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CS Professional · Intellectual Property Rights - Law and Practice · Trademarks

Tara Exports licenses 'TARA' to Isha Ltd as a registered user, and Isha finds a counterfeiter using the mark. Isha wants to sue in its own name. Under the Trade Marks Act, 1999, what is the position?

Subject to any agreement, Isha as a registered user may sue for infringement in its own name, joining Tara Exports as defendant, with rights concurrent with the proprietor. Tara is not liable for costs unless it appears and takes part in the proceedings.

  1. ASubject to any agreement between the parties, Isha may sue in its own name, making Tara Exports a defendant, whose rights are concurrent with Isha'sCorrect
  2. BIsha cannot sue at all, since only the registered proprietor may sue
  3. CIsha may sue without joining Tara Exports, which need not be a party
  4. DIsha may sue, and Tara Exports is liable for costs even if it does not appear

Explanation

Section 52(1) allows a registered user, subject to any agreement, to sue for infringement in its own name, making the proprietor a defendant, with concurrent rights. Under section 52(2) the proprietor so added bears no costs unless it appears and takes part. Option B confuses this with section 53, which denies the right to a permitted user who is not a registered user.

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