Getting a trademark registered is a costly and a time taking process. However, once after attaining the registration the owner of the registered trademark is vested with multiple valuable rights over an unregistered trademark owner. These rights usually exist till the validity of the trademark which is usually 10 years in majority countries and can be extended by getting it renewed.
Alongside the owner of an unregistered trademark is also granted with some basic rights under the common law.
One such right that is discussed on both, unregistered, as well as a registered trademark owner, is to prevent other people from using an identical or deceptively similar trademark under certain circumstances.
It is admissible that an unregistered trademark can be protected with the help of common law after an extensive use made of it. On the other hand, the registered trademark is protected from the date of registration only and before it is used. This draws an evident spotlight on the fact that a right of the registered trademark holder to prevent the unauthorized use of the mark is more advantageous than that of an unregistered trademark holder.
Rights of an Unregistered Trademark Owner
The possessor of an unregistered trademark is eligible to prevent any person from using an identical or deceptively similar trademark. The owner is eligible to initiate the proceedings under common law for such an unauthorized use by the rival results into passing-off. Therefore such right is known as a common law right. The claimant in his mandate can also obtain damages or an account of profits. It is mandatory for the claimant to establish the following three important factors to bring an against the pass-off:
- he has acquired goodwill.
- the act of infringement amounts to misrepresentation.
- the claimant has suffered or is on the verge to suffer damage due to the act of the defendant.
Rights of a Registered Trademark Owner
Following are the rights granted to the owner of a registered trademark:
1. Rights of Exclusive Use
The registered proprietor of the trademark has the exclusive rights to use the trademark only in relation to the goods or services in lieu of which the mark was registered. This right is an absolute right.
2. Right to Seek Statutory Remedy Against an Infringement
The owner of a registered trademark is designated to seek legal remedy in case of an infringement of his registered trademark. The owner may obtain an injunction on damages or an account of profits by instituting a case against the alleged infringer.
The owner of an unregistered trademark cannot initiate the infringement proceeding even in the case of deliberate counterfeiting.
3. Rights of Registered Trademark holder of Identical Trademark
When two or more people are the owners of identical or nearly resembling registered trademarks than the exclusive right to use any of those trademarks shall not be deemed to be acquired by either of them as against any other person merely by registration of the trademarks but each of them has otherwise the same rights as against the others (not being the registered user by way of permitted use) as he would get if he was the sole registered holder.
4. Right to Assign
The registered proprietor of a trademark has the sole power to assign the trademark and to give effectual receipts for any consideration for each assignment.
5. Right to Seek Correction of Register
The owner of the registered trademark has a right to make an application to the Trademark Registrar seeking correction of registration regarding the errors related to the particulars of the registered owner and other aspects relating to the registered trademark.
6. Right to Alter a Registered Trademark
The owner of the registered trademark must file an application to the Trademark Registrar seeking leave to add to or alter the trademark in any manner which is not substantially affecting the identity of the mark. The Registrar has the option to either refuse or leave the grant on such terms and may be subject to such limitations as he may think fit.
7. Right to Mortgage
A trademark registrant is legally allowed to set a mortgage with the registered trademark in the business.
The trademark that has been registered is legally eligible to be inherited by its rightful heir according to the order of inheritance just like incorporeal property.