prior use under Section 34 can override the rights given under Section 28.
Summary
Section 28 of Trademark Act, 1999 provides registered trademark proprietors the rights to use their mark for specified goods or services and seek remedies for trademark infringement. It also emphasizes the importance of registration by providing statutory protections unavailable to unregistered trademarks which rely on common law remedies like passing off. Section 28(1) ensures exclusivity and legal recourse, while Subsection (2) ties rights to registration conditions. Subsection (3) addresses multiple proprietors which grants equal rights against third parties. Case laws like Revlon Inc (2001) and Vishnudas Trading (1996) also clarify the scope of Section 28, making it foundational for Intellectual Property enforcement in India.
Related Posts:
Section 28 of Trademark Act: FAQs
Q1. What is Section 28 of the Trademarks Act?
It gives registered trademark owners exclusive rights to use their mark and seek legal remedies for infringement.
Q2. What is Section 28 of the Registration Act?
It specifies the place where documents must be registered, typically at the sub-registrar’s office where the property is located.
Q3. What is Section 29 of the Trademarks Act?
It defines trademark infringement as unauthorized use of a registered mark that causes confusion.
Q4. What are the 4 types of trademarks?
Word marks, logos, slogans, and device marks (like symbols or designs).
Q5. What is Section 28 of the Trade Union Act?
It allows registered trade unions to create a separate political fund for political activities.
