Introduction
The establishment of a trademark leads to the growth of a particular trademark. After a trademark is registered, an owner is granted exclusive rights to use the mark in the course of business or trade. Furthermore, these rights can be transferred to other people through a variety of approaches, including assignment and license. According to the Indian Trademark Act, permitted use is the use of a trademark by any third party with the owner's consent. It is uncertain if a person who has been granted permission to use the mark orally can also be considered a permitted user.
Who Is A Permitted User?
The utilization of a trademark should not be limited to the proprietor or registered user solely; it should also be granted to legitimate authorized users. "Permitted user" is defined in the Trademark Act, 1999, under section 2 (i) (r) (ii), which mandates "a person other than the registered proprietor and registered user in relation to goods or services."
For permitted use, the below-mentioned conditions must be fulfilled:
a. The trademark should remain registered for the time being, and
b. The permitted user should connect in the course of his trade.
c. The permitted user by consent of the registered proprietor in a written agreement.
d. The permitted user must abide by the terms and conditions to which the registration of the trademark is subject and those that have been laid out by the registered proprietor.
An essential component of demonstrating that any use by a third party is legal under the Act as a permitted use and does not breach the rights of the trademark owner is the parties' written agreement.
Permitted User To Take Proceedings Against Infringement
Section 53 of the Trademark Act, 1999, describes that "a person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding for any infringement."
In simplified terms, if a person falls under the specific category (permitted user) mentioned in the provision of the Trade Marks Act, 1999, he cannot start any legal action against someone for violating your trademark rights.
In relation to the abovementioned, we put judgment to exemplify, in the case of P.K. Sen vs Exxon Mobile Corporation And Anr (FAO (OS) No.290/2016 & CM No.37465/2016), a Division Bench of the Delhi High Court has set aside the decision of the Single Judge and returned the plaint on the grounds that the Plaintiff No. 2, being a 'permitted user' as defined under Section 2(1)(r)(ii) of the Trade Marks Act, 1999, could not have instituted the suit by virtue of Section 52 of the Trade Marks Act, 1999. Furthermore, the court held that the second plaintiff, being the permitted user, the 'person,' as referred to in the Explanation to Section 134(2) of the Trademarks Act, can institute an infringement suit.
Conclusion
When it comes to the use and commercialization of intellectual property, permitted users are essential. The conditions of their licensing agreements should be carefully reviewed by permitted users because they may significantly affect their capacity to respond to infringement cases. To protect business interests and maximize the value of intellectual property, it is crucial to make sure that rights are properly enforced and protected through comprehensive and unambiguous licensing agreements for both the trademark owner and permitted users.
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