Effect of Registration — Exclusive Right (Section 28)

Section 28 of the Trade Marks Act, 1999 is the provision that gives a registered trade mark its real commercial value. Once a mark stands entered on the Register, the proprietor acquires the exclusive right to use that mark in relation to the goods or services for which it is registered, and the right to obtain relief in respect of infringement in the manner provided by the Act. Without Section 28 a certificate of registration would be a piece of paper; with it, the certificate becomes a statutory monopoly enforceable in a civil court.

The provision must be read together with Section 27, which forbids any infringement action on an unregistered mark, and Section 29, which defines the conduct that violates the exclusive right. Section 28 therefore sits at the doctrinal hinge between registration and the infringement action under Section 29: it is the source of the right; Section 29 is the catalogue of wrongs against that right; Section 30 supplies the limits.

Statutory anchor — Section 28(1), (2) and (3)

Section 28 has three sub-sections. Each carries a distinct doctrinal load.

Three things must be unpacked from sub-section (1). First, the right is conditional on validity — a registration that is invalid (because, for instance, the mark fell foul of Section 9 or Section 11 at the date of grant) confers no exclusive right at all. Second, the right is limited by scope — the monopoly is only over the specific goods or services entered in the registration certificate, and not over any other class. Third, the right is procedurally channelled — it must be vindicated through the infringement action prescribed by the Act, not through some free-standing common-law claim.

Sub-section (2) reinforces the second of these limits:

Many registrations are granted with conditions — disclaimers of descriptive matter, geographical restrictions, association with other marks, restrictions on the colour in which the mark may be used. Each such condition reads back into Section 28(1) and pares down the monopoly accordingly. A proprietor cannot enforce a registration to a wider extent than the certificate itself permits.

Sub-section (3) deals with the special case of identical or nearly resembling marks held by two or more registered proprietors:

This is the rule of concurrent registration. Where the Registrar, exercising the discretion in Section 12, has allowed honest concurrent users to coexist on the register, neither proprietor can sue the other for infringement merely on the strength of his own registration. Each, however, retains the full Section 28(1) right against the rest of the trading world.

What the exclusive right covers — and what it does not

The exclusive right under Section 28(1) is delimited by two boundaries simultaneously: (i) the mark itself, as registered, with its essential and distinctive features, and (ii) the goods or services entered in the registration certificate. Both boundaries were laid down with great clarity by the Bombay High Court in Balkrishna Hatcheries v. Nandos International Ltd. 2007 (35) PTC 295 (Bom). The plaintiff held a registration for the mark NANDUS in respect of processed or frozen meat products; the defendant used the mark NANDOS for restaurants. The court held that the exclusive right which Section 28(1) confers extends only to the goods or services entered in the registration certificate. The plaintiff could not stretch his monopoly into restaurant services because his registration did not cover them. The court put the point thus: Section 28(1) confers upon the registered proprietor a statutory monopoly to use the trade mark in relation to the goods or services in respect of which the trade mark is registered — that is, only those goods or services mentioned in the registration certificate.

This case-class boundary is doctrinally important. The 1999 Act introduced separate registration for services (which the 1958 Act did not allow), and Section 2(2) draws an explicit dichotomy between use of a mark in relation to goods and use in relation to services. Goods and services are associated only at the narrow point identified in Section 2(3) — that is, where the same business might both supply the goods and provide the services. Outside that bridge, a goods registration does not cover services and vice versa.

It follows that a proprietor who has registered for a single class of goods cannot, simply by force of Section 28, prevent others from using the same mark on unrelated goods. To reach across classes the proprietor must either (a) extend the registration through fresh applications for those classes, or (b) bring himself within the dilution provision in Section 29(4), which protects registered marks of repute against use on dissimilar goods or services. The dilution route is canvassed in our chapter on trademark tarnishment and dilution.

The right is statutory, not common-law

Section 28(1) is a statutory grant. The Supreme Court in Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 distilled the distinction between the statutory infringement right and the common-law action for passing off in a passage that has been quoted in almost every Indian trade-mark judgment since: while an action for passing off is a common-law remedy being in substance an action for deceit — that is, a passing off by a person of his own goods as those of another — that is not the gist of an action for infringement; the action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. Use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off but is the sine qua non in the case of an action for infringement.

This distinction has at least three operational consequences. First, the infringement action under Section 28 read with Section 29 is property-based: what is being protected is the proprietor's monopoly. The passing off action is reputation-based: what is protected is the goodwill that the unregistered or registered mark carries among consumers. Second, in an infringement action proof of intention to deceive is not required — once the defendant's mark is identical to or deceptively similar to the registered mark and is used in the course of trade in relation to the registered goods or services, infringement is made out. Third, the infringement action is available only to the registered proprietor (or registered user using by way of permitted use), whereas the passing off action is available to anyone who has built goodwill in a sign, registered or not.

The conditions for Section 28 to bite

For a proprietor to invoke Section 28(1) and obtain relief, four ingredients must be made out at the threshold:

1. The mark must be registered. An application that is pending grant does not yet confer the exclusive right; the proprietor of an unregistered mark is relegated to the passing off action that Section 27(2) preserves. The procedure for registration in Sections 18 to 24 must therefore have run its full course.
2. The registration must be valid. Section 28(1) opens with the words "if valid" — and Section 31 supplies a presumption that the original registration is prima facie evidence of its own validity, but that presumption can be displaced by evidence of invalidity at trial. The absolute grounds in Section 9 and the relative grounds in Section 11 are the most common heads on which validity is challenged.
3. The mark must be used in relation to the goods or services entered on the register. A registration for one class does not grant a monopoly across the trade-mark classification.
4. The defendant must have used a mark that is identical to or deceptively similar to the registered mark, in the course of trade, in such a manner as to render the use likely to be taken as use as a trade mark — these are the requirements that flow into Section 29.

The proprietor must establish (1)–(3) in order to obtain relief; once these are made out, the conditions for the underlying wrong are governed by Section 29 and its sub-clauses, discussed in detail in our chapter on infringement of a registered trade mark.

Section 28(2) — the role of conditions and limitations

Sub-section (2) ties the Section 28(1) right back to the specific terms of the registration certificate. The Registrar may, when granting a mark, attach disclaimers (under what was Section 17 of the 1958 Act and is now Section 17 of the 1999 Act in the context of parts of marks not separately registrable), conditions about use in a specific colour combination, conditions about geographical area, or restrictions that follow honest concurrent use under Section 12.

Each of these conditions narrows the monopoly. A registration of a composite label with a disclaimer of the descriptive word component cannot be used to prevent third parties from using that descriptive word independently. A registration limited to a geographical area cannot be used to keep a competitor out of regions outside the area. A registration that depicts the mark in a particular colour scheme cannot, without more, be enforced against a rival who uses the mark in a different scheme — though here the proprietor may have additional remedies under Section 10 read with Section 29 if the colour scheme is itself a registered feature.

Section 28(3) — concurrent registration and honest competing users

Section 28(3) recognises that the Register sometimes contains two or more registrations for marks that are identical or nearly resemble each other. This typically arises in two situations: (a) where the Registrar has, in exercise of the discretion under Section 12, allowed honest concurrent use; and (b) where two registrations have come on the register through inadvertence or where validity has not been challenged.

The rule in such cases is that neither proprietor may sue the other for infringement on the strength of his own registration alone. The mutual prohibition is an internal one — it applies only as between the two registered proprietors. As against the rest of the trading world each of them has the full Section 28(1) right and may sue strangers for infringement as if he were the sole registered proprietor. The provision thus protects the equilibrium that the Registrar has accepted at the registration stage; it does not allow either party to convert the coexistence into a unilateral monopoly later.

Importantly, Section 28(3) does not extinguish either proprietor's passing off remedy as between themselves. If one of the two concurrent registered users adopts the mark dishonestly or uses it in a way calculated to deceive, the other retains the common-law remedy to restrain that conduct. The bar in Section 28(3) is a bar on infringement only.

Effect of registration on third parties

The exclusive right is good against the world — subject to the qualifications discussed above and the defences in Section 30. Three points are worth holding firmly in mind.

Registered users. A person whose name is entered on the register as a registered user under Section 49 is permitted to use the mark by way of permitted use; that use is for all purposes use by the proprietor. Registered users are insulated from suits brought by the proprietor and may, with the proprietor's consent, themselves sue infringers in certain circumstances under Section 52 and Section 53. The proprietor may also part with rights under the assignment and transmission provisions in Sections 37 to 45, which presuppose that the Section 28 right is itself a transferable property.

Burden of proof. The fact of registration shifts the evidential balance. Section 31 makes the original registration of the mark prima facie evidence of its validity. The defendant who denies infringement on the ground that the registration is invalid must therefore plead and prove the invalidity. This is a tactical advantage that proprietors of registered marks enjoy and that proprietors of unregistered marks do not.

Trade-mark use. Section 28 covers use as a trade mark. A descriptive use, a comparative reference, or a use that does not function as a badge of origin is not within the proprietor's monopoly — the Section 30(2) exceptions and the honest practices rule in Section 30(1) carry that work, and so does the requirement under Section 29 that the defendant use the sign in such a manner as to render the use likely to be taken as use as a trade mark. Section 28 does not give the proprietor a property in the word or device as such; it gives him a property in the word or device as a trade-mark-functional sign for the registered goods or services.

Leading authorities on Section 28

Balkrishna Hatcheries v. Nandos International Ltd. 2007 (35) PTC 295 (Bom) is the most direct exposition of the boundary that Section 28(1) places on the monopoly. As discussed above, the court held that Section 28(1) confers a monopoly only over the goods or services entered in the registration certificate, and not over goods or services merely associated with them. The court located the convergence point between goods and services in Section 2(3) — where the same business is likely to supply both — and refused to extend the plaintiff's goods registration into the field of restaurant services.

Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, although decided under the 1958 Act, continues to govern the doctrinal architecture of the infringement action. The Supreme Court there held that the action for infringement is a statutory remedy conferred on the registered proprietor for the vindication of the exclusive right to the use of the trade mark in relation to the registered goods. Use by the defendant of the proprietor's mark is the sine qua non of the infringement action, whereas the gist of the passing off action is misrepresentation. The exclusive right that Section 28 confers is therefore a property right enforceable through a statutory wrong, not a remedy for confusion as such.

Hawkins Cookers Ltd. v. Murugan Enterprises 2008 (36) PTC 290 (Del) illustrates how Section 28 sits in tension with the limits in Section 30. The plaintiff was the registered proprietor of HAWKINS for pressure cookers and parts thereof. The defendant manufactured gaskets under its own mark MAYUR and stated on its packaging that its gaskets were "suitable for Hawkins pressure cookers." The Delhi High Court held that, although the plaintiff's Section 28(1) monopoly extended to the registered goods, the defendant's reference to HAWKINS was not use of the plaintiff's mark as a trade mark for the defendant's goods — it was an honest indication of compatibility falling within Section 30(2)(d), and was therefore not an infringement. The case is a useful reminder that Section 28 confers a right against trade-mark use, not against every utterance of the registered word.

Parle Products (P) Ltd. v. J.P. & Co. (1972) 1 SCC 618 takes the same point from the other side. The plaintiff's registered wrapper carried a particular colour scheme, design and collocation of words; the defendant's wrapper bore an overall similarity. The Supreme Court held that for purposes of infringement the broad and essential features of the registered mark are to be considered. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. The case confirms that the exclusive right under Section 28 is enforced through the lens of the essential features of the mark, not its individual atoms.

Distinguishing Section 28 from cognate provisions

Section 28 is sometimes loosely conflated with neighbouring provisions in the Act. Three distinctions are worth keeping clean for exam purposes.

Section 28 vs Section 27. Section 27(1) negates the right of action for infringement of an unregistered trade mark; Section 27(2) preserves the common-law action for passing off. Section 28 then confers the right that Section 27(1) presupposes. The two provisions together make registration both necessary and sufficient for infringement: necessary because Section 27(1) closes the door, sufficient because Section 28 opens it.

Section 28 vs Section 29. Section 28 is the source of the right; Section 29 catalogues the wrongs against the right. Section 28 is concerned with what the proprietor has; Section 29 is concerned with what the defendant has done. A complaint can only be made out under Section 29 if the proprietor first has a right under Section 28; conversely, the right under Section 28 is operationally inert unless conduct caught by Section 29 has occurred.

Section 28 vs Section 30. Section 30 supplies the limits on Section 28. Even where the proprietor has a registration valid in form and the defendant has used a similar sign, the defendant may escape liability if his 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 of the mark; or if the use falls within one of the specific exceptions in Section 30(2). The Act's design assumes that Section 28 and Section 30 operate as a balanced pair: the monopoly is not absolute, and the limits are part of the design, not an afterthought.

Section 28 and the relationship with passing off

Even after registration, the proprietor does not lose the common-law remedy. Section 27(2) preserves the right of action for passing off, and a registered proprietor whose mark has acquired goodwill among consumers may sue both for infringement (under Section 28 read with Section 29) and for passing off (at common law preserved by Section 27(2)) in the same suit. The two causes of action have different ingredients: infringement turns on the use of an identical or deceptively similar mark on the registered goods, while passing off turns on misrepresentation, goodwill and damage. Reading them in combination is now standard pleading practice in trade-mark suits.

For a more detailed treatment of the common-law cause of action, see our chapter on the passing off action and the Cadila test.

Practical and exam takeaways

For state judiciary mains, CLAT PG and SEBI Legal Officer papers, Section 28 is most often tested through three angles:

1. The class-of-goods boundary — questions in which a registration for one class is sought to be enforced against use in another class. The answer turns on Section 28(1) read with Sections 2(2) and 2(3), and the Balkrishna Hatcheries rule.
2. Concurrent registrations under Section 28(3) — typically presented through honest concurrent users under Section 12; the answer is that neither can sue the other for infringement, but both retain the right against the rest of the world.
3. The interplay with Section 30 — typically through fact-patterns about referential or comparative use, where Section 28 confers the right but Section 30(2) carves out the defendant's conduct as non-infringing. Hawkins Cookers v. Murugan Enterprises is the case to cite.

It is equally important to remember what Section 28 is not. It is not a doctrine of confusion (that is the work of Section 29). It is not a cause of action in itself — it must be read with Section 29 to convert into a justiciable claim. It is not absolute — Section 30 will always be the next provision the defendant points to. And it does not destroy the passing off remedy preserved by Section 27(2). It is, in essence, the gateway through which a registered proprietor passes from the Register to the courtroom. The continued life of the Section 28 right depends on the proprietor maintaining the registration through renewal under Section 25, and on actual use of the mark, since prolonged non-use can expose even a valid registration to removal.