We all know that a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may also include the shape of goods, their packaging and combination of colors.
The trademark regime is governed by the Trade Marks Act 1999 which provides for the registration of trademarks in a register maintained by the Trade mark Registry.
Let us understand what is meant by a registered user and why it is so imperative to register it with the Trade Mark registry.
WHAT IS MEANT BY A REGISTERED USER?
To start off, let me tell you that a registered user is NOT the person who owns the trade mark.
Then who is a registered user? The answer lies in Section 48 of the Act. It defines a registered user as:
‘… a person other than the registered proprietor of the trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trademark is registered.’
Simply put, any other person, other than the proprietor of the trademark, who registers himself with the trademark registry shall be deemed to be a registered user and he/she will be able to use that trademark along with the registered proprietor.
This can be better understood with an example.
Consider the example of a beverage Electro Choice by Apollo Hospitals. A closer reading of the package will show that though the product is marketed by Apollo Pharmacy, it is manufactured by Schreiber Dynamix Dairies Pvt. Ltd. This means that every process of manufacturing , right from production to packaging is done by Schreiber Dynamix Dairies Pvt Ltd. Therefore Schreiber Dynamix also utilizes the mark Electro Choice. This makes Schreiber Dynamix the registered user while Apollo Hospitals is the registered proprietor.
HOW DOES ONE BECOME A REGISTERED USER?
Section 49 of the Trade Marks Act has the answer to this. It states that where a person is desirous of being the registered user, he should along with the registered proprietor submit a joint application to the Registrar. This application should be accompanied by an agreement entered into between the proprietor and the proposed user for the permitted use of the trade mark. On approval of the registrar, the proposed user will be deemed to be a registered user.
IF THERE ALREADY EXISTS AN AGREEMENT BETWEEN THE PROPRIETOR AND THE USER, WHY IS IT ESSENTIAL TO REGISTER IT WITH THE REGISTRY?
For this, it is essential to peruse S 52 of the Trade marks Act. S52 states that in the event of the infringement of a trademark, the registered user can file an infringement suit as if he were the proprietor of the trademark. He can also make the proprietor as the defendant to the suit. This is because infringement also affects the rights of the registered user.
Now, consider the previous example of Apollo Hospitals and Schreiber Dynamix. If there only exists a contract between both the parties and Schreiber Dynamix is not registered as a registered user, Schreiber Dynamix will not be able to avail any remedy under the Trade Marks Act in the event of any infringement. They will also be unable to make Apollo Hospitals a defendant to the suit. The only solution they would have is to proceed under the Indian Contract Act. Further, if Apollo Hospitals repudiates the contract, Schreiber Dynamix would be deemed to be an infringer thus risking their interests.
Therefore, it is essential for a registered user to register themselves with the Trade Mark Registry so that they can protect their interests.