THE TRADE MARKS ACT, 1999
ACT NO. 47 OF 1999
[30th December, 1999]
An Act to amend and consolidate the law relating to trade marks, to
provide for registration and better protection of trade marks for
goods and services and for the prevention of the use of fraudulent
marks.
BE it enacted by Parliament in the Fiftieth Year of the Republic of
India as follows:-
CHAP
PRELIMINARY
CHAPTER I
PRELIMINARY
1.
Short title and commencement.
1. Short title and commencement.-(1) This Act may be called the Trade
Marks Act, 1999.
(2) It extends to the whole of India.
(3) It shall come into force on such date as the Central Government
may, by notification in the Official Gazette, appoint:
Provided that different dates may be appointed for different
provisions of this Act, and any reference in any such provision to the
commencement of this Act shall be construed as a reference to the
coming into force of that provision.
2.
Definitions and interpretation.
2. Definitions and interpretation.-(1) In this Act, unless the
context otherwise requires,-
(a) "Appellate Board" means the Appellate Board established under
section 83;
(b) "assignment" means an assignment in writing by act of the parties
concerned;
(c) "associated trade marks" means trade marks deemed to be, or
required to be, registered as associated trade marks under this Act;
(d) "Bench" means a Bench of the Appellate Board;
(e) "certification trade mark" means a mark capable of distinguishing
the goods or services in connection with which it is used in the
course of trade which are certified by the proprietor of the mark in
respect of origin, material, mode of manufacture f goods or
performance of services, quality, accuracy or other characteristics
from goods or services not so certified and registrable as such under
Chapter IX in respect of those goods or services in the name, as
proprietor of the certification trade ma k, of that person;
(f) "Chairman" means the Chairman of the Appellate Board;
(g) "collective mark" means a trade mark distinguishing the goods or
services of members of an association of persons (not being a
partnership within the meaning of the Indian Partnership Act, 1932) (9
of 1932) which is the proprietor of the mark from t ose of others;
(h) "deceptively similar".-A mark shall be deemed to be deceptively
similar to another mark if it so nearly resembles that other mark as
to be likely to deceive or cause confusion;
(i) "false trade description" means-
(I) a trade description which is untrue or misleading in a material
respect as regards the goods or services to which it is applied; or
(II) any alteration of a trade description as regards the goods or
services to which it is applied, whether by way of addition,
effacement or otherwise, where that alteration makes the description
untrue or misleading in a material respect; or
(III) any trade description which denotes or implies that there are
con- tained, as regards the goods to which it is applied, more yards
or metres than there are contained therein standard yards or standard
metres; or
(IV) any marks or arrangement or combination thereof when applied-
(a) to goods in such a manner as to be likely to lead persons to
believe that the goods are the manufacture or merchandise of some
person other than the person whose merchandise or manufacture they
really are;
(b) in relation to services in such a manner as to be likely to lead
persons to believe that the services are provided or rendered by some
person other than the person whose services they really are; or
(V) any false name or initials of a person applied to goods or
services in such manner as if such name or initials were a trade
description in any case where the name or initials-
(a) is or are not a trade mark or part of a trade mark; and
(b) is or are identical with or deceptively similar to the name or
initials of a person carrying on business in connection with goods or
services of the same description or both and who has not authorised
the use of such name or initials; and
(c) is or are either the name or initials of a fictitious person or
some person not bona fide carrying on business in connection with such
goods or services, and the fact that a trade description is a trade
mark or part of a trade mark shall not prevent such trade description
being a false trade description within the meaning of this Act;
(j) "goods" means anything which is the subject of trade or
manufacture;
(k) ''Judicial Member'' means a Member of the Appellate Board
appointed as such under this Act, and includes the Chairman and the
Vice-Chairman;
(l) "limitations" (with its grammatical variations) means any
limitation of the exclusive right to the use of a trade mark given by
the registration of a person as proprietor thereof, including
limitations of that right as to mode or area of use within I dia or
outside India;
(m) "mark" includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof;
(n) "Member" means a Judicial Member or a Technical Member of the
Appellate Board and includes the Chairman and the Vice-Chairman;
(o) "name" includes any abbreviation of a name;
(p) "notify" means to notify in the Trade Mark Journal published by
the Registrar;
(q) "package" includes any case, box, container, covering, folder,
receptacle, vessel, casket, bottle, wrapper, label, band, ticket,
reel, frame, capsule, cap, lid, stopper and cork;
(r) "permitted use", in relation to a registered trade mark, means the
use of trade mark-
(i) by a registered user of the trade mark in relation to goods or
services-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time
being; and
(c) for which he is registered as registered user; and
(d) which complies with any conditions or limitations to which the
registration of registered user is subject; or
(ii) by a person other than the registered proprietor and registered
user in relation to goods or services-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time
being; and
(c) by consent of such registered proprietor in a written agreement;
and
(d) which complies with any conditions or limitations to which such
user is subject and to which the registration of the trade mark is
subject;
(s) "prescribed" means prescribed by rules made under this Act;
(t) "register" means the Register of Trade Marks referred to in
sub-section (1) of section 6;
(u) "registered" (with its grammatical variations) means registered
under this Act;
(v) "registered proprietor", in relation to a trade mark, means the
person for the time being entered in the register as proprietor of the
trade mark;
(w) "registered trade mark" means a trade mark which is actually on
the register and remaining in force;
(x) "registered user" means a person who is for the time being
registered as such under section 49;
(y) "Registrar" means the Registrar of Trade Marks referred to in
section 3;
(z) "service" means service of any description which is made available
to potential users and includes the provision of services in
connection with business of any industrial or commercial matters such
as banking, communication, education, financing, i surance, chit
funds, real estate, transport, storage, material treatment,
processing, supply of electrical or other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of news or
information and advertising;
(za) "trade description" means any description, statement or other
indication, direct or indirect,-
(i) as to the number, quantity, measure, guage or weight of any goods;
or
(ii) as to the standard of quality of any goods or services according
to a classification commonly used or recognised in the trade; or
(iii) as to fitness for the purpose, strength, performance or
behaviour of any goods, being "drug" as defined in the Drugs and
Cosmetics Act, 1940 (23 of 1940), or "food" as defined in the
Prevention of Food Adulteration Act, 1954 (37 of 1954); or
(iv) as to the place or country in which or the time at which any
goods or services were made, produced or provided, as the case may be;
or
(v) as to the name and address or other indication of the identity of
the manufacturer or of the person providing the services or of the
person for whom the goods are manufactured or services are provided;
or
(vi) as to the mode of manufacture or producing any goods or providing
services; or
(vii) as to the material of which any goods are composed; or
(viii) as to any goods being the subject of an existing patent,
privilege or copyright, and includes-
(a) any description as to the use of any mark which according to the
custom of the trade is commonly taken to be an indication of any of
the above matters;
(b) the description as to any imported goods contained in any bill of
entry or shipping bill;
(c) any other description which is likely to be misunderstood or
mistaken for all or any of the said matters;
(zb) "trade mark" means a mark capable of being represented
graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of
goods, their packaging and combination of colours; and-
(i) in relation to Chapter XII (other than section 107), a registered
trade mark or a mark used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course
of trade between the goods or services, as the ase may be, and some
person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or
proposed to be used in relation to goods or services for the purpose
of indicating or so to indicate a connection in the course of trade
between the goods or services, as the case may be, a d some person
having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of
that person, and includes a certification trade mark or collective
mark;
(zc) "transmission" means transmission by operation of law, devolution
on the personal representative of a deceased person and any other mode
of transfer, not being assignment;
(zd) ''Technical Member'' means a Member who is not a Judicial Member;
(ze) "tribunal" means the Registrar or, as the case may be, the
Appellate Board, before which the proceeding concerned is pending;
(zf) "Vice-Chairman" means a Vice-Chairman of the Appellate Board;
(zg) "well-known trade mark" , in relation to any goods or services,
means a mark which has become so to the substantial segment of the
public which uses such goods or receives such services that the use of
such mark in relation to other goods or service would be likely to be
taken as indicating a connection in the course of trade or rendering
of services between those goods or services and a person using the
mark in relation to the first-mentioned goods or services.
(2) In this Act, unless the context otherwise requires, any reference-
(a) to "trade mark" shall include reference to "collective mark" or
"certification trade mark";
(b) to the use of a mark shall be construed as a reference to the use
of printed or other visual representation of the mark;
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use
of the mark upon, or in any physical or in any other relation
whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the
use of the mark as or as part of any statement about the availability,
provision or performance of such services;
(d) to the Registrar shall be construed as including a reference to
any officer when discharging the functions of the Registrar in
pursuance of sub-section (2) of section 3;
(e) to the Trade Marks Registry shall be construed as including a
reference to any office of the Trade Marks Registry.
(3) For the purposes of this Act, goods and services are associated
with each other if it is likely that those goods might be sold or
otherwise traded in and those services might be provided by the same
business and so with descriptions of goods and desc iptions of
services.
(4) For the purposes of this Act, "existing registered trade mark"
means a trade mark registered under the Trade and Merchandise Marks
Act, 1958 (43 of 1958) immediately before the commencement of this
Act.
CHAP
THE REGISTER AND CONDITIONS FOR REGISTRATION
CHAPTER II
THE REGISTER AND CONDITIONS FOR REGISTRATION
3.
Appointment of Reistrar and other officers.
3. Appointment of Registrar and other officers.-(1) The Central
Government may, by notification in the Official Gazette, appoint a
person to be known as the Controller-General of Patents, Designs and
Trade Marks, who shall be the Registrar of Trade Marks for the
purposes of this Act.
(2) The Central Government may appoint such other officers with such
designations as it thinks fit for the purpose of discharging, under
the superintendence and direction of the Registrar, such functions of
the Registrar under this Act as he may from ti e to time authorise
them to discharge.
4.
Power of Reistrar to withdraw or transfer cases, etc.
4. Power of Registrar to withdraw or transfer cases, etc.-Without
prejudice to the generality of the provisions of sub-section (2) of
section 3, the Registrar may, by order in writing and for reasons to
be recorded therein, withdraw any matter pending be ore an officer
appointed under the said sub-section (2) and deal with such matter
himself either de novo or from the stage it was so withdrawn or
transfer the same to another officer so appointed who may, subject to
special directions in the order of tra sfer, proceed with the matter
either de novo or from the stage it was so transferred.
5.
Trade Marks Registry and offices thereof.
5. Trade Marks Registry and offices thereof.-(1) For the purposes of
this Act, there shall be a trade marks registry and the Trade Marks
Registry established under the Trade and Merchandise Marks Act, 1958
(43 of 1958) shall be the Trade Marks Registry u der this Act.
(2) The head office of the Trade Marks Registry shall be at such place
as the Central Government may specify, and for the purpose of
facilitating the registration of trade marks, there may be established
at such places as the Central Government may think fit branch offices
of the Trade Marks Registry.
(3) The Central Government may, by notification in the Official
Gazette, define the territorial limits within which an office of the
Trade Marks Registry may exercise its functions.
(4) There shall be a seal of the Trade Marks Registry.
6.
The Register of Trade Marks.
6. The Register of Trade Marks.-(1) For the purposes of this Act, a
record called the Register of Trade Marks shall be kept at the head
office of the Trade Marks Registry, wherein shall be entered all
registered trade marks with the names, addresses and escription of the
proprietors, notifications of assignment and transmissions, the names,
addresses and descriptions of registered users, conditions,
limitations and such other matter relating to registered trade marks
as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), it shall be
lawful for the Registrar to keep the records wholly or partly in
computer floppies diskattes or in any other electronic form subject to
such safeguards as may be prescribed.
(3) Where such register is maintained wholly or partly on computer
under sub-section (2) any reference in this Act to entry in the
register shall be construed as the reference to any entry as
maintained on computer or in any other electronic form.
(4) No notice of any trust, express or implied or constructive, shall
be entered in the register and no such notice shall be receivable by
the Registrar.
(5) The register shall be kept under the control and management of the
Registrar.
(6) There shall be kept at each branch office of the Trade Marks
Registry a copy of the register and such of the other documents
mentioned in section 148 as the Central Government may, by
notification in the Official Gazette, direct.
(7) The Register of Trade Marks, both Part A and Part B, existing at
the commencement of this Act, shall be incorporated in and form part
of the register under this Act.
7.
Classification of goods and services.
7. Classification of goods and services.-(1) The Registrar shall
classify goods and services, as far as may be, in accordance with the
International classification of goods and services for the purposes of
registration of trade marks.
(2) Any question arising as to the class within which any goods or
services falls shall be determined by the Registrar whose decision
shall be final.
8.
Publication of alphabetical index.
8. Publication of alphabetical index.-(1) The Registrar may publish
in the prescribed manner an alphabetical index of classification of
goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical
index of goods and services published under sub-section (1), the
classification of goods or services shall be determined by the
Registrar in accordance with sub-section (2) of section .
9.
Absolute grounds for refusal of registration.
9. Absolute grounds for refusal of registration.-(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from
those of another person;
(b) which consist exclusively of marks or indications which may serve
in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or
rendering of the service or other characteris ics of the goods or
service;
(c) which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive
character as a result of the use made of it or is a well-known trade
mark.
(2) A mark shall not be registered as a trade mark if-
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the
religious susceptibilities of any class or section of the citizens of
India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists
exclusively of-
(a) the shape of goods which results from the nature of the goods
themselves; or
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
Explanation.-For the purposes of this section, the nature of goods or
services in relation to which the trade mark is used or proposed to be
used shall not be a ground for refusal of registration.
10.
Limitation as to colour.
10. Limitation as to colour.-(1) A trade mark may be limited wholly
or in part to any combination of colours and any such limitation shall
be taken into consideration by the tribunal having to decide on the
distinctive character of the trade mark.
(2) So far as a trade mark is registered without limitation of colour,
it shall be deemed to be registered for all colours.
11.
Relative grounds for refusal of registration.
11. Relative grounds for refusal of registration.-(1) Save as
provided in section 12, a trade mark shall not be registered if,
because of-
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or
similarity of the goods or services covered by the trade mark, there
exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.
(2) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to
those for which the earlier trade mark is registered in the name of a
different proprietor, shall not be registered if or to the extent the
earlier trade mark is a well-known trade mark in India and the use of
the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier rade
mark.
(3) A trade mark shall not be registered if, or to the extent that,
its use in India is liable to be prevented-
(a) by virtue of any law in particular the law of passing off
protecting an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade
mark where the proprietor of the earlier trade mark or other earlier
right consents to the registration, and in such case the Registrar may
register the mark under special circumstance under section 12.
Explanation.-For the purposes of this section, earlier trade mark
means-
(a) a registered trade mark or convention application referred to in
section 154 which has a date of application earlier than that of the
trade mark in question, taking account, where appropriate, of the
priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for
registration of the trade mark in question, or where appropriate, of
the priority claimed in respect of the application, was entitled to
protection as a well-known trade mark.
(5) A trade mark shall not be refused registration on the grounds
specified in sub-sections (2) and (3), unless objection on any one or
more of those grounds is raised in opposition proceedings by the
proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a
well-known trade mark, take into account any fact which he considers
relevant for determining a trade mark as a well-known trade mark
including-
(i) the knowledge or recognition of that trade mark in the relevant
section of the public including knowledge in India obtained as a
result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that
trade mark;
(iii) the duration, extent and geographical area of any promotion of
the trade mark, including advertising or publicity and presentation,
at fairs or exhibition of the goods or services to which the trade
mark applies;
(iv) the duration and geographical area of any registration of or any
application for registration of that trade mark under this Act to the
extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade
mark, in particular, the extent to which the trade mark has been
recognised as a well-known trade mark by any court or Registrar under
that record.
(7) The Registrar shall, while determining as to whether a trade mark
is known or recognised in a relevant section of the public for the
purposes of sub-section (6), take into account-
(i) the number of actual or potential consumers of the goods or
services;
(ii) the number of persons involved in the channels of distribution of
the goods or services;
(iii) the business circles dealing with the goods or services, to
which that trade mark applies.
(8) Where a trade mark has been determined to be well-known in at
least one relevant section of the public in India by any court or
Registrar, the Registrar shall consider that trade mark as a
well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining
whether a trade mark is a well-known trade mark, any of the following,
namely:-
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been
filed in India;
(iv) that the trade mark-
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed
in, any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.
(10) While considering an application for registration of a trade mark
and opposition filed in respect thereof, the Registrar shall-
(i) protect a well-known trade mark against the identical or similar
trade marks;
(ii) take into consideration the bad faith involved either of the
applicant or the opponent affecting the right relating to the trade
mark.
(11) Where a trade mark has been registered in good faith disclosing
the material informations to the Registrar or where right to a trade
mark has been acquired through use in good faith before the
commencement of this Act, then, nothing in this Act shal prejudice the
validity of the registration of that trade mark or right to use that
trade mark on the ground that such trade mark is identical with or
similar to a well-known trade mark.
12.
Registration in the case of honest concurrent use, etc.
12. Registration in the case of honest concurrent use, etc.-In the
case of honest concurrent use or of other special circumstances which
in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trade marks
which are identical or similar (whether any such trade mark is already
registered or not) in respect of the same or similar goods or
services, subject to such conditions and limitations, if any, as the
Registrar may think fit to impose
13.
Prohibition of registration of names of chemical elements orinternational
non-proprietary names.
13. Prohibition of registration of names of chemical elements or
international non-proprietary names.-No word-
(a) which is the commonly used and accepted name of any single
chemical element or any single chemical compound (as distinguished
from a mixture) in respect of a chemical substance or preparation, or
(b) which is declared by the World Health Organisation and notified in
the prescribed manner by the Registrar from time to time, as an
international non- proprietary name or which is deceptively similar to
such name, shall be registered as a trade mark and any such
registration shall be deemed for the purpose of section 57 to be an
entry made in the register without sufficient cause or an entry
wrongly remaining on the register, as the circumstances may require.
14.
Use of names and representations of living persons or personsrecently dead.
14. Use of names and representations of living persons or persons
recently dead.-Where an application is made for the registration of a
trade mark which falsely suggests a connection with any living person,
or a person whose death took place within twen y years prior to the
date of application for registration of the trade mark, the Registrar
may, before he proceeds with the application, require the applicant to
furnish him with the consent in writing of such living person or, as
the case may be, of the legal representative of the deceased person to
the connection appearing on the trade mark, and may refuse to proceed
with the application unless the applicant furnishes the registrar with
such consent.
15.
Registration of parts of trade marks and of trade marks as a series.
15. Registration of parts of trade marks and of trade marks as a
series.-(1) Where the proprietor of a trade mark claims to be entitled
to the exclusive use of any part thereof separately, he may apply to
register the whole and the part as separate trad marks.
(2) Each such separate trade mark shall satisfy all the conditions
applying to and have all the incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade
marks in respect of the same or similar goods or services or
description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet d ffer
in respect of-
(a) statement of the goods or services in relation to which they are
respectively used or proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not
substantially affect the identity of the trade mark; or
(d) colour,
seeks to register those trade marks, they may be registered as a
series in one registration.
16.
Registration of trade marks as associated trade marks.
16. Registration of trade marks as associated trade marks.-(1) Where
a trade mark which is registered, or is the subject of an application
for registration, in respect of any goods or services is identical
with another trade mark which is registered, or s the subject of an
application for registration, in the name of the same proprietor in
respect of the same goods or description of goods or same services or
description of services or so nearly resembles it as to be likely to
deceive or cause confusion f used by a person other than the
proprietor, the Registrar may, at any time, require that the trade
marks shall be entered on the register as associated trade marks.
(2) Where there is an identity or near resemblance of marks that are
registered, or are the subject of applications for registration in the
name of the same proprietor, in respect of goods and in respect of
services which are associated with those goods r goods of that
description and with those services or services of that description,
sub-section (1) shall apply as it applies as where there is an
identity or near resemblance of marks that are registered, or are the
subject of applications for registra ion, in the name of the same
proprietor in respect of the same goods or description of goods or
same services or description of services.
(3) Where a trade mark and any part thoreof are, in accordance with
the provisions of sub-section (1) of section 15, registered as
separate trade marks in the name of the same proprietor, they shall be
deemed to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of
sub-section (3) of section 15 as a series in one registration shall be
deemed to be, and shall be registered as, associated trade marks.
(5) On application made in the prescribed manner by the registered
proprietor of two or more trade marks registered as associated trade
marks, the Registrar may dissolve the association as respects any of
them if he is satisfied that there would be no li elihood of deception
or confusion being caused if that trade mark were used by any other
person in relation to any of the goods or services or both in respect
of which it is registered, and may amend the register accordingly.
17.
Effect of registration of parts of a mark.
17. Effect of registration of parts of a mark.-(1) When a trade mark
consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a
whole.
(2) Notwithstanding anything contained in sub-section (1), when a
trade mark-
(a) contains any part-
(i) which is not the subject of a separate application by the
proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade
mark; or
(b) contains any matter which is common to the trade or is otherwise
of a non-distinctive character, the registration thereof shall not
confer any exclusive right in the matter forming only a part of the
whole of the trade mark so registered.
CHAP
PROCEDURE FOR AND DURATION OF REGISTRATION
CHAPTER III
PROCEDURE FOR AND DURATION OF REGISTRATION
18.
Application for registration.
18. Application for registration.-(1) Any person claiming to be the
proprietor of a trade mark used or proposed to be used by him, who is
desirous of registering it, shall apply in writing to the Registrar in
the prescribed manner for the registration o his trade mark.
(2) A single application may be made for registration of a trade mark
for different classes of goods and services and fee payable therefor
shall be in respect of each such class of goods or services.
(3) Every application under sub-section (1) shall be filed in the
office of the Trade Marks Registry within whose territorial limits the
principal place of business in India of the applicant or in the case
of joint applicants the principal place of busi ess in India of the
applicant whose name is first mentioned in the application as having a
place of business in India, is situate: Provided that where the
applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks
Registry within whose territorial limits the place mentioned in the
address for service n India as disclosed in the application, is
situate.
(4) Subject to the provisions of this Act, the Registrar may refuse
the application or may accept it absolutely or subject to such
amendments, modifications, conditions or limitations, if any, as he
may think fit.
(5) In the case of a refusal or conditional acceptance of an
application, the Registrar shall record in writing the grounds for
such refusal or conditional acceptance and the materials used by him
in arriving at his decision.
19.
Withdrawal of acceptance.
19. Withdrawal of acceptance.-Where, after the acceptance of an
application for registration of a trade mark but before its
registration, the Registrar is satisfied-
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark should not be
registered or should be registered subject to conditions or
limitations or to conditions additional to or different from the
conditions or limitations subject to which the application has been
accepted,
the Registrar may, after hearing the applicant if he so desires,
withdraw the acceptance and proceed as if the application had not been
accepted.
20.
Advertisement of application.
20. Advertisement of application.-(1) When an application for
registration of a trade mark has been accepted, whether absolutely or
subject to conditions or limitations, the Registrar shall, as soon as
may be after acceptance, cause the application as ac epted together
with the conditions or limitations, if any, subject to which it has
been accepted, to be advertised in the prescribed manner:
Provided that the Registrar may cause the application to be advertised
before acceptance if it relates to a trade mark to which sub-section
(1) of section 9 and sub-sections (1) and (2) of section 11 apply, or
in any other case where it appears to him th t it is expedient by
reason of any exceptional circumstances so to do.
(2) Where-
(a) an application has been advertised before acceptance under
sub-section (1); or
(b) after advertisement of an application,-
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section
22,
the Registrar may in his discretion cause the application to be
advertised again or in any case falling under clause (b) may, instead
of causing the application to be advertised again, notify in the
prescribed manner the correction or amendment made in t e application.
21.
Opposition to registration.
21. Opposition to registration.-(1) Any person may, within three
months from the date of the advertisement or re-advertisement of an
application for registration or within such further period, not
exceeding one month in the aggregate, as the Registrar, o application
made to him in the prescribed manner and on payment of the prescribed
fee, allows, give notice in writing in the prescribed manner to the
Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant
for registration and, within two months from the receipt by the
applicant of such copy of the notice of opposition, the applicant
shall send to the Registrar in the prescribed manner a c
unter-statement of the grounds on which he relies for his application,
and if he does not do so he shall be deemed to have abandoned his
application.
(3) If the applicant sends such counter-statement, the Registrar shall
serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely
shall be submitted in the prescribed manner and within the prescribed
time to the Registrar, and the Registrar shall give an opportunity to
them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, if so required,
and considering the evidence, decide whether and subject to what
conditions or limitations, if any, the registration is to be
permitted, and may take into account a ground of objection w ether
relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending
a counter-statement after receipt of a copy of such notice neither
resides nor carries on business in India, the Registrar may require
him to give security for the costs of proceeding before him, and in
default of such security being duly given, may treat the opposition or
application, as the case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error in,
or any amendment of, a notice of opposition or a counter-statement on
such terms as he thinks just.
22.
Correction and amendment.
22. Correction and amendment.-The Registrar may, on such terms as he
thinks just, at any time, whether before or after acceptance of an
application for registration under section 18, permit the correction
of any error in or in connection with the applica ion or permit an
amendment of the application:
Provided that if an amendment is made to a single application referred
to in sub-section (2) of section 18 involving division of such
application into two or more applications, the date of making of the
divided applications so divided. initial application shall be deemed
to be the date f making of the
23.
Registration.
23. Registration.-(1) Subject to the provisions of section 19, when
an application for registration of a trade mark has been accepted and
either-
(a) the application has not been opposed and the time for notice of
opposition has expired; or
(b) the application has been opposed and the opposition has been
decided in favour of the applicant, the Registrar shall, unless the
Central Government otherwise directs, register the said trade mark and
the trade mark when registered shall be registered as of the date of
the making of the said application and that date shall, subject to the
provisions f section 154, be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to
the applicant a certificate in the prescribed form of the registration
thereof, sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the
part of the applicant, the Registrar may, after giving notice to the
applicant in the prescribed manner, treat the a plication as abandoned
unless it is completed within the time specified in that behalf in the
notice.
(4) The Registrar may amend the register or a certificate of
registration for the purpose of correcting a clerical error or an
obvious mistake.
24.
Jointly owned trade marks.
24. Jointly owned trade marks.-(1) Save as provided in sub-section
(2), nothing in this Act shall authorise the registration of two or
more persons who use a trade mark independently, or propose so to use
it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a
trade mark are such that no one of them is entitled as between himself
and the other or others of them to use it except-
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of
them are connected in the course of trade, those persons may be
registered as joint proprietors of the trade mark, and this Act shall
have effect in relation to any rights to the use of the trade mark
vested in those persons as if those rights had been vested in a single
person.
25.
Duration, renewal, removal and restoration of registration.
25. Duration, renewal, removal and restoration of registration.-(1)
The registration of a trade mark, after the commencement of this Act,
shall be for a period of ten years, but may be renewed from time to
time in accordance with the provisions of this s ction.
(2) The Registrar shall, on application made by the registered
proprietor of a trade mark in the prescribed manner and within the
prescribed period and subject to payment of the prescribed fee, renew
the registration of the trade mark for a period of ten years from the
date of expiration of the original registration or of the last renewal
of registration, as the case may be (which date is in this section
referred to as the expiration of the last registration).
(3) At the prescribed time before the expiration of the last
registration of a trade mark the Registrar shall send notice in the
prescribed manner to the registered proprietor of the date of
which a renewal of registration may be obtained, and, if at the
expiration of the time prescribed in that behalf those conditions have
not been duly complied with the Registrar may remove the trade mark
from the register: expiration and the conditions as to payment of
fees and otherwi e upon Provided that the Registrar shall not remove
the trade mark from the register if an application is made in the
prescribed form and the prescribed fee and surcharge is paid within
six months from the expiration of the last registration of the trade
mark a d shall renew the registration of the trade mark for a period
of ten years under sub-section (2).
(4) Where a trade mark has been removed from the register for
non-payment of the prescribed fee, the Registrar shall, after six
months and within one year from the expiration of the last
registration of the trade mark, on receipt of an application in the
prescribed form and on payment of the prescribed fee, if satisfied
that it is just so to do, restore the trade mark to the register and
renew the registration of the trade mark either generally or subject
to such conditions or limitations as he thinks fi to impose, for a
period of ten years from the expiration of the last registration.
26.
Effect of removal from register for failure to pay fee for renewal.
26. Effect of removal from register for failure to pay fee for
renewal.-Where a trade mark has been removed from the register for
failure to pay the fee for renewal, it shall nevertheless, for the
purpose of any application for the registration of anothe trade mark
during one year, next after the date of the removal, be deemed to be a
trade mark already on the register, unless the tribunal is satisfied
either-
(a) that there has been no bona fide trade use of the trade mark which
has been removed during the two years immediately preceding its
removal; or
(b) that no deception or confusion would be likely to arise from the
use of the trade mark which is the subject of the application for
registration by reason of any previous use of the trade mark which has
been removed.
CHAP
EFFECT OF REGISTRATION
CHAPTER IV
EFFECT OF REGISTRATION
27.
No action for infringement of unregistered trade mark.
27. No action for infringement of unregistered trade mark.-(1) No
person shall be entitled to institute any proceeding to prevent, or to
recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action
against any person for passing off goods or services as the goods of
another person or as services provided by another person, or the
remedies in respect thereof.
28.
Rights conferred by registration.
28. Rights conferred by registration.-(1) Subject to the other
provisions of this Act, the registration of a trade mark shall, if
valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to t e goods
or services in respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark in the
manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under
sub-section (1) shall be subject to any conditions and limitations to
which the registration is subject.
(3) Where two or more persons are registered proprietors of trade
marks, which are identical with or nearly resemble each other, the
exclusive right to the use of any of those trade marks shall not
conditions or limitations entered on the register) be deemed to have
been acquired by any one of those persons as against any other of
those persons merely by registration of the trade marks but each of
those persons has otherwise the same rights as (except so far as their
respective rights are subject to any gainst other persons (not being
registered users using by way of permitted use) as he would have if he
were the sole registered proprietor.
29.
Infringement of registered trade marks.
29. Infringement of registered trade marks.-(1) A registered trade
mark is infringed by a person who, not being a registered proprietor
or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of which the
trade mark is registered and in such manner as to render the use of
the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses
in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of
the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and the identity of
the goods or services covered by such registered trade mark, is likely
to cause confusion on the part of the public, or which is likely to
have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court
shall presume that it is likely to cause confusion on the part of the
public.
(4) A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses
in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to
those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is detrimental
to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such
registered trade mark, as his trade name or part of his trade name, or
name of his business concern or part of the name, of his business
concern dealing in goods or services in respect f which the trade mark
is registered.
(6) For the purposes of this section, a person uses a registered mark,
if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or
stocks them for those purposes under the registered trade mark, or
offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in
advertising.
(7) A registered trade mark is infringed by a person who applies such
registered trade mark to a material intended to be used for labelling
or packaging goods, as a business paper, or for advertising goods or
services, provided such person, when he appli d the mark, knew or had
reason to believe that the application of the mark was not duly
authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that
trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist
of or include words, the trade mark may be infringed by the spoken use
of those words as well as by their visual representation and reference
in this section to the use of a mark shall be construed accordingly.
30.
Limits on effect of registered trade mark.
30. Limits on effect of registered trade mark.-(1) Nothing in section
29 shall be construed as preventing the use of a registered trade mark
by any person for the purposes of identifying goods or services as
those of the proprietor provided the use-
(a) is in accordance with honest practices in industrial or commercial
matters, and
(b) is not such as to take unfair advantage of or be detrimental to
the distinctive character or repute of the trade mark.
(2) A registered trade mark is not infringed where-
(a) the use in relation to goods or services indicates the kind,
quality, quantity, intended purpose, value, geographical origin, the
time of production of goods or of rendering of services or other
characteristics of goods or services;
(b) a trade mark is registered subject to any conditions or
limitations, the use of the trade mark in any manner in relation to
goods to be sold or otherwise traded in, in any place, or in relation
to goods to be exported to any market or in relation to ervices for
use or available or acceptance in any place or country outside India
or in any other circumstances, to which, having regard to those
conditions or limitations, the registration does not extend;
(c) the use by a person of a trade mark-
(i) in relation to goods connected in the course of trade with the
proprietor or a registered user of the trade mark if, as to those
goods or a bulk or which they form part, the registered proprietor or
the registered user conforming to the permitted use has applied the
trade mark and has not subsequently removed or obliterated it, or has
at any time expressly or impliedly consented to the use of the trade
mark; or
(ii) in relation to services to which the proprietor of such mark or
of a registered user conforming to the permitted use has applied the
mark, where the purpose and effect of the use of the mark is to
indicate, in accordance with the fact, that those se vices have been
performed by the proprietor or a registered user of the mark;
(d) the use of a trade mark by a person in relation to goods adapted
to form part of, or to be accessory to, other goods or services in
relation to which the trade mark has been used without infringement of
the right given by registration under this Act r might for the time
being be so used, if the use of the trade mark is reasonably necessary
in order to indicate that the goods or services are so adapted, and
neither the purpose nor the effect of the use of the trade mark is to
indicate, otherwise than in accordance with the fact, a connection in
the course of trade between any person and the goods or services, as
the case may be;
(e) the use of a registered trade mark, being one of two or more trade
marks registered under this Act which are identical or nearly resemble
each other, in exercise of the right to the use of that trade mark
given by registration under this Act.
(3) Where the goods bearing a registered trade mark are lawfully
acquired by a person, the sale of the goods in the market or otherwise
dealing in those goods by that person or by a person claiming under or
through him is not infringement of a trade by r ason only of-
(a) the registered trade mark having been assigned by the registered
proprietor to some other person, after the acquisition of those goods;
or
(b) the goods having been put on the market under the registered trade
mark by the proprietor or with his consent.
(4) Sub-section (3) shall not apply where there exists legitimate
reasons for the proprietor to oppose further dealings in the goods in
particular, where the condition of the goods, has been changed or
impaired after they have been put on the market.
31.
Registration to be prima facie evidence of validity.
31. Registration to be prima facie evidence of validity.-(1) In all
legal proceedings relating to a trade mark registered under this Act
(including applications under section 57), the original registration
of the trade mark and of all subsequent assignme ts and transmissions
of the trade mark shall be prima facie evidence of the validity
thereof;
(2) In all legal proceedings as aforesaid a registered trade mark
shall not be held to be invalid on the ground that it was not a
registrable trade mark under section 9 except upon evidence of
distinctiveness and that such evidence was not submitted to t e
Registrar before registration, if it is proved that the trade mark had
been so used by the registered proprietor or his predecessor in title
as to have become distinctive at the date of registration.
32.
Protection of registration on ground of distinctiveness in certaincases.
32. Protection of registration on ground of distinctiveness in
certain cases.-Where a trade mark is registered in breach of
sub-section (1) of section 9, it shall not be declared invalid if, in
consequence of the use which has been made of it, it has aft r
registration and before commencement of any legal proceedings
challenging the validity of such registration, acquired a distinctive
character in relation to the goods or services for which it is
registered.
33.
Effect of acquiescence.
33. Effect of acquiescence.-(1) Where the proprietor of an earlier
trade mark has acquiesced for a continuous period of five years in the
use of a registered trade mark, being aware of that use, he shall no
longer be entitled on the basis of that earlier trade mark-
(a) to apply for a declaration that the registration of the later
trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods
or services in relation to which it has been so used, unless the
registration of the later trade mark was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade
mark is not entitled to oppose the use of the earlier trade mark, or
as the case may be, the exploitation of the earlier right,
notwithstanding that the earlier trade mark may no longer be invoked
against his later trade mark.
34.
Saving for vested rights.
34. Saving for vested rights.-Nothing in this Act shall entitle the
proprietor or a registered user of registered trade mark to interfere
with or restrain the use by any person of a trade mark identical with
or nearly resembling it in relation to goods o services in relation to
which that person or a predecessor in title of his has continuously
used that trade mark from a date prior-
(a) to the use of the first-mentioned trade mark in relation to those
goods or services be the proprietor or a predecessor in title of his;
or
(b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of a
predecessor in title of his; whichever is the earlier, and the
Registrar shall not refuse (on such use being proved) to register the
second mentioned trade mark by reason only of the registration of the
first-mentioned trade mark.
35.
Saving for use of name, address or description of goods or services.
35. Saving for use of name, address or description of goods or
services.-Nothing in this Act shall entitle the proprietor or a
registered user of a registered trade mark to interfere with any bona
fide use by a person of his own name or that of his place of business,
or of the name, or of the name of the place of business, of any of his
predecessors in business, or the use by any person of any bona fide
description of the character or quality of his goods or services.
36.
Saving for words used as name or description of an article orsubstance or
service.
36. Saving for words used as name or description of an article or
substance or service.-(1) The registration of a trade mark shall not
be deemed to have become invalid by reason only of any use after the
date of the registration of any word or words whic the trade mark
contains or of which it consists as the name or description of an
article or substance or service:
Provided that, if it is proved either-
(a) that there is a well known and established use of the said word as
the name or description of the article or substance or service by a
person or persons carrying on trade therein, not being use in relation
to goods or services connected in the course of trade with the
proprietor or a registered user of the trade mark or (in the case of a
certification trade mark) in relation to goods or services certified
by the proprietor; or
(b) that the article or substance was formerly manufactured under a
patent that a period of two years or more after the cesser of the
patent has elapsed and that the said word is the only practicable name
or description of the article or substance, the provisions of
sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or clause (b) of the
proviso to sub-section (1) are proved with respect to any words,
then,-
(a) for the purposes of any proceedings under section 57 if the trade
mark consists solely of such words, the registration of the trade
mark, so far as regards registration in respect of the article or
the services or of any services of the same description, as the case
requires, shall be deemed to be an entry wrongly remaining on the
register; substance in question or of any goods of the same de
cription, or of
(b) for the purposes of any other legal proceedings relating to the
trade mark,-
(i) if the trade mark consists solely of such words, all rights of the
proprietor under this Act or any other law to the use of the trade
mark; or
(ii) if the trade mark contains such words and other matter, all such
right of the proprietor to the use of such words, in relation to the
article or substance or to any goods of the same description, or to
the service or to any services of the same description, as the case
requires, shall be deemed to have ceased on the date on which the use
mentioned in clause (a) of th proviso to sub-section (1) first became
well known and established or at the expiration of the period of two
years mentioned in clause (b) of the said proviso.
CHAP
ASSIGNMENT AND TRANSMISSION
CHAPTER V
ASSIGNMENT AND TRANSMISSION
37.
Power of registered proprietor to assign and give receipts.
37. Power of registered proprietor to assign and give receipts.-The
person for the time being entered in the register as proprietor of a
trade mark shall, subject to the provisions of this Act and to any
rights appearing from the register to be vested in any other person,
have power to assign the trade mark, and to give effectual receipts
for any consideration for such assignment.
38.
Assignability and transmissibility of registered trade marks.
38. Assignability and transmissibility of registered trade
marks.-Notwithstanding anything in any other law to the contrary, a
registered trade mark shall, subject to the provisions of this
Chapter, be assignable and transmissible, whether with or withou the
goodwill of the business concerned and in respect either of all the
goods or services in respect of which the trade mark is registered or
of some only of those goods or services.
39.
Assignability and transmissibility of unregistered trade marks.
39. Assignability and transmissibility of unregistered trade
marks.-An unregistered trade mark may be assigned or transmitted with
or without the goodwill of the business concerned.
40.
Restriction on assignment or transmission where multiple exclusiverights would
be created.
40. Restriction on assignmnt or transmission where multiple exclusive
rights would be created.-(1) Notwithstanding anything in sections 38
and 39, a trade mark shall not be assignable or transmissible in a
case in which as a result of the assignment or t ansmission there
would in the circumstances subsist, whether under this Act or any
other law, exclusive rights in more than one of the persons concerned
to the use, in relation to-
(a) same goods or services;
(b) same description of goods or services;
(c) goods or services or description of goods or services which are
associated with each other, of trade marks nearly resembling each
other or of identical trade mark, if having regard to the similarity
of the goods and services and to the similarity of the trade marks,
the use of the trade marks in exercise of those rights would be likely
to decei e or cause confusion:
Provided that an assignment or transmission shall not be deemed to be
invalid under this sub-section if the exclusive rights subsisting as a
result thereof in the persons concerned respectively are, having
by two or more of those persons in relation to goods to be sold, or
otherwise traded in, within India otherwise than for export therefrom,
or in relation to goods to be exported to the same market outside
India or in relation to servi regard to limitations imposed thereon,
such as n t to be exercisable es for use at any place in India or any
place outside India in relation to services available for acceptance
in India.
(2) The proprietor of a registered trade mark who proposes to assign
it may submit to the Registrar in the prescribed manner a statement of
case setting out the circumstances and the Registrar may issue to him
a certificate stating whether, having regard to the similarity of the
goods or services and of the trade marks referred to in the case, the
proposed assignment would or would not be invalid under sub-section
(1), and a certificate so issued shall, subject to appeal and unless
it is shown that the c rtificate was obtained by fraud or
misrepresentation, be conclusive as to the validity or invalidity
under sub-section (1) of the assignment in so far as such validity or
invalidity depends upon the facts set out in the case, but, as regards
a certificat in favour of validity, only if application for the
registration under section 45 of the title of the person becoming
entitled is made within six months from the date on which the
certificate is issued.
41.
Restriction on assignment or transmission when exclusive rights wouldbe created
in different parts of India.
41. Restriction on assignment or transmission when exclusive rights
would be created in different parts of India.-Notwithstanding anything
in sections 38 and 39, a trade mark shall not be assignable or
transmissible in a case in which as a result of the ssignment or
transmission there would in the circumstances subsist, whether under
this Act or any other law-
(a) an exclusive right in one of the persons concerned, to the use of
the trade mark limited to use in relation to goods to be sold or
otherwise traded in, in any place in India, or in relation to services
for use, or services available for acceptance in any place in India;
and
(b) an exclusive right in another of these persons concerned, to the
use of a trade mark nearly resembling the first-mentioned trade mark
or of an identical trade mark in relation to-
(i) the same goods or services; or
(ii) the same description of goods or services; or
(iii) services which are associated with those goods or goods of that
description or goods which are associated with those services or
services of that description, limited to use in relation to goods to
be sold or otherwise traded in, or services for use, or available for
acceptance, in any other place in India:
Provided that in any such case, on application in the prescribed
manner by the proprietor of a trade mark who proposes to assign it, or
by a person who claims that a registered trade mark has been
transmitted to him or to a predecessor in title of his si ce the
commencement of this Act, the Registrar, if he is satisfied that in
all the circumstances the use of the trade mark in exercise of the
said rights would not be contrary to the public interest may approve
the assignment or transmission, and an assi nment or transmission so
approved shall not, unless it is shown that the approval was obtained
by fraud or misrepresentation, be deemed to be invalid under this
section or section 40 if application for the registration under
section 45 of the title of th person becoming entitled is made within
six months from the date on which the approval is given or, in the
case of a transmission, was made before that date.
42.
Conditions for assignment otherwise than in connection with thegoodwill of a
business.
42. Conditions for assignment otherwise than in connection with the
goodwill of a business.-Where an assignment of a trade mark, whether
registered or unregistered is made otherwise than in connection with
the goodwill of the business in which the mark h s been or is used,
the assignment shall not take effect unless the assignee, not later
than the expiration of six months from the date on which the
assignment is made or within such extended period, if any, not
exceeding three months in the aggregate, as the Registrar may allow,
applies to the Registrar for directions with respect to the
advertisement of the assignment, and advertises it in such form and
manner and within such period as the Registrar may direct.
Explanation.-For the purposes of this section, an assignment of a
trade mark of the following description shall not be deemed to be an
assignment made otherwise than in connection with the goodwill of the
business in which the mark is used, namely:-
(a) an assignment of a trade mark in respect only of some of the goods
or services for which the trade mark is registered accompanied by the
transfer of the goodwill of the business concerned in those goods or
services only; or
(b) an assignment of a trade mark which is used in relation to goods
exported from India or in relation to services for use outside India
if the assignment is accompanied by the transfer of the goodwill of
the export business only.
43.
Assignability and transmissibility of certification trade marks.
43. Assignability and transmissibility of certification trade
marks.-A certification trade mark shall not be assignable or
transmissible otherwise than with the consent of the Registrar, for
which application shall be made in writing in the prescribed ma ner.
44.
Assignability and transmissibility or associated trade marks.
44. Assignability and transmissibility or associated trade
marks.-Associated trade marks shall be assignable and transmissible
only as a whole and not separately, but, subject to the provisions of
this Act, they shall, for all other purposes, be deemed t have been
registered as separate trade marks.
45.
Registration of assignments and transmissions.
45. Registration of assignments and transmissions.-(1) Where a person
becomes entitled by assignment or transmission to a registered trade
mark, he shall apply in the prescribed manner to the Registrar to
register his title, and the Registrar shall, on r ceipt of the
application and on proof of title to his satisfaction, register him as
the proprietor of the trade mark in respect of the goods or services
in respect of which the assignment or transmission has effect, and
shall cause particulars of the ass gnment or transmission to be
entered on the register:
Provided that where the validity of an assignment or transmission is
in dispute between the parties, the Registrar may refuse to register
the assignment or transmission until the rights of the parties have
been determined by a competent court.
(2) Except for the purpose of an application before the Registrar
under sub-section (1) or an appeal from an order thereon, or an
application under section 57 or an appeal from an order thereon, a
document or instrument in respect of which no entry has een made in
the register in accordance with sub-section (1), shall not be admitted
in evidence by the Registrar or the Appellate Board or any court in
proof of title to the trade mark by assignment or transmission unless
the Registrar or the Appellate Bo rd or the court, as the case may be,
otherwise directs.
CHAP
USE OF TRADE MARKS AND REGISTERED USERS
CHAPTER VI
USE OF TRADE MARKS AND REGISTERED USERS
46.
Proposed use of trade mark by company to be formed, etc.
46. Proposed use of trade mark by company to be formed, etc.-(1) No
application for the registration of a trade mark in respect of any
goods or services shall be refused nor shall permission for such
registration be withheld, on the ground only that it a pears that the
applicant does not use or propose to use the trade mark if the
Registrar is satisfied that-
(a) a company is about to be formed and registered under the Companies
Act, 1956 (1 of 1956) and that the applicant intends to assign the
trade mark to that company with a view to the use thereof in relation
to those goods or services by the company, or
(b) the proprietor intends it to be used by a person, as a registered
user after the registration of the trade mark.
(2) The provisions of section 47 shall have effect, in relation to a
trade mark registered under the powers conferred by this sub-section,
as if for the reference, in clause (a) of sub-section (1) of that
section, to the intention on the part of an appl cant for registration
that a trade mark should be used by him there were substituted a
reference to the intention on his part that it should be used by the
company or registered user concerned.
(3) The tribunal may, in a case to which sub-section (1) applies,
require the applicant to give security for the costs of any
proceedings relating to any opposition or appeal, and in default of
such security being duly given, may treat the application a abandoned.
(4) Where in a case to which sub-section (1) applies, a trade mark in
respect of any goods or services is registered in the name of an
applicant who, relies on intention to assign the trade mark to a
company, then, unless within such period as may be pr scribed or
within such further period not exceeding six months as the Registrar
may, on application being made to him in the prescribed manner, allow,
the company has been registered as the proprietor of the trade mark in
respect of those goods or servic s, the registration shall cease to
have effect in respect thereof at the expiration of that period and
the Registrar shall amend the register accordingly.
47.
Removal from register and imposition of limitations on ground ofnon-use.
47. Removal from register and imposition of limitations on ground of
non-use.(1) A registered trade mark may be taken off the register in
respect of the goods or services in respect of which it is registered
on application made in the prescribed manner o the Registrar or the
Appellate Board by any person aggrieved on the ground either-
(a) that the trade mark was registered without any bona fide intention
on the part of the applicant for registration that it should be used
in relation to those goods or services by him or, in a case to which
the provisions of section 46 apply, by the c mpany concerned or the
registered user, as the case may be, and that there has, in fact, been
no bona fide use of the trade mark in relation to those goods or
services by any proprietor thereof for the time being up to a date
three months before the date of the application; or
(b) that up to a date three months before the date of the application,
a continuous period of five years from the date on which the trade
mark is actually entered in the register or longer had elapsed during
which the trade mark was registered and durin which there was no bona
fide use thereof in relation to those goods or services by any
proprietor thereof for the time being:
Provided that except where the applicant has been permitted under
section 12 to register an identical or nearly resembling trade mark in
respect of the goods or services in question, or where the tribunal is
trade mark, the tribunal may refuse an application under clause (a) or
clause (b) in relation to any goods or services, if it is shown that
there has been, before the relevant date or during the relevant
period, as the case may be, of opinion that he might properly be
permitte so to register such a bona fide use of the trade mark by any
proprietor thereof for the time being in relation to-
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that
description being goods or services, as the case may be, in respect of
which the trade mark is registered.
(2) Where in relation to any goods or services in respect of which a
trade mark is registered-
(a) the circumstances referred to in clause (b) of sub-section (1) are
shown to exist so far as regards non-use of the trade mark in relation
to goods to be sold, or otherwise traded in a particular place in
India (otherwise than for export from India), or in relation to goods
to be exported to a particular market outside India; or in relation
to services for use or available for acceptance in a particular place
in India or for use in a particular market outside India; and
(b) a person has been permitted under section 12 to register an
identical or nearly resembling trade mark in respect of those goods,
under a registration extending to use in relation to goods to be so
sold, or otherwise traded in, or in relation to good to be so
exported, or in relation to services for use or available for
acceptance in that place or for use in that country, or the tribunal
is of opinion that he might properly be permitted so to register such
a trade mark, on application by that person in the prescribed manner
to the Appellate Board or to the Registrar, the tribunal may impose on
the registration of the first-mentioned trade mark such limitations as
it thinks proper for securing that that registration shal cease to
extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of
clause (b) of sub-section (1) or for the purposes of sub-section (2)
on any non-use of a trade mark which is shown to have been due to
special circumstances in the trade, which includes re trictions on the
use of the trade mark in India imposed by any law or regulation and
not to any intention to abandon or not to use the trade mark in
relation to the goods or services to which the application relates.
48.
Registered users.
48. Registered users.-(1) Subject to the provisions of section 49, a
person other than the registered proprietor of a 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 tra e mark is
registered.
(2) The permitted use of a trade mark shall be deemed to be used by
the proprietor thereof, and shall be deemed not to be used by a person
other than the proprietor, for the purposes of section 47 or for any
other purpose for which such use is material nder this Act or any
other law.
49.
Registration as registered user.
49. Registration as registered user.-(1) Where it is proposed that a
person should be registered as a registered user of a trade mark, the
registered proprietor and the proposed registered user shall jointly
apply in writing to the Registrar in the pres ribed manner, and every
such application shall be accompanied by-
(a) the agreement in writing or a duly authenticated copy thereof,
entered into between the registered proprietor and the proposed
registered user with respect to the permitted use of the trade mark;
and
(b) an affidavit made by the registered proprietor or by some person
authorised to the satisfaction of the Registrar to act on his behalf,-
(i) giving particulars of the relationship, existing or proposed,
between the registered proprietor and the proposed registered user,
including particulars showing the degree of control by the proprietor
over the permitted use which their relationship w ll confer and
whether it is a term of their relationship that the proposed
registered user shall be the sole registered user or that there shall
be any other restriction as to persons for whose registration as
registered users application may be made;
(ii) stating the goods or services in respect of which registration is
proposed;
(iii) stating the conditions or restrictions, if any, proposed with
respect to the characteristics of the goods or services, to the mode
or place of permitted use, or to any other matter;
(iv) stating whether the permitted use is to be for a period or
without limit of period, and, if for a period, the duration thereof;
and
(c) such further documents or other evidence as may be required by the
Registrar or as may be prescribed.
(2) When the requirements of sub-section (1) have been complied with,
the Registrar shall register the proposed registered user in respect
of the goods or services as to which he is so satisfied.
(3) The Registrar shall issue notice in the prescribed manner of the
registration of a person as a registered user, to other registered
users of the trade mark, if any.
(4) The Registrar shall, if so requested by the applicant, take steps
for securing that information given for the purposes of an application
under this section (other than matters entered in the register) is not
disclosed to rivals in trade.
50.
Power of Registrar for variation or cancellation of registration asregistered
user.
50. Power of Registrar for variation or cancellation of registration
as registered user.-(1) Without prejudice to the provisions of section
57, the registration of a person as registered user-
(a) may be varied by the Registrar as regards the goods or services in
respect of which it has effect on the application in writing in the
prescribed manner of the registered proprietor of the trade mark;
(b) may be cancelled by the Registrar on the application in writing in
the prescribed manner of the registered proprietor or of the
registered user or of any other registered user of the trade mark;
(c) may be cancelled by the Registrar on the application in writing in
the prescribed manner of any person on any of the following grounds,
namely:-
(i) that the registered user has used the trade mark otherwise than in
accordance with the agreement under clause (a) of sub-section (1) of
section 49 or in such way as to cause or to be likely to cause,
deception or confusion;
(ii) that the proprietor or the registered user misrepresented, or
failed to disclose, some fact material to the application for
registration which if accurately represented or disclosed would not
have justified the registration of the registered user;
(iii) that the circumstances have changed since the date of
registration in such a way that at the date of such application for
cancellation they would not have justified registration of the
registered user;
(iv) that the registration ought not to have been effected having
regard to rights vested in the applicant by virtue of a contract in
the preformance of which he is interested;
(d) may be cancelled by the Registrar on his own motion or on the
application in writing in the prescribed manner by any person, on the
ground that any stipulation in the agreement between the registered
proprietor and the registered user regarding the uality of the goods
or services in relation to which the trade mark is to be used is
either not being enforced or is not being complied with;
(e) may be cancelled by the Registrar in respect of any goods or
services in relation to which the trade mark is no longer registered.
(2) The Registrar shall issue notice in the prescribed manner in
respect of every application under this section to the registered
proprietor and each registered user (not being the applicant) of the
trade mark.
(3) The procedure for cancelling a registration shall be such as may
be prescribed:
Provided that before cancelling of registration, the registered
proprietor shall be given a reasonable opportunity of being heard.
51.
Power of Registrar to call for information relating to agreement inrespect of
registered users.
51. Power of Registrar to call for information relating to agreement
in respect of registered users.-(1) The Registrar may, at any time
during the continuance of the registration of the registered user, by
notice in writing, require the registered propri tor to confirm to him
within one month that the agreement filed under clause (a) of
sub-section (1) of section 49 continues to be in force.
(2) If the registered proprietor fails to furnish the confirmation
within one month as required under sub-section (1), the registered
user shall cease to be the registered user on the day immediately
after the expiry of the said period and the Registrar hall notify the
same.
52.
Right of registered user to take proceedings against infringement.
52. Right of registered user to take proceedings against
infringement.-(1) Subject to any agreement subsisting between the
parties, a registered user may institute proceedings for infringement
in his own name as if he were the registered proprietor, maki g the
registered proprietor a defendant and the rights and obligations of
such registered user in such case being concurrent with those of the
registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered
proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.
53.
No right of permitted user to take proceeding against infringement.
53. No right of permitted user to take proceeding against
infringement.-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.
54.
Registered user not to have right of assignment or transmission.
54. Registered user not to have right of assignment or
transmission.-Nothing in this Act shall confer on a registered user of
a trade mark any assignable or transmissible right to the use thereof.
Explanation I.-The right of a registered user of a trade mark shall
not be deemed to have been assigned or transmitted within the meaning
of this section in the following cases, namely:-
(a) where the registered user being an individual enters into a
partnership with any other person for carrying on the business
concerned; but in any such case the firm may use the trade mark, if
otherwise in force, only for so long as the registered user is a
member of the firm;
(b) where the registered user being a firm subsequently undergoes a
change in its constitution; but in any such case the reconstituted
firm may use the trade mark, if otherwise in force, only for so long
as any partner of the original firm at the time of its registration as
registered user, continues to be a partner of the reconstituted firm.
Explanation II.- For the purposes of Explanation I, ''firm'' has the
same meaning as in the Indian Partnership Act, 1932 (9 of 1932).
55.
Use of one of associated or substantially identical trade marksequivalent to
use of another.
55. Use of one of associated or substantially identical trade marks
equivalent to use of another.-(1) Where under the provisions of this
Act, use of a registered trade mark is required to be proved for any
purpose, the tribunal may, if and, so far as it hall think right,
accept use of a registered associated trade mark, or of the trade mark
with additions or alterations not substantially affecting its
identity, as an equivalent for the use required to be proved.
(2) The use of the whole of a registered trade mark shall, for the
purpose of this Act, be deemed to be also use of any trade mark being
a part thereof and registered in accordance with sub-section (1) of
section 15 in the name of the same proprietor.
(3) Notwithstanding anything in section 32, the use of part of the
registered trade mark in sub-section (2) shall not be conclusive as to
its evidence of distinctiveness for any purpose under this Act.
56.
Use of trade mark for export trade and use when form of tradeconnection changes.
56. Use of trade mark for export trade and use when form of trade
connection changes.-(1) The application in India of trade mark to
goods to be exported from India or in relation to services for use
outside India and any other act done in India in relati n to goods to
be so exported or services so rendered outside India which, if done in
relation to goods to be sold or services provided or otherwise traded
in within India would constitute use of a trade mark therein, shall be
deemed to constitute use of he trade mark in relation to those goods
or services for any purpose for which such use is material under this
Act or any other law.
(2) The use of a registered trade mark in relation to goods or
services between which and the person using the mark any form of
connection in the course of trade subsists shall not be deemed to be
likely to cause deception or confusion on the ground only that the
mark has been or is used in relation to goods or services between
which and the said person or a predecessor in title of that person a
different form of connection in the course of trade subsisted or
subsists.
CHAP
RECTIFICATION AND CORRECTION OF THE REGISTER
CHAPTER VII
RECTIFICATION AND CORRECTION OF THE REGISTER
57.
Power to cancel or vary registration and to rectify the register.
57. Power to cancel or vary registration and to rectify the
register.-(1) On application made in the prescribed manner to the
Appellate Board or to the Registrar by any person aggrieved, the
tribunal may make such order as it may think fit for cancelling or
varying the registration of a trade mark on the ground of any
contravention, or failure to observe a condition entered on the
register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register
of any entry, or by any entry made in the register without sufficient
cause, or by any entry wrongly remaining on the register, or by any
error or defect in any entry in the register, ay apply in the
prescribed manner to the Appellate Board or to the Registrar, and the
tribunal may make such order for making, expunging or varying the
entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any
question that may be necessary or expedient to decide in connection
with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make any order referred to in sub-section
(1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall
direct that notice of the rectification shall be served upon the
Registrar in the prescribed manner who shall upon receipt of such
notice rectify the register accordingly.
58.
Correction of register.
58. Correction of register.-(1) The Registrar may, on application
made in the prescribed manner by the registered proprietor,-
(a) correct any error in the name, address or description of the
registered proprietor of a trade mark, or any other entry relating to
the trade mark;
(b) enter any change in the name, address or description of the person
who is registered as proprietor of a trade mark;
(c) cancel the entry of a trade mark on the register;
(d) strike out any goods or classes of goods or services from those in
respect of which a trade mark is registered, and may make any
consequential amendment or alteration in the certificate of
registration, and for that purpose, may require the certificate of
registration to be produced to him.
(2) The Registrar may, on application made in the prescribed manner by
a registered user of a trade mark, and after notice to the registered
proprietor, correct any error, or enter any change, in the name,
address or description of the registered user.
59.
Alteration of registered trade marks.
59. Alteration of registered trade marks.-(1) The registered
proprietor of a trade mark may apply in the prescribed manner to the
Registrar for leave to add to or alter the trade mark in any manner
not substantially affecting the identity thereof, and t e Registrar
may refuse leave or may grant it on such terms and subject to such
limitations as he may think fit.
(2) The Registrar may cause an application under this section to be
advertised in the prescribed manner in any case where it appears to
him that it is expedient so to do, and where he does so, if within the
prescribed time from the date of the advertise ent any person gives
notice to the Registrar in the prescribed manner of opposition to the
application, the Registrar shall, after hearing the parties if so
required, decide the matter.
(3) Where leave is granted under this section, the trade mark as
altered shall be advertised in the prescribed manner, unless the
application has already been advertised under sub-section (2).
60.
Adaptation of entries in register to amended or
substitutedclassification of oods or services.
60. Adaptation of entries in register to amended or substituted
classification of goods or services.-(1) The Registrar shall not make
any amendment of the register which would have the effect of adding
any goods or classes of goods or services to those n respect of which
a trade mark is registered (whether in one or more classes)
immediately before the amendment is to be made or of antedating the
registration of a trade mark in respect of any goods or services:
Provided that this sub-section, shall not apply when the Registrar is
satisfied that compliance therewith would involve undue complexity and
that the addition or antedating, as the case may be, would not affect
any substantial quantity of goods or servi es and would not
substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be brought to the notice
of the registered proprietor of the trade mark affected and advertised
in the prescribed manner, and may be opposed before the Registrar by
any person aggrieved on the ground that t e proposed amendment
contravenes the provisions of sub-section (1).
CHAP
COLLECTIVE MARKS
CHAPTER VIII
COLLECTIVE MARKS
61.
Special provisions for collective marks.
61. Special provisions for collective marks.-(1) The provisions of
this Act shall apply to collective marks subject to the provisions
contained in this Chapter.
(2) In relation to a collective mark the reference in clause (zb) of
sub-section (1) of section 2 to distinguishing the goods or services
of one person from those of others shall be construed as a reference
to distinguishing the goods or services of memb rs of an association
of persons which is the proprietor of the mark from those of others.
62.
Collective mark not to be misleading as to character or significance.
62. Collective mark not to be misleading as to character or
significance.-A collective mark shall not be registered if it is
likely to deceive or cause confusion on the part of public in
particular if it is likely to be taken to be something other than
collective mark, and in such case the Registrar may require that a
mark in respect of which application is made for registration comprise
some indication that it is a collective mark.
63.
Application to be accompanied by regulations governing use ofcollective marks.
63. Application to be accompanied by regulations governing use of
collective marks.-(1) An application for registration of a collective
mark shall be accompanied by the regulations governing the use of such
collective mark.
(2) The regulations referred to in sub-section (1) shall specify the
persons authorised to use the mark, the conditions of membership of
the association and, the conditions of use of the mark, including any
sanctions against misuse and such other matter as may be prescribed.
64.
Acceptance of application and regulations by Registrar.
64. Acceptance of application and regulations by Registrar.-If it
appears to the Registrar that the requirements for registration are
satisfied, he shall accept the application together with the
regulations, either unconditionally or subject to such con itions
including amendments of the said regulations, if any, as he may deem
fit or refuse to accept it and if accepted shall notify the
regulations.
65.
Regulations to be open to inspection.
65. Regulations to be open to inspection.-The regulations referred to
in sub-section (1) of section 63 shall be open to public inspection in
the same way as the register as provided in section 148.
66.
Amendment of regulations.
66. Amendment of regulations.-Any amendment of regulations referred
to in sub-section (1) of section 63 shall not be effective unless the
amended regulations are filed with the Registrar, and accepted and
published by him in accordance with section 64.
67.
Infringement proceedings by registered proprietor of collective mark.
67. Infringement proceedings by registered proprietor of collective
mark.-In a suit for infringement instituted by the registered
proprietor of a collective mark as plaintiff the court shall take into
account any loss suffered or likely to be suffered b authorised users
and may give such directions as it thinks fit as to the extent to
which the plaintiff shall hold the proceeds of any pecuniary remedy on
behalf of such authorised users.
68.
Additional grounds for removal of registration of collective mark.
68. Additional grounds for removal of registration of collective
mark.-The registration of a collective mark may also be removed from
the register on the ground-
(a) that the manner in which the collective mark has been used by the
proprietor or authorised user has caused it to become liable to
mislead the public as a collective mark; or
(b) that the proprietor has failed to observe, or to secure the
observance of the regulations governing the use of the mark.
Explanation I.-For the purposes of this Chapter, unless the context
otherwise requires, ''authorised user'' means a member of an
association authorised to use the registered collective mark of the
association.
Explanation II.-For the purposes of this Act, use of a collective mark
by an authorised user referred to in Explanation I shall be deemed to
be the use by the registered proprietor thereof.
CHAP
CERTIFICATION TRADE MARKS
CHAPTER IX
CERTIFICATION TRADE MARKS
69.
Certain provisions of this Act not applicable to certification trademarks.
69. Certain provisions of this Act not applicable to certification
trade marks.-The following provisions of this Act shall not apply to
certification trade marks, that is to say,-
(a) clauses (a) and (c) of sub-section (1) of section 9;
(b) sections 18, 20 and 21, except as expressly applied by this
Chapter;
(c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and
sub-section (2) of section 56;
(d) Chapter XII, except section 107.
70.
Registration of certification trade marks.
70. Registration of certification trade marks.-A mark shall not be
registrable as a certification trade mark in the name of a person who
carries on a trade in goods of the kind certified or a trade of the
provision of services of the kind certified.
71.
Applications for registration of certification trade marks.
71. Applications for registration of certification trade marks.-(1)
An application for the registration of a mark as a certification trade
mark shall be made to the Registrar in the prescribed manner by the
person proposed to be registered as the proprie or thereof, and
accompanied by a draft of the regulations to be deposited under
section 74.
(2) Subject to the provisions of section 70, the provisions of
sections 18, 19 and 22 shall apply in relation to an application under
this section as they apply in relation to an application under section
18, subject to the modification that references t erein to acceptance
of an application shall be construed as references to authorisation to
proceed with an application.
(3) In dealing under the said provisions with an application under
this section, the tribunal shall have regard to the like
considerations, so far as relevant, as if the application were
applications under section 18 and to any other considerations relev nt
to applications under this section, including the desirability of
securing that a certification trade mark shall comprise some
indication that it is a certification trade mark.
72.
Consideration of application for registration by Registrar.
72. Consideration of application for registration by Registrar.-(1)
The Registrar shall consider the application made under section 71
with regard to the following matters, namely:-
(a) whether the applicant is competent to certify the goods in respect
of which the mark is to be registered;
(b) whether the draft of the regulations to be filed under section 74
is satisfactory;
(c) whether in all the circumstances the registration applied for
would be to the public advantage, and may either-
(i) refuse the application; or
(ii) accept the application and approve the said draft of the
regulations either without modification and unconditionally or subject
to any conditions or limitations, or to any amendments or
modifications of the application or of the regulations, which h thinks
requisite having regard to any of the said matters.
(2) Except in the case of acceptance and approval without modification
and unconditionally, the Registrar shall not decide any matter under
sub-section (1) without giving the applicant an opportunity of being
heard.
73.
Opposition to registration of certification trade marks.
73. Opposition to registration of certification trade marks.-When an
application has been accepted, the Registrar shall, as soon as may be
thereafter, cause the application as accepted to be advertised in the
prescribed manner, and the provisions of sect on 21 shall apply in
relation to the registration of the mark as they apply in relation to
an application under section 18.
74.
Filing of regulations governing use of a certification trade mark.
74. Filing of regulations governing use of a certification trade
mark.-(1) There shall be filed at the Trade Marks Registry in respect
of every mark registered as a certification trade mark regulations for
governing the use thereof, which shall include p ovisions as to the
cases in which the proprietor is to certify goods or services and to
authorise the use of the certification trade mark, and may contain any
other provisions which the Registrar may by general or special order,
require or permit to be i serted therein (including provisions
conferring a right of appeal to the Registrar against any refusal of
the proprietor to certify goods or to authorise the use of the
certification trade mark in accordance with the regulations); and
regulations so file shall be open to inspection in like manner as the
register as provided in section 148.
(2) The regulations so filed may, on the application of the registered
proprietor, be altered by the Registrar.
(3) The Registrar may cause such application to be advertised in any
case where it appears to him expedient so to do, and where he does so,
if within the time specified in the advertisement any person gives
notice of opposition to the application, the Re istrar shall not
decide the matter without giving the parties an opportunity of being
heard.
75.
Infringement of certification trade marks.
75. Infringement of certification trade marks.-The right conferred by
section 78 is infringed by any person who, not being the registered
proprietor of the certification trade mark or a person authorised by
him in that behalf under the regulations filed nder section 74, using
it in accordance therewith, uses in the course of trade, a mark, which
is identical with, or deceptively similar to the certification trade
mark in relation to any goods or services in respect of which it is
registered, and in such manner as to render the use of the mark likely
to be taken as being a use as a trade mark.
76.
Acts not constituting infringement of certification trade marks.
76. Acts not constituting infringement of certification trade
marks.-(1) Notwithstanding anything contained in this Act, the
following acts do not constitute an infringement of the right to the
use of a registered certification trade mark-
(a) where a certification trade mark is registered subject to any
conditions or limitations entered on the register, the use of any such
mark in any mode, in relation to goods to be sold or otherwise traded
in any place, or in relation to goods to be exp rted to any market or
in relation to services for use or available for acceptance in any
place, country or territory or in any other circumstances, to which
having regard to any such limitations, the registration does not
extend;
(b) the use of a certification trade mark in relation to goods or
services certified by the proprietor of the mark if, as to those goods
or services or a bulk of which they form part, the proprietor or
another in accordance with his authorisation under t e relevant
regulations has applied the mark and has not subsequently removed or
obliterated it, or the proprietor has at any time expressly or
impliedly consented to the use of the mark;
(c) the use of a certification trade mark in relation to goods or
services adapted to form part of, or to be accessory to, other goods
in relation to which the mark has been used without infringement of
the right given as aforesaid or might for the time eing be so used, if
the use of the mark is reasonably necessary in order to indicate that
the goods or services are so adapted and neither the purpose nor the
effect of the use of the mark is to indicate otherwise than in
accordance with the fact that th goods or services are certified by
the proprietor.
(2) Clause (b) of sub-section (1) shall not apply to the case of use
consisting of the application of a certification trade mark to goods
or services, notwithstanding that they are such goods or services as
are mentioned in that clause if such applicati n is contrary to the
regulations referred to in that clause.
(3) Where a certification trade mark is one of two or more trade marks
registered under this Act, which are identical or nearly resemble each
other, the use of any of those trade marks in exercise of the right to
the use of that trade mark given by regis ration, shall not be deemed
to be an infringement of the right so given to the use of any other of
those trade marks.
77.
Cancellation or varying of registration of certification trade marks.
77. Cancellation or varying of registration of certification trade
marks.-The Registrar may, on the application in the prescribed manner
of any person aggrieved and after giving the proprietor an opportunity
of opposing the application, make such order a he thinks fit for
expunging or varying any entry in the register to a certification
trade mark, or for varying the regulations, on any of the following
grounds, namely:-
(a) that the proprietor is no longer competent, in the case of any of
the goods or services in respect of which the mark is registered, to
certify those goods or services;
(b) that the proprietor has failed to observe any provisions of the
regulations to be observed on his part;
(c) that it is no longer to the public advantage that the mark should
remain registered;
(d) that it is requisite for the public advantage that if the mark
remains registered, the regulations should be varied.
78.
Rights conferred by registration of certification trade marks.
78. Rights conferred by registration of certification trade
marks.-(1) Subject to the provisions of sections 34, 35 and 76, the
registration of a person as a proprietor of certification trade mark
in respect of any goods or services shall, if valid, giv to that
person the exclusive right to the use of the mark in relation to those
goods or services.
(2) The exclusive right to the use of a certification trade mark given
under sub-section (1) shall be subject to any conditions and
limitations to which the registration is subject.
CHAP
SPECIAL PROVISIONS FOR TEXTILE GOODS
CHAPTER X
SPECIAL PROVISIONS FOR TEXTILE GOODS
79.
Textile goods.
79. Textile goods.-The Central Government may prescribe classes of
goods (in this Chapter referred to as textile goods) to the trade
marks used in relation to which the provisions of this Chapter shall
apply; and subject to the said provisions, the other provisions of
this Act shall apply to such trade marks as they apply to trade marks
used in relation to other classes of goods.
80.
Restriction on registration of textile goods.
80. Restriction on registration of textile goods.-(1) In respect of
textile goods being piece goods-
(a) no mark consisting of a line heading alone shall be registrable as
a trade mark;
(b) a line heading shall not be deemed to be capable of
distinguishing;
(c) the registration of trade mark shall not give any exclusive right
to the use of a line heading.
(2) In respect of any textile goods, the registration of letters or
numerals, or any combination thereof, shall be subject to such
conditions and restrictions as may be prescribed.
81.
Stamping of piece gods, cotton yarn and thread.
81. Stamping of piece goods, cotton yarn and thread.-(1) Piece goods,
such as are ordinarily sold by length or by the piece, which have been
manufactured, bleached, dyed, printed or finished in premises which
are a factory, as defined in the Factories A t, 1948 (63 of 1948),
shall not be removed for sale from the last of such premises in which
they underwent any of the said processes without having conspicuously
stamped in international form of Indian numerals on each piece the
length thereof in standar yards, or in standard yards and a fraction
of such a yard, or in standard metres or in standard metres and a
fraction of such a metre, according to the real length of the piece,
and, except when the goods are sold from the factory for export from
India, without being conspicuously marked on each piece with the name
of the manufacturer or of the occupier of the premises in which the
piece was finally processed or of the wholesale purchaser in India of
the piece.
(2) Cotton yarn such as is ordinarily sold in bundles, and cotton
thread, namely, sewing, darning, crochet or handicraft thread, which
have been manufactured, bleached, dyed or finished in any premises not
sale from those premises unless, in accordance with the said rules in
the case of yarn- exempted by the rules made under section 82 sha l
not be removed for
(a) the bundles are conspicuously marked with an indication of the
weight of yarn in English or the metric system in each bundles; and
(b) the count of the yarn contained in the bundles and in the case of
thread each unit is conspicuously marked with the length or weight of
thread in the unit and in such other manner as may be required by the
said rules; and
(c) except where the goods are sold from the premises for export from
India, unless each bundle or unit is conspicuously marked with the
name of the manufacturer or of the wholesale purchaser in India of the
goods:
Provided that the rules made under section 82 shall exempt all
premises where the work is done by members of one family with or
without the assistance of not more than ten other employees, and all
premises controlled by a co-operative society where not m re than
twenty workers are employed in the premises.
82.
Determination of character of textile goods by sampling.
82. Determination of character of textile goods by sampling.-(1) For
the purposes of this Act, the Central Government may make rules-
(a) to provide, with respect to any goods which purport or are alleged
to be of uniform number, quantity, measure, guage or weight, for the
number of samples to be selected and tested and for the selection of
the samples;
(b) to provide, for the manner in which for the purposes of section 81
cotton yarn and cotton thread shall be marked with the particulars
required by that section, and for the exemption of certain premises
used for the manufacture, bleaching, dying or f nishing of cotton yarn
or cotton thread from the provisions of that section; and
(c) declaring what classes of goods are included in the expression
"piece goods such as are ordinarily sold by length or by the piece"
for the purpose of section 81, of this Act or clause (n) of
sub-section (2) of section 11 of the Customs Act, 1962.
(2) With respect to any goods for the selection and testing of samples
of which provision is not made in any rules for the time being in
force under sub-section (1), the court or officer of customs, as the
case may be, having occasion to ascertain the n mber, quantity,
measure, gauge or weight of the goods, shall, by order in writing,
determine the number of samples to be selected and tested and the
manner in which the samples are to be selected.
(3) The average of the results of the testing in pursuance of rules
under sub-section (1) or of an order under sub-section (2) shall be
prima facie evidence of the number, quantity, measure, gauge or
weight, as the case may be, of the goods.
(4) If a person having any claim to, or in relation to, any goods of
which samples have been selected and tested in pursuance of rules
under sub-section (1), or of an order under sub-section (2), desires
that any further samples of the goods be selected and tested, such
further samples shall, on his written application and on the payment
in advance by him to the court or officer of customs, as the case may
be, of such sums for defraying the cost of the further selection and
testing as the court or offic r may from time to time require, be
selected and tested to such extent as may be permitted by rules made
by the Central Government in this behalf or as, in the case of goods
with respect to which provision is not made in such rules, the court
reasonable, the samples being selected in the manner prescribed under
sub-section (1), or in sub-section (2), as the case may be. or
officer f customs may determine in the circumstances to be
(5) The average of the results of the testing referred to in
sub-section (3) and of the further testing under sub-section (4) shall
be conclusive proof of the number, quantity, measure, gauge or weight,
as the case may be, of the goods.
CHAP
APPELLATE BOARD
CHAPTER XI
APPELLATE BOARD
83.
Establishment of Appellate Board.
83. Establishment of Appellate Board.-The Central Government shall,
by notification in the Official Gazette, establish an Appellate Board
to be known as the Intellectual Property Appellate Board to exercise
the jurisdiction, powers and authority confer ed on it by or under
this Act.
84.
Composition of Appellate Board.
84. Composition of Appellate Board.-(1) The Appellate Board shall
consist of a Chairman, Vice-Chairman and such number of other Members,
as the Central Government may deem fit and, subject to the other
provisions of this Act, the jurisdiction, powers an authority of the
Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall consist
of one Judicial Member and one Technical Member and shall sit at such
place as the Central Government may, by notification in the Official
Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the
Chairman-
(a) may, in addition to discharging the functions of the Judicial
Member or Technical Member of the Bench to which he is appointed,
discharge the functions of the Judicial Member or, as the case may be,
the Technical Member, of any other Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairman, the Judicial Member or the
Technical Member appointed to one Bench to discharge also the
functions of the Judicial Member or the Technical Member, as the case
may be, of another Bench.
(4) Where any Benches are constituted, the Central Government may,
from time to time, by notification, make provisions as to the
distribution of the business of the Appellate Board amongst the
Benches and specify the matters which may be dealt with by e ch Bench.
(5) If any question arises as to whether any matter falls within the
purview of the business allocated to a Bench, the decison of the
Chairman shall be final.
Explanation.- For the removal of doubts, it is hereby declared that
the expression ''matter'' includes an appeal under section 91.
(6) If the Members of a Bench differ in opinion on any point, they
shall state the point or points on which they differ, and make a
reference to the Chairman who shall either hear the point or points
himself or refer the case for hearing on such point o points by one or
more of the other Members and such point or points shall be decided
according to the opinion of the majority of the Members who have heard
the case, including those who first heard it.
85.
Qualifications for appointment as Chairman, Vice-Chairman, or otherMembers.
85. Qualifications for appointment as Chairman, Vice-Chairman, or
other Members.-(1) A person shall not be qualified for appointment as
the Chairman unless he-
(a) is, or has been, a Judge of a High Court; or
(b) has, for at least two years, held the office of a Vice-Chairman.
(2) A person shall not be qualified for appointment as the
Vice-Chairman, unless he-
(a) has, for at least two years, held the office of a Judicial Member
or a Technical Member; or
(b) has been a member of the Indian Legal Service and has held a post
in Grade I of that service or any higher post for at least five years.
(3) A person shall not be qualified for appointment as a Judicial
Member, unless he-
(a) has been a member of the Indian Legal Service and has held the
post in Grade I of that Service for at least three years; or
(b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical
Member, unless he-
(a) has, for at least ten years, exercised functions of a tribunal
under this Act or under the Trade and Merchandise Marks Act, 1958, or
both, and has held a post not lower than the post of a Joint Registrar
for at least five years; or
(b) has, for at least ten years, been an advocate of a proven
specialised experience in trade mark law.
(5) Subject to the provisions of sub-section (6), the Chairman,
Vice-Chairman and every other Member shall be appointed by the
President of India.
(6) No appointment of a person as the Chairman shall be made except
after consultation with the Chief Justice of India.
86.
Term of office of Chairman, Vice-Chairman and other Members.
86. Term of office of Chairman, Vice-Chairman and other Members.-The
Chairman, Vice-Chairman or other Members shall hold office as such for
a term of five years from the date on which he enters upon his office
or until he attains,-
(a) in the case of Chairman and Vice-Chairman, the age of sixty-five
years; and
(b) in the case of a Member, the age of sixty-two years, whichever is
earlier
87.
Vice-Chairman or senior-most Member to act as Chairman or dischargehis
functions in certain circumstances.
87. Vice-Chairman or senior-most Member to act as Chairman or
discharge his functions in certain circumstances.-(1) In the event of
or any vacancy in the office of the Chairman by reasons of his death,
resignation or otherwise, the Vice-Chairman and in h s absence the
senior-most Member shall act as Chairman until the date on which a new
Chairman, appointed in accordance with the provisions of this Act to
fill such vacancy, enters upon his office.
(2) When the Chairman is unable to discharge his functions owing to
his absence, illness or any other cause, the Vice-Chairman and in his
absence the senior-most Member shall discharge the functions of the
Chairman until the date on which the Chairman r sumes his duty.
88.
Salaries, allowances and other terms and conditions of service ofChairman,
Vice-Chairman and other Members.
88. Salaries, allowances and other terms and conditions of service of
Chairman, Vice-Chairman and other Members.-(1) The salaries and
allowances payable to, and other terms and conditions of service
(including pension, gratuity and other retirement bene its), of the
Chairman, Vice-Chairman and other Members shall be such as may be
prescribed.
(2) Notwithstanding anything contained in sub-section (1), a person
who, immediately before the date of assuming office as the Chairman,
Vice-Chairman or other Member was in service of Government, shall be
deemed to have retired from service on the date n which he enters upon
office as the Chairman, Vice-Chairman or other Member.
89.
Resignation and removal.
89. Resignation and removal.-(1) The Chairman, Vice-Chairman or any
other Member may, by notice in writing under his hand addressed to the
President of India, resign his office:
Provided that the Chairman, Vice-Chairman or any other Member shall,
unless he is permitted by the President of India to relinquish his
office sooner, continue to hold office until the expiry of three
months from the date of receipt of such notice or un il a person duly
appointed as his successor enters upon his office or until the expiry
of his term of office, whichever is earlier.
(2) The Chairman, Vice-Chairman or any other Member shall not be
removed from his office except by an order made by the President of
India on the ground of proved misbehaviour or incapacity after an
inquiry made by a Judge of the Supreme Court in which he Chairman,
Vice-Chairman or other Member had been informed of the charges against
him and given a reasonable opportunity of being heard in respect of
those charges.
(3) The Central Government may, by rules, regulate the procedure for
the investigation of misbehaviour or incapacity of the Chairman,
Vice-Chairman or other Member referred to in sub-section (2).
90.
Staff of Appellate Board.
90. Staff of Appellate Board.-(1) The Central Government shall
determine the nature and categories of the officers and other
employees required to assist the Appellate Board in the discharge of
its functions and provide the Appellate Board with such off cers and
other employees as it may think fit.
(2) The salaries and allowances and conditions of service of the
officers and other employees of the Appellate Board shall be such as
may be prescribed.
(3) The officers and other employees of the Appellate Board shall
discharge their functions under the general superintendence of the
Chairman in the manner as may be prescribed.
91.
Appeals to Appellate Board.
91. Appeals to Appellate Board.-(1) Any person aggrieved by an order
or decision of the Registrar under this Act, or the rules made
thereunder may prefer an appeal to the Appellate Board within three
months from the date on which the order or decision s ught to be
appealed against is communicated to such person preferring the appeal.
(2) No appeal shall be admitted if it is preferred after the expiry of
the period specified under sub-section (1):
Provided that an appeal may be admitted after the expiry of the period
specified therefor, if the appellant satisfies the Appellate Board
that he had sufficient cause for not preferring the appeal within the
specified period.
(3) An appeal to the Appellate Board shall be in the prescribed form
and shall be verified in the prescribed manner and shall be
accompanied by a copy of the order or decision appealed against and by
such fees as may be prescribed.
92.
Procedure and powers of Appellate Board.
92. Procedure and powers of Appellate Board.-(1) The Appellate Board
shall not be bound by the procedure laid down in the Code of Civil
Procedure, 1908 (5 of 1908) but shall be guided by principles of
natural justice and subject to the provisions of thi Act and the rules
made thereunder, the Appellate Board shall have powers to regulate its
own procedure including the fixing of places and times of its hearing.
(2) The Appellate Board shall have, for the purpose of discharging its
functions under this Act, the same powers as are vested in a civil
court under the Code of Civil Procedure, 1908 (5 of 1908) while trying
a suit in respect of the following matters, amely:-
(a) receiving evidence;
(b) issuing commissions for examination of witnesses;
(c) requisitioning any public record; and
(d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed to be a
judicial proceeding within the meaning of sections 193 and 228, and
for the purpose of section 196, of the Indian Penal Code (45 of 1860),
and the Appellate Board shall be deemed to b a civil court for all the
purposes of section 195 and Chapter XXVI of the Code of Criminal
Procedure, 1973 (2 of 1974).
93.
Bar of jurisdiction of courts, etc.
93. Bar of jurisdiction of courts, etc.-No court or other authority
shall have or, be entitled to, exercise any jurisdiction, powers or
authority in relation to the matters referred to in sub-section (1) of
section 91.
94.
Bar to appear before Appellate Board.
94. Bar to appear before Appellate Board.-On ceasing to hold office,
the Chairman, Vice-Chairman or other Members shall not appear before
the Appellate Board or the Registrar.
95.
Conditions as to making of interim orders.
95. Conditions as to making of interim orders.-Notwithstanding
anything contained in any other provisions of this Act or in any other
law for the time being in force, no interim order (whether by way of
injunction or stay or any other manner) shall be m de on, or in any
proceedings relating to, an appeal unless-
(a) copies of such appeal and of all documents in support of the plea
for such interim order are furnished to the party against whom such
appeal is made or proposed to be made; and
(b) opportunity is given to such party to be heard in the matter.
96.
Power of Chairman to transfer cases from one Bench to another.
96. Power of Chairman to transfer cases from one Bench to another.-On
the application of any of the parties and after notice to the parties,
and after hearing such of them as he may desire to be heard, or on his
own motion without such notice, the Chair an may transfer any case
pending before one Bench, for disposal, to any other Bench.
97.
Procedure for application for rectification, etc., before AppellateBoard.
97. Procedure for application for rectification, etc., before
Appellate Board.-(1) An application for rectification of the register
made to the Appellate Board under section 57 shall be in such form as
may be prescribed.
(2) A certified copy of every order or judgment of the Appellate Board
relating to a registered trade mark under this Act shall be
communicated to the Registrar by the Board and the Registrar shall
amend the entries in, or rectify, the register in accordance with such
order. give effect to the order of the Board and shall, when s
directed,
98.
Appearance of Registration in legal proceedings.
98. Appearance of Registrar in legal proceedings.-(1) The Registrar
shall have the right to appear and be heard-
(a) in any legal proceedings before the Appellate Board in which the
relief sought includes alteration or rectification of the register or
in which any question relating to the practice of the Trade Marks
Registry is raised;
(b) in any appeal to the Board from an order of the Registrar on an
application for registration of a trade mark-
(i) which is not opposed, and the application is either refused by the
Registrar or is accepted by him subject to any amendments,
modifications, conditions or limitations, or
(ii) which has been opposed and the Registrar considers that his
appearance is necessary in the public interest, and the Registrar
shall appear in any case if so directed by the Board.
(2) Unless the Appellate Board otherwise directs, the Registrar may,
in lieu of appearing, submit a statement in writing signed by him,
giving such particulars as he thinks proper of the proceedings before
him relating to the matter in issue or of the g ounds of any decision
given by him affecting it, or of the practice of the Trade Marks
Registry in like cases, or of other matters relevant to the issues and
within his knowledge as Registrar, and such statement shall be
evidence in the proceeding.
99.
Costs of Registrar in proceedings before Appellate Board.
99. Costs of Registrar in proceedings before Appellate Board.-In all
proceedings under this Act before the Appellate Board the costs of the
Registrar shall be in the discretion of the Board, but the Registrar
shall not be ordered to pay the costs of any of the parties.
100.
Transfer of pending proceedings to Appellate Board.
100. Transfer of pending proceedings to Appellate Board.-All cases of
appeals against any order or decision of the Registrar and all cases
pertaining to rectification of register, pending before any High
Court, shall be transferred to the Appellate Boa d from the date as
notified by the Central Government in the Official Gazette and the
Appellate Board may proceed with the matter either de novo or from the
stage it was so transferred.
CHAP
OFFENCES, PENALTIES AND PROCEDURE
CHAPTER XII
OFFENCES, PENALTIES AND PROCEDURE
101.
Meaning of applying trade marks and trade descriptions.
101. Meaning of applying trade marks and trade descriptions.-(1) A
person shall be deemed to apply a trade mark or mark or trade
description to goods or services who-
(a) applies it to the goods themselves or uses it in relation to
services; or
(b) applies it to any package in or with which the goods are sold, or
exposed for sale, or had in possession for sale or for any purpose of
trade or manufacture; or
(c) places, encloses or annexes any goods which are sold, or exposed
for sale, or had in possession for sale or for any purpose of trade or
manufacture, in or with any package or other thing to which a trade
mark or mark or trade description has been ap lied; or
(d) uses a trade mark or mark or trade description in any manner
reasonably likely to lead to the belief that the goods or services in
connection with which it is used are designated or described by that
trade mark or mark or trade description; or
(e) in relation to the goods or services uses a trade mark or trade
description in any sign, advertisement, invoice, catalogue, business
letter, business paper, price list or other commercial document and
goods are delivered or services are rendered to person in pursuance of
a request or order made by reference to the trade mark or trade
description as so used.
(2) A trade mark or mark or trade description shall be deemed to be
applied to goods whether it is woven in, impressed on, or otherwise
worked into, or annexed or affixed to, the goods or to any package or
other thing.
102.
Falsifyingg and falsely applying trade marks.
102. Falsifying and falsely applying trade marks.-(1) A person shall
be deemed to falsify a trade mark who, either,-
(a) without the assent of the proprietor of the trade mark makes that
trade mark or a deceptively similar mark; or
(b) falsifies any genuine trade mark, whether by alteration, addition,
effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods or services a
trade mark who, without the assent of the proprietor of the trade
mark,-
(a) applies such trade mark or a deceptively similar mark to goods or
services or any package containing goods;
(b) uses any package bearing a mark which is identical with or
deceptively similar to the trade mark of such proprietor, for the
purpose of packing, filling or wrapping therein any goods other than
the genuine goods of the proprietor of the trade mark.
(3) Any trade mark falsified as mentioned in sub-section (1) or
falsely applied as mentioned in sub-section (2), is in this Act
referred to as a false trade mark.
(4) In any prosecution for falsifying a trade mark or falsely applying
a trade mark to goods or services, the burden of proving the assent of
the proprietor shall lie on the accused.
103.
Penalty for applying false trade marks, trade descriptions, etc.
103. Penalty for applying false trade marks, trade descriptions,
etc.-Any person who-
(a) falsifies any trade mark; or
(b) falsely applies to goods or services any trade mark; or
(c) makes, disposes of, or has in his possession, any die, block,
machine, plate or other instrument for the purpose of falsifying or of
being used for falsifying, a trade mark; or
(d) applies any false trade description to goods or services; or
(e) applies to any goods to which an indication of the country or
place in which they were made or produced or the name and address of
the manufacturer or person for whom the goods are manufactured is
required to be applied under section 139, a false in ication of such
country, place, name or address; or
(f) tampers with, alters or effaces an indication of origin which has
been applied to any goods to which it is required to be applied under
section 139; or
(g) causes any of the things above-mentioned in this section to be
done, shall, unless he proves that he acted, without intent to
defraud, be punishable with imprisonment for a term which shall not be
less than six months but which may extend to three years and with fine
which shall not be less than fifty thousand rupees but hich may extend
to two lakh rupees:
Provided that the court may, for adequate and special reasons to be
mentioned in the judgment, impose a sentence of imprisonment for a
term of less than six months or a fine of less than fifty thousand
rupees.
104.
Penalty for selling goods or providing services to which false trademark or
false trade description is applied.
104. Penalty for selling goods or providing services to which false
trade mark or false trade description is applied.-Any person who
sells, lets for hire or exposes for sale, or hires or has in his
possession for sale, goods or things, or provides or hi es services,
to which any false trade mark or false trade description is applied or
which, being required under section 139 to have applied to them an
indication of the country or place in which they were made or produced
or the name and address of the m nufacturer, or person for whom the
goods are manufactured or services provided, as the case may be, are
without the indications so required, shall, unless he proves,-
(a) that, having taken all reasonable precautions against committing
an offence against this section, he had at the time of commission of
the alleged offence no reason to suspect the genuineness of the trade
mark or trade description or that any offence had been committed in
respect of the goods or services; or
(b) that, on demand by or on behalf of the prosecutor, he gave all the
information in his power with respect to the person from whom he
obtained such goods or things or services; or
(c) that otherwise he had acted innocently, be punishable with
imprisonment for a term which shall not be less than six months but
which may extend to three years and with fine which shall not be less
than fifty thousand rupees but which may extend to two lakh rupees:
Provided that the court may, for adequate and special reasons to be
mentioned in the judgment, impose a sentence of imprisonment for a
term of less than six months or a fine of less than fifty thousand
rupees.
105.
Enhanced penalty on second or subsequent conviction.
105. Enhanced penalty on second or subsequent conviction.-Whoever
having already been convicted of an offence under section 103 or
section 104 is again convicted of any such offence shall be punishable
for the second and for every subsequent offence, wi h imprisonment for
a term which shall not be less than one year but which may extend to
three years and with fine which shall not be less than one lakh rupees
but which may extend to two lakh rupees:
Provided that the court may, for adequate and special reason to be
mentioned in the judgment, impose a sentence of imprisonment for a
term of less than one year or a fine of less than one lakh rupees:
Provided further that for the purposes of this section, no cognizance
shall be taken of any conviction made before the commencement of this
Act.
106.
Penalty for removing piece goods, etc. contrary to section 81.
106. Penalty for removing piece goods, etc., contrary to section
81.-If any person removes or attempts to remove or causes or attempts
to cause to be removed for sale from any premises referred to in
section 81 or sells or exposes for sale or has in his possession for
sale or for any purpose of trade or manufacture piece goods or cotton
yarn or cotton thread which is not marked as required by that section,
every such piece and every such bundle of yarn and all such thread and
everything used for the pac ing thereof shall be forfeited to
Government and such person shall be punishable with fine which may
extend to one thousand rupees.
107.
Penalty for falsely representing a trade mark as registered.
107. Penalty for falsely representing a trade mark as registered.-(1)
No person shall make any representation-
(a) with respect to a mark, not being a registered trade mark, to the
effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark, not being a
part separately registered as a trade mark, to the effect that it is
separately registered as a trade mark; or
(c) to the effect that a registered trade mark is registered in
respect of any goods or services in respect of which it is not in fact
registered; or
(d) to the effect that registration of a trade mark gives an exclusive
right to the use thereof in any circumstances in which, having regard
to limitation entered on the register, the registration does not in
fact give that right.
(2) If any person contravenes any of the provisions of sub-section
(1), he shall be punishable with imprisonment for a term which may
extend to three years, or with fine, or with both.
(3) For the purposes of this section, the use in India in relation to
a trade mark of the word "registered'', or of any other expression,
symbol or sign referring whether expressly or impliedly to
registration, shall be deemed to import a reference to re istration in
the register, except-
(a) where that word or other expression, symbol or sign is used in
direct association with other words delineated in characters at least
as large as those in which that word or other expression, symbol or
sign is delineated and indicating that the refere ce is to
registration as a trade mark under the law of a country outside India
being a country under the law of which the registration referred to is
in fact in force; or
(b) where that other expression, symbol or sign is of itself such as
to indicate that the reference is to such registration as is mentioned
in clause (a); or
(c) where that word is used in relation to a mark registered as a
trade mark under the law of a country outside India and in relation
solely to goods to be exported to that country or in relation to
services for use in that country.
108.
Penalty for improperly describing a place of business as connectedwith the
Trade Marks Office.
108. Penalty for improperly describing a place of business as
connected with the Trade Marks Office.-If any person uses on his place
of business, or on any document issued by him, or otherwise, words
which would reasonably lead to the belief that his pla e of business
is, or is officially connected with, the Trade Marks Office, he shall
be punishable with imprisonment for a term which may extend to two
years, or with fine, or with both.
109.
Penalty for falsification of entries in the register.
109. Penalty for falsification of entries in the register.-If any
person makes, or causes to be made, a false entry in the register, or
a writing falsely purporting to be a copy of an entry in the register,
or produces or tenders or causes to be produced or tendered, in
evidence any such writing, knowing the entry or writing to be false,
he shall be punishable with imprisonment for a term which may extend
to two years, or with fine, or with both.
110.
No offence in certain cases.
110. No offence in certain cases.-The provisions of sections 102,
103, 104 and 105 shall, in relation to a registered trade mark or
proprietor of such mark, be subject to the rights created or
recognised by this Act and no act or omission shall be deemed to be an
offence under the aforesaid sections if,-
(a) the alleged offence relates to a registered trade mark and the act
or omission is permitted under this Act; and
(b) the alleged offence relates to a registered or an unregistered
trade mark and the act or omission is permitted under any other law
for the time being in force.
111.
Forfeiture of goods.
111. Forfeiture of goods.-(1) Where a person is convicted of an
offence under section 103 or section 104 or section 105 or is
acquitted of an offence under section 103 or section 104 on proof that
he acted without intent to defraud, or under section 104 n proof of
the matters specified in clause (a), clause (b) or clause (c) of that
section, the court convicting or acquitting him may direct the
forfeiture to Government of all goods and things by means of, or in
relation to, which the offence has been co mitted, or but for such
proof as aforesaid would have been committed.
(2) When a forfeiture is directed on a conviction and an appeal lies
against the conviction, an appeal shall lie against the forfeiture
also.
(3) When a forfeiture is directed on acquittal and the goods or things
to which the direction relates are of value exceeding fifty rupees, an
appeal against the forfeiture may be preferred, within thirty days
from the date of the direction, to the court o which in appealable
cases appeals lie from sentences of the court which directed the
forfeiture.
(4) When a forfeiture is directed on a conviction, the court, before
whom the person is convicted, may order any forfeited articles to be
destroyed or otherwise disposed of as the court thinks fit.
112.
Exemption of certain persons employed in ordinary course of business.
112. Exemption of certain persons employed in ordinary course of
business.-Where a person accused of an offence under section 103
proves-
(a) that in the ordinary course of his business he is employed on
behalf of other persons to apply trade marks or trade descriptions, or
as the case may be, to make dies, blocks, machines, plates, or other
instruments for making, or being used in making trade marks; and
(b) that in the case which is the subject of the charge he was so
employed, and was not interested in the goods or other thing by way of
profit or commission dependent on the sale of such goods or providing
of services, as the case may be; and
(c) that, having taken all reasonable precautions against committing
the offence charged, he had, at the time of the commission of the
alleged offence, no reason to suspect the genuineness of the trade
mark or trade description; and
(d) that, on demand made by or on behalf of the prosecutor, he gave
all the information in his power with respect to the persons on whose
behalf the trade mark or trade description was applied, he shall be
acquitted.
113.
Procedure where invalidity of registration is pleaded by the accused.
113. Procedure where invalidity of registration is pleaded by the
accused.-(1) Where the offence charged under section 103 or section
104 or section 105 is in relation to a registered trade mark and the
following procedure shall be followed:- accused pleads that the
registration of the trade m rk is invalid, the
(a) If the court is satisfied that such defence is prima facie
tenable, it shall not proceed with the charge but shall adjourn the
proceeding for three months from the date on which the plea of the
accused is recorded to enable the accused to file an ap lication
before the Appellate Board under this Act, for the rectification of
the register on the ground that the registration is invalid.
(b) If the accused proves to the court that he has made such
application within the time so limited or within such further time as
the court may for sufficient cause allow, the further proceedings in
the prosecution shall stand stayed till the disposal f such
application for rectification.
(c) If within a period of three months or within such extended time as
may be allowed by the court the accused fails to apply to the
Appellate Board for rectification of the register, the court shall
proceed with the case as if the registration were val d.
(2) Where before the institution of a complaint of an offence referred
to in sub- section (1), any application for the rectification of the
register concerning the trade mark in question on the ground of
invalidity of the registration thereof has already been properly made
to and is pending before the tribunal, the court shall stay the
further proceedings in the prosecution pending the disposal of the
application aforesaid and shall determine the charge against the
accused in conformity with the result o the application for
rectification in so far as the complainant relies upon the
registration of his mark.
114.
Offences by companies.
114. Offences by companies.-(1) If the person committing an offence
under this Act is a company, the company as well as every person in
charge of, and responsible to, the company for the conduct of its
business at the time of the commission of the offenc shall be deemed
to be guilty of the offence and shall be liable to be proceeded
against and punished accordingly: Provided that nothing contained in
this sub-section shall render any such person liable to any punishment
if he proves that the offence was committed without his knowledge or
that he exercised all due diligence to prevent the commission of such
offence.
(2) Notwithstanding anything contained in sub-section (1), where an
offence under this Act has been committed by a company and it is
proved that the offence has been committed with the consent or
connivance of, or that the commission of the offence is at ributable
to any neglect on the part of, any director, manager, secretary or
other officer of the company, such director, manager, secretary or
other officer shall also be deemed to be guilty of that offence and
shall be liable to be proceeded against an punished accordingly.
Explanation.-For the purposes of this section-
(a) "company'' means any body corporate and includes a firm or other
association of individuals; and
(b) "director'', in relation to a firm, means a partner in the firm.
115.
Cognizance of certain offences and the powers of police officer forsearch
and seizure.
115. Cognizance of certain offences and the powers of police officer
for search and seizure.-(1) No court shall take cognizance of an
offence under section 107 or section 108 or section 109 except on
complaint in writing made by the Registrar or any off cer authorised
by him in writing:
Provided that in relation to clause (c) of sub-section (1) of section
107, a court shall take cognizance of an offence on the basis of a
certificate issued by the Registrar to the effect that a registered
trade mark has been represented as registered i respect of any goods
or services in respect of which it is not in fact registered.
(2) No court inferior to that of a Metropolitan Magistrate or Judicial
Magistrate of the first class shall try an offence under this Act.
(3) The offences under section 103 or section 104 or section 105 shall
be cognizable.
(4) Any police officer not below the rank of deputy superintendent of
police or equivalent, may, if he is satisfied that any of the offences
referred to in sub-section (3) has been, is being, or is likely to be,
committed, search and seize without warra t the goods, die, block,
machine, plate, other instruments or things involved in committing the
offence, wherever found, and all the articles so seized shall, as soon
as practicable, be produced before a Judicial Magistrate of the first
class or Metropol tan Magistrate, as the case may be:
Provided that the police officer, before making any search and
seizure, shall obtain the opinion of the Registrar on facts involved
in the offence relating to trade mark and shall abide by the opinion
so obtained.
(5) Any person having an interest in any article seized under
sub-section (4), may, within fifteen days of such seizure, make an
application to the Judicial Magistrate of the first class or
Metropolitan Magistrate, as the case may be, for such article b ing
restored to him and the Magistrate, after hearing the applicant and
the prosecution, shall make such order on the application as he may
deem fit.
116.
Evidence of origin of goods imported by sea.
116. Evidence of origin of goods imported by sea.-In the case of
goods brought into India by sea, evidence of the port of shipment
shall, in a prosecution for an offence under this Act or under clause
(b) of section 112 of the Customs Act, 1962 (52 of 1 62), relating to
confiscation of goods under clause (d) of section 111 and notified by
the Central Government under clause (n) of sub-section (2) of section
11 of the said Act for the protection of trade marks relating to
import of goods, be prima faci evidence of the place or country in
which the goods are made or produced.
117.
Costs of defence or prosecution.
117. Costs of defence or prosecution.-In any prosecution under this
Act, the court may order such costs to be paid by the accused to the
complainant, or by the complainant to the accused, as the court deems
reasonable having regard to all the circumstan es of the case and the
conduct of the parties and the costs so awarded shall be recoverable
as if they were a fine.
118.
Limitation of prosecution.
118. Limitation of prosecution.-No prosecution for an offence under
this Act or under clause (b) of section 112 of the Customs Act, 1962,
relating to confiscation of goods under clause (d) of section 111 and
notified by the Central Government under clau e (n) of sub-section (2)
of section 11 of the said Act for the protection of trade marks,
relating to import of goods shall be commenced after expiration of
three years next after the commission of the offence charged, or two
years after the discovery th reof by the prosecutor, whichever
expiration first-happens.
119.
Information as to commission of offence.
119. Information as to commission of offence.-An officer of the
Government whose duty it is to take part in the enforcement of the
provisions of this Chapter shall not be compelled in any court to say
whence he got any information as to the commission o any offence
against this Act.
120.
Punishment of abetment in India of acts done out of India.
120. Punishment of abetment in India of acts done out of India.-If
any person, being within India, abets the commission, without India,
of any act which, if committed in India, would, under this Act, be an
offence, he may be tried for such abetment in a y place in India in
which he may be found, and be punished therefor with the punishment to
which he would be liable if he had himself committed in that place the
act which he abetted.
121.
Instructions of Central Government as to permissible variation to beobserved
by criminal courts.
121. Instructions of Central Government as to permissible variation
to be observed by criminal courts.-The Central Government may, by
notification in the Official Gazette, issue instructions for the
limits of variation, as regards number, quantity, meas re, gauge or
weight which are to be recognised by criminal courts as permissible in
the case of any goods.
CHAP
MISCELLANEOUS
CHAPTER XIII
MISCELLANEOUS
122.
Protection of action taken in good faith.
122. Protection of action taken in good faith.-No suit or other legal
prceedings shall lie against any person in respect of anything which
is in good faith done or intended to be done in pursuance of this Act.
123.
Certain persons to be public servants.
123. Certain persons to be public servants.-Every person appointed
under this Act and every Member of the Appellate Board shall be deemed
to be a public servant within the meaning of section 21 of the Indian
Penal Code.
124.
Stay of proceedings where the validity of registration of the trademark is
questioned, etc.
124. Stay of proceedings where the validity of registration of the
trade mark is questioned, etc.-(1) Where in any suit for infringement
of a trade mark-
(a) the defendant pleads that registration of the plaintiff's trade
mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2)
of section 30 and the plantiff pleads the invalidity of registration
of the defendant's trade mark, the court trying the suit (hereinafter
referred to as the court), shall,-
(i) if any proceedings for rectification of the register in relation
to the plaintiff's or defendant's trade mark are pending before the
Registrar or the Appellate Board, stay the suit pending the final
disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied
that the plea regarding the invalidity of the registration of the
plantiff's or defendant's trade mark is prima facie tenable, raise an
issue regarding the same and adjourn the case for a period of three
months from the date of the framing of the issue in order to enable
the party concerned to apply to the Appellate Board for rectification
of the register.
(2) If the party concerned proves to the court that he has made any
such application as is referred to in clause (b) (ii) of sub-section
(1) within the time specified therein or within such extended time as
the court may for sufficient cause allow, the rial of the suit shall
stand stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been made within the time
so specified or within such extended time as the court may allow, the
issue as to the validity of the registration of the trade mark
concerned shall be deemed to have been abandoned nd the court shall
proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to
in sub-section (1) or sub-section (2) shall be binding upon the
parties and the court shall dispose of the suit conformably to such
order in so far as it relates to the issue as to t e validity of the
registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory
order (including any order granting an injunction, directing account
to be kept, appointing a receiver or attaching any property), during
the period of the stay of the suit.
125.
Application for rectification of register to be made to AppellateBoard in
certain cases.
125. Application for rectification of register to be made to
Appellate Board in certain cases.-(1) Where in a suit for infringement
of a registered trade mark the validity of the registration of the
plaintiff's trade mark is questioned by the defendant r where in any
such suit the defendant raises a defence under clause (e) of
sub-section (2) of section 30 and the plaintiff questions the validity
of the registration of the defendant's trade mark, the issue as to the
validity of the registration of the rade mark concerned shall be
determined only on an application for the rectification of the
register and, notwithstanding anything contained in section 47 or
section 57, such application shall be made to the Appellate Board and
not to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application
for rectification of the register is made to the Registrar under
section 47 or section 57, the Registrar may, if he thinks fit, refer
the application at any stage of the proceedings o the Appellate Board.
126.
Implied warranty on sale of marked goods.
126. Implied warranty on sale of marked goods.-Where a mark or a
trade mark or trade description has been applied to the goods on sale
or in the contract for sale of any goods or in relation to any
service, the seller shall be deemed to warrant that the mark is a
genuine mark and not falsely applied, or that the trade description is
not a false trade description within the meaning of this Act unless
the contrary is expressed in writing signed by or on behalf of the
seller and delivered at the time of th sale of goods or providing of
services on contract to and accepted by the buyer.
127.
Powers of Registrar.
127. Powers of Registrar.-In all proceedings under this Act before
the Registrar,-
(a) the Registrar shall have all the powers of a civil court for the
purposes of receiving evidence, administering oaths, enforcing the
attendance of witnesses, compelling the discovery and production of
documents and issuing commissions for the examinat on of witnesses;
(b) the Registrar may, subject to any rules made in this behalf under
section 157, make such orders as to costs as he considers reasonable,
and any such order shall be executable as a decree of a civil court:
Provided that the Registrar shall have no power to award costs to or
against any party on an appeal to him against a refusal of the
proprietor of a certification trade mark to certify goods or provision
of services or to authorise the use of the mark;
(c) the Registrar may, on an application made in the prescribed
manner, review his own decision.
128.
Exercise of discretionary power by Registrar.
128. Exercise of discretionary power by Registrar.-Subject to the
provisions of section 131, the Registrar shall not exercise any
discretionary or other power vested in him by this Act or the rules
made thereunder adversely to a person applying for the e ercise of
that power without (if so required by that person within the
prescribed time) giving to the person an opportunity of being heard.
129.
Evidence before Registrar.
129. Evidence before Registrar.-In any proceeding under this Act
before the Registrar, evidence shall be given by affidavit:
Provided that the Registrar may, if he thinks fit, take oral evidence
in lieu of, or in addition to, such evidence by affidavit.
130.
Death of party to a proceeding.
130. Death of party to a proceeding.-If a person who is a party to a
proceeding under this Act (not being a proceeding before the Appellate
Board or a court) dies pending the proceeding, the Registrar may, on
request, and on proof to his satisfaction of he transmission of the
interest of the deceased person, substitute in the proceeding his
successor in interest in his place, or, if the Registrar is of opinion
that the interest of the deceased person is sufficiently represented
by the surviving parties, permit the proceeding to continue without
the substitution of his successor in interest.
131.
Extension of time.
131. Extension of time.-(1) If the Registrar is satisfied, on
application made to him in the prescribed manner and accompanied by
the prescribed fee, that there is sufficient cause for extending the
time for doing any act (not being a time expressly prov ded in this
Act), whether the time so specified has expired or not, he may,
subject to such conditions as he may think fit to impose, extend the
time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the
Registrar to hear the parties before disposing of an application for
extension of time, and no appeal shall lie from any order of the
Registrar under this section.
132.
Abandonment.
132. Abandonment.-Where, in the opinion of the Registrar, an
applicant is in default in the prosecution of an application filed
under this Act or any Act relating to trade marks in force prior to
the commencement of this Act, the Registrar may, by notice require the
applicant to remedy the default within a time specified and after
giving him, if so, desired, an opportunity of being heard, treat the
application as abandoned, unless the default is remedied within the
time specified in the notice.
133.
Preliminary advice by the Registrar as to distinctiveness.
133. Preliminary advice by the Registrar as to distinctiveness.-(1)
The Registrar may, on application made to him in the prescribed manner
by any person who proposes to apply for the registration of a trade
mark, give advice as to whether the trade mark ppears to him prima
facie to be distinctive.
(2) If, on an application for the registration of a trade mark as to
which the Registrar has given advice as aforesaid in the affirmative
made within three months after the advice was given, the Registrar,
after further investigation or consideration, gi es notice, to the
applicant of objection on the ground that the trade mark is not
distinctive, the applicant shall be entitled, on giving notice of
withdrawal of the application within the prescribed period, to have
repaid to him any fee paid on the fili g of the application.
134.
Suit for infringement, etc., to be instituted before District Court.
134. Suit for infringement, etc., to be instituted before District
Court.-(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any
trade mark which is identical with or deceptively similar to the
plaintiff's trade mark, whether registered or unregistered, shall be
instituted in any court inferior to a District Court having
jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a
"District Court having jurisdiction'' shall, notwithstanding anything
contained in the Code of Civil Procedure, 1908 or any other law for
the time being in force, include a District Court w thin the local
limits of whose jurisdiction, at the time of the institution of the
suit or other proceeding, the person instituting the suit or
proceeding, or, where there are more than one such persons any of
them, actually and voluntarily resides or ca ries on business or
personally works for gain.
Explanation.-For the purposes of sub-section (2), "person'' includes
the registered proprietor and the registered user.
135.
Relief in suits for infringement or for passing off.
135. Relief in suits for infringement or for passing off.-(1) The
relief which a court may grant in any suit for infringement or for
passing off referred to in section 134 includes injunction (subject to
such terms, if any, as the court thinks fit) and a the option of the
plaintiff, either damages or an account of profits, together with or
without any order for the delivery-up of the infringing labels and
marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may include an ex
parte injunction or any interlocutory order for any of the following
matters, namely:-
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which
are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his
assets in a manner which may adversely affect plaintiff's ability to
recover damages, costs or other pecuniary remedies which may be
finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the court
shall not grant relief by way of damages (other than nominal damages)
or on account of profits in any case-
(a) where in a suit for infringement of a trade mark, the infringement
complained of is in relation to a certification trade mark or
collective mark; or
(b) where in a suit for infringement the defendant satisfies the
court-
(i) that at the time he commenced to use the trade mark complained of
in the suit, he was unaware and had no reasonable ground for believing
that the trade mark of the plaintiff was on the register or that the
plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the
plaintiff's right in the trade mark, he forthwith ceased to use the
trade mark in relation to goods or services in respect of which it was
registered; or
(c) where in a suit for passing off, the defendant satisfies the
court-
(i) that at the time he commenced to use the trade mark complained of
in the suit he was unaware and had no reasonable ground for believing
that the trade mark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the
plaintiff's trade mark he forthwith ceased to use the trade mark
complained of.
136.
Registered user to be impleaded in certain proceedings.
136. Registered user to be impleaded in certain proceedings.-(1) In
every proceeding under Chapter VII or under section 91, every
registered user of a trade mark using by way of permitted use, who is
not himself an applicant in respect of any proceeding nder that
Chapter or section, shall be made a party to the proceeding.
(2) Notwithstanding anything contained in any other law, a registered
user so made a party to the proceeding shall not be liable for any
costs unless he enters an appearance and takes part in the proceeding.
137.
Evidence of entries in register, etc., and things done by theregistrar.
137. Evidence of entries in register, etc., and things done by the
registrar.-(1) A copy of any entry in the register or of any document
referred to in sub-section (1) of section 148 purporting to be
certified by the Registrar and sealed with the seal of the Trade Marks
Registry shall be admitted in evidence in all courts and in all
proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as
to any entry, matter or thing that he is authorised by this Act or the
rules to make or do shall be prima facie evidence of the entry having
been made, and of the contents thereof, or f the matter or things
having been done or not done.
138.
Registrar and other officers, not compellable to produce register,etc.
138. Registrar and other officers, not compellable to produce
register, etc.-The Registrar or any officer of the Trade Marks
Registry shall not, in any legal proceedings to which he is not a
party, be compellable to produce the register or any other docu ent in
his custody, the contents of which can be proved by the production of
a certified copy issued under this Act or to appear as a witness to
prove the matters therein recorded unless by order of the court made
for special cause.
139.
Power to require goods to show indication of origin.
139. Power to require goods to show indication of origin.-(1) The
Central Government may, by notification in the Official Gazette,
require that goods of any class specified in the notification which
are made or produced beyond the limits of India and imp rted into
India, or, which are made or produced within the limits of India,
shall, from such date as may be appointed by the notification not
being less than three months from its issue, have applied to them an
indication of the country or place in which they were made or
produced, or of the name and address of the manufacturer or the person
for whom the goods were manufactured.
(2) The notification may specify the manner in which such indication
shall be applied that is to say, whether to goods themselves or in any
other manner, and the times or occasions on which the presence of the
indication shall be necessary, that is to sa , whether on importation
only, or also at the time of sale, whether by wholesale or retail or
both.
(3) No notification under this section shall be issued, unless
application is made for its issue by persons or associations
substantially representing the interests of dealers in, or
manufacturers, producers, or users of, the goods concerned, or unless
t e Central Government is otherwise convinced that it is necessary in
the public interest to issue the notification, with or without such
inquiry, as the Central Government may consider necessary.
(4) The provisions of section 23 of the General Clauses Act, 1897
shall apply to the issue of a notification under this section as they
apply to the making of a rule or bye-law the making of which is
subject to the condition of previous publication.
(5) A notification under this section shall not apply to goods made or
produced beyond the limits of India and imported into India, if in
respect of those goods, the Commissioner of Customs is satisfied at
the time of importation that they are intended f r exportation whether
after transhipment in or transit through India or otherwise.
140.
Power to require information of imported goods bearing false trademarks.
140. Power to require information of imported goods bearing false
trade marks.-(1) The proprietor or a licensee of a registered trade
mark may give notice in writing to the Collector of Customs to
prohibit the importation of any goods if the import of th said goods
constitute infringement under clause (c) of sub-section (6) of section
29.
(2) Where goods, which are prohibited to be imported into India by
notification of the Central Government under clause (n) of sub-section
(2) of section 11 of the Customs Act, 1962, for the protection of
trade marks, and are liable to confiscation on imp rtation under that
Act, are imported into India, the Commissioner of Customs if, upon
representation made to him, he has reason to believe that the trade
mark complained of is used as a false trade mark, may require the
importer of the goods, or his agen , to produce any documents in his
possession relating to the goods and to furnish information as to the
name and address of the person by whom the goods were consigned to
India and the name and address of the person to whom the goods were
sent in India.
(3) The importer or his agent shall, within fourteen da, within fourteen days, comply with
the requirement as aforesaid, and if he fails to do so, he shall be
punishable with fine which may extend to five hundred rupees.
(4) Any information obtained from the importer of the goods or his
agent under this section may be communicated by the Commissioner of
Customs to the registered proprietor or registered user of the trade
mark which is alleged to have been used as a fals trade mark.
141.
Certificate of validity.
141. Certificate of validity.-If in any legal proceeding for
rectification of the register before the Appellate Board a decision is
on contest given in favour of the registered proprietor of the trade
mark on the issue as to the validity of the registrat on of the trade
mark, the Appellate Board may grant a certificate to that effect, and
if such a certificate is granted, then, in any subsequent legal
proceeding in which the said validity comes into question the said
proprietor on obtaining a final order or judgment in his favour
affirming validity of the registration of the trade mark shall, unless
the said final order or judgment for sufficient reason directs
otherwise, be entitled to his full cost charges and expenses as
between legal practitioner and client.
142.
Groundless threats of legal proceedings.
142. Groundless threats of legal proceedings.-(1) Where a person, by
means of circulars, advertisements or otherwise, threatens a person
with an action or proceeding for infringement of a trade mark which is
registered, or alleged by the first-mentioned erson to be registered,
or with some other like proceeding, a person aggrieved may, whether
the person making the threats is or is not the registered proprietor
or the registered user of the trade mark, bring a suit against the
first-mentioned person and may obtain a declaration to the effect that
the threats are unjustifiable, and an injunction against the
continuance of the threats and may recover such damages (if any) as he
has sustained, unless the first-mentioned person satisfies the court
that the rade mark is registered and that the acts in respect of which
the proceedings were threatened, constitute, or, if done, would
constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered
proprietor of the trade mark, or a registered user acting in pursuance
of sub-section (1) of section 52 with due diligence commences and
the trade mark. prosecutes an action against the person threatene for
infringement of
(3) Nothing in this section shall render a legal practitioner or a
registered trade marks agent liable to an action under this section in
respect of an act done by him in his professional capacity on behalf
of a client.
(4) A suit under sub-section (1) shall not be instituted in any court
inferior to a District Court.
143.
Address for service.
143. Address for service.-An address for service stated in an
application or notice of opposition shall for the purposes of the
application or notice of opposition be deemed to be the address of the
applicant or opponent, as the case may be, and all docu ents in
relation to the application or notice of opposition may be served by
leaving them at or sending them by post to the address for service of
the applicant or opponent, as the case may be.
144.
Trade usages, etc., to be taken into conseration.
144. Trade usages, etc., to be taken into conseration.-In any
proceeding relating to a trade mark, the tribunal shall admit evidence
of the usages of the trade concerned and of any relevant trade mark or
trade name or get up legitimately used by other pe sons.
145.
Agents.
145. Agents.-Where, by or under this Act, any act, other than the
making of an affidavit, is required to be done before the Registrar by
any person, the act may, subject to the rules made in this behalf, be
done instead of by that person himself, by a pe son duly authorised in
the prescribed manner, who is-
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a trade marks
agent, or
(c) a person in the sole and regular employment of the principal.
146.
Marks registered by an agent or representative without authority.
146. Marks registered by an agent or representative without
authority.-If an agent or a representative of the proprietor of a
registered trade mark, without authority uses or attempts to register
or registers the mark in his own name, the proprietor shal be entitled
to oppose the registration applied for or secure its cancellation or
rectification of the register so as to bring him as the registered
proprietor of the said mark by assignment in his favour:
Provided that such action shall be taken within three years of the
registered proprietor of the trade mark becoming aware of the conduct
of the agent or representative.
147.
Indexes.
147. Indexes.-There shall be kept under the direction and supervision
of the Registrar-
(a) an index of registered trade marks;
(b) an index of trade marks in respect of which applications for
registration are pending;
(c) an index of the names of the proprietors of registered trade
marks; and
(d) an index of the names of registered users.
148.
Documents open to public inspection.
148. Documents open to public inspection.-(1) Save as otherwise
provided in sub-section (4) of section 49,-
(a) the register and any document upon which any entry in the register
is based;
(b) every notice of opposition to the registration of a trade mark
application for rectification before the Registrar, counter-statement
thereto, and any affidavit or document filed by the parties in any
proceedings before the Registrar;
(c) all regulations deposited under section 63 or section 74, and all
applications under section 66 or section 77 for varying such
regulations;
(d) the indexes mentioned in section 147; and
(e) such other documents as the Central Government may, by
notification in the Official Gazette, specify, shall, subject to such
conditions as may be prescribed, be open to public inspection at the
Trade Marks Registry:
Provided that when such register is maintained wholly or partly on
computer, the inspection of such register under this section shall be
made by inspecting the computer print- out of the relevant entry in
the register so maintained on computer.
(2) Any person may, on an application to the Registrar and on payment
of such fees as may be prescribed, obtain a certified copy of any
entry in the register or any document referred to in sub-section (1).
149.
Reports of Registrar to be placed before Parliament.
149. Reports of Registrar to be placed before Parliament.-The Central
Government shall cause to be placed before both Houses of Parliament
once a year a report respecting the execution by or under the
Registrar of this Act.
150.
Fees and surcharge.
150. Fees and surcharge.-(1) There shall be paid in respect of
applications and registration and other matters under this Act such
fees and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by the
Registrar, the Registrar shall not do that act until the fee has been
paid.
(3) Where a fee is payable in respect of the filing of a document at
the Trade Marks Registry, the document shall be deemed not to have
been filed at the registry until the fee has been paid.
151.
Savings in respect of certain matters in Chapter XII.
151. Savings in respect of certain matters in Chapter XII.-Nothing in
Chapter XII shall-
(a) exempt any person from any suit or other proceeding which might,
but for anything in that Chapter, be brought against him; or
(b) entitle any person to refuse to make a complete discovery, or to
answer any question or interrogatory in any suit or other proceeding,
but such discovery or answer shall not be admissible in evidence
against such person in any such prosecution for a offence under that
Chapter or against clause (h) of section 112 of the Customs Act, 1962
(52 of 1962) relating to confiscation of goods under clause (d) of
section 111 of that Act and notified by the Central Government under
clause (n) of sub-section (2 of section 11 thereof for the protection
of trade marks relating to import of goods; or
(c) be construed so as to render liable to any prosecution or
punishment any servant of a master resident in India who in good faith
acts in obedience to the instructions of such master, and, on demand
made by or on behalf of the prosecutor, has given fu l information as
to his master and as to the instructions which he has received from
his master.
152.
Declaration as to ownership of trade mark not registrable under
theRegistration Act, 1908.
152. Declaration as to ownership of trade mark not registrable under
the Registration Act, 1908.-Notwithstanding anything contained in the
Registration Act, 1908 (16 of 1908), no document declaring or
purporting to declare the ownership or title of a p rson to a trade
mark other than a registered trade mark shall be registered under that
Act.
153.
Government to be bound.
153. Government to be bound.-The provisions of this Act shall be
binding on the Government.
154.
Special provisions relating to applications for registration fromcitizens
of convention countries.
154. Special provisions relating to applications for registration
from citizens of convention countries.-(1) With a view to the
fulfilment of a treaty, convention or arrangement with any country or
country which is a member of a group of countries or u ion of
countries or Inter-Governmental Organisation outside India which
affords to citizens of India similar privileges as granted to its own
citizens, the Central Government may, by notification in the Official
Gazette, declare such country or group of countries or union of
countries or Inter-Governmental Organisation to be a convention
country or group of countries or union of countries or
Inter-Governmental Organisations, as the case may be, for the purposes
of this Act.
(2) Where a person has made an application for the registration of a
trade mark in a convention country or country which is a member of a
group of countries or union of countries or Inter-Governmental
Organisation and that person, or his legal represent tive or assignee,
makes an application for the registration of the trade mark in India
within six months after the date on which the application was made in
the convention country or country which is a member of a group of
countries or union of countries or Inter-Governmental Organisations,
the trade mark shall, if registered under this Act, be registered as
of the date on which the application was made in the convention
country or country which is a member of a group of countries or union
of countries o Inter-Governmental Organisation and that date shall be
deemed for the purposes of this Act to be the date of registration.
(3) Where applications have been made for the registration of a trade
mark in two or more convention countries or country which are members
of group of countries or union of countries or Inter-Governmental
Organisation, the period of six months referred o in the last
preceding sub-section shall be reckoned from the date on which the
earlier or earliest of those applications was made.
(4) Nothing in this Act shall entitle the proprietor of a trade mark
to recover damages for infringement which took place prior to the date
of application for registration under this Act.
155.
Provision as to reciprocity.
155. Provision as to reciprocity.-Where any country or country which
is a member of a group of countries or union of countries or
Inter-Governmental Organisation specified by the Central Government in
this behalf by notification in the Official Gazette oes not accord to
citizens of India the same rights in respect of the registration and
protection of trade marks as it accords to its own nationals, no
national of such country or country which is a member of a group of
countries or union of countries or Inter-Governmental Organisation, as
the case may be, shall be entitled, either solely or jointly with any
other person,-
(a) to apply for the registration of, or be registered as the
proprietor of, a trade mark;
(b) to be registered as the assignee of the proprietor of a registered
trade mark; or
(c) to apply for registration or be registered as a registered user of
a trade mark under section 49.
156.
Power of Central Government to remove difficulties.
156. Power of Central Government to remove difficulties.-(1) If any
difficulty arises in giving effect to the provisions of this Act, the
Central Government may, by order published in the Official Gazette,
make such provisions not inconsistent with the p ovisions of this Act
as may appear to be necessary for removing the difficulty:
Provided that no order shall be made under this section after the
expiry of five years from the commencement of this Act.
(2) Every order made under this section shall, as soon as may be after
it is made, be laid before each House of Parliament.
157.
Power to make rules.
157. Power to make rules.-(1) The Central Government may, by
notification in the Official Gazette and subject to the conditions of
previous publication, make rules to carry out the provisions of this
Act.
(2) In particular, and without prejudice to the generality of the
foregoing power, such rules may provide for all or any of the
following matters, namely:-
(i) the matters to be included in the Register of Trade Marks under
sub-section (1) of section 6, and the safeguards to be observed in the
maintenance of records on computer floppies or diskettes or in any
other electronic form under sub-section (2) of that section;
(ii) the manner of publication of alphabetical index of classification
of goods and services under sub-section (1) of section 8;
(iii) the manner in which the Registrar may notify a word as an
international non-proprietary name under section 13;
(iv) the manner of making an application for dissolution of an
association under sub-section (5) of section 16;
(v) the manner of making an application for registration of a trade
mark under sub-section (1) of section 18;
(vi) the manner of advertising of an application for registration
under sub-section (1), and the manner of notifying corrections or
amendments under sub-section (2), of section 20;
(vii) the manner of making an application and the fee payable for such
application giving notice under sub-section (1) and sending
counter-statements under sub-section (2) and submission of evidence
and the time therefor under sub-section (4) of section 21;
(viii) the form of certificate of registration under sub-section (2),
and the manner of giving notice to the applicant under sub-section (3)
of section 23;
(ix) the forms of application for renewal and restoration the time
within which such application is to be made and fee and surcharge if
any payable with each application, under section 25 and the time
within which the Registrar shall send a notice and t e manner of such
notice under sub-section (3) of that section;
(x) the manner of submitting statement of cases under sub-section (2)
of section 40;
(xi) the manner of making an application by the proprietor of a trade
mark under section 41;
(xii) the manner of making an application for assignment or
transmission of a certification trade mark under section 43;
(xiii) the manner of making an application to the Registrar to
register title under sub-section (1) of section 45;
(xiv) the manner in which and the period within which an application
is to be made under sub-section (4) of section 46;
(xv) the manner of marking an application under sub-section (2) of
section 47;
(xvi) the manner of making an application, documents and other
evidence to accompany such application under sub-section (1) and the
manner in which notice is to be issued under sub-section (3) of
section 49;
(xvii) the manner of making an application under sub-section (1), the
manner of issuing a notice under sub-section (2) and the procedure for
cancelling a registration under sub-section (3) of section 50;
(xviii) the manner of making applications under sub-sections (1) and
(2), the manner of giving notice under sub-section (4) and the manner
of service of notice of rectification under sub-section (5) of section
57;
(xix) the manner of making an application under section 58;
(xx) the manner of making an application under sub-section (1), the
manner of advertising an application, time and manner of notice by
which application may be opposed under sub-sections (2) and (3) of
section 59;
(xxi) the manner of advertisement under sub-secion (2) of section 60;
(xxii) the other matters to be specified in the regulations under
sub-section (2) of section 63;
(xxiii) the manner of making an application under sub-section (1) of
section 71;
(xxiv) the manner of advertising an application under section 73;
(xxv) the manner of making an application under section 77;
(xxvi) the classes of goods under section 79;
(xxvii) the conditions and restrictions under sub-section (2) of
section 80;
(xxviii) determination of character of textile goods by sampling under
section 82;
(xxix) the salaries and allowances payable to, and the other terms and
conditions of service of, the Chairman, Vice-Chairman and other
Members under sub-section (1) of section 88;
(xxx) the procedure for investigation of misbehaviour or incapacity of
the Chairman, Vice-Chairman and other Members under sub-section (3) of
section 89;
(xxxi) the salaries and allowances and other conditions of service of
the officers and other employees of the Appellate Board under
sub-section (2), and the manner in which the officers and other
sub-section (3), of section 90; employees of the Appellate Board
shall discharge their fun tions under
(xxxii) the form of making an appeal, the manner of verification and
the fee payable under sub-section (3) of section 91;
(xxxiii) the form in which and the particulars to be included in the
application to the Appellate Board under sub-section (1) of section
97;
(xxxiv) the manner of making an application for review under clause
(c) of section 127;
(xxxv) the time within which an application is to be made to the
Registrar for exercising his discretionary power under section 128;
(xxxvi) the manner of making an application and the fee payable
therefor under sub-section (1) of section 131;
(xxxvii) the manner of making an application under sub-section (1) and
the period for withdrawal of such application under sub-section (2) of
section 133;
(xxxviii) the manner of authorising any person to act and the manner
of registration as a trade mark agent under section 145;
(xxxix) the conditions for inspection of documents under sub-section
(1) and the fee payable for obtaining a certified copy of any entry in
the register under sub-section (2) of section 148;
(xl) the fees and surcharge payable for making applications and
registration and other matters under section 150;
(xli) any other matter which is required to be or may be prescribed.
(3) The power to make rules conferred by this section shall include
the power to give retrospective effect in respect of the matters
referred to in clauses (xxix) and (xxxi) of sub-section (2) from a
date not earlier than the date of commencement of this Act, but no
retrospective effect shall be given to any such rule so as to
prejudicially affect the interests of any person to whom sub-rule may
be applicable.
(4) Every rule made by the Central Government under this Act shall be
laid, as soon as may be after it is made, before each House of
Parliament, while it is in session for a total period of thirty days
which may be comprised in one session or in two or m re successive
sessions, and if, before the expiry of the session immediately
following the session or the successive sessions aforesaid, both
Houses agree in making any modification in the rule or both Houses
agree that the rule should not be made, the r le shall thereafter have
effect only in such modified form or be of no effect, as the case may
be; so, however, that any such modification or annulment shall be
without prejudice to the validity of any-thing previously done under
that rule.
158.
Amendments.
158. Amendments.-The enactment specified in the Schedule shall be
amended in the manner specified therein.
159.
Repeal and savings.
159. Repeal and savings.-(1) The Trade and Merchandise Marks Act,
1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General
Clauses Act, 1897 (10 of 1897), with respect to repeals, any
notification, rule, order, requirement, registration, certificate,
notice, decision, determination, direction, approval, author sation,
consent, application, request or thing made, issued, given or done
under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall, if
in force at the commencement of this Act, continue to be in force and
have effect as if made, issued, given r done under the corresponding
provisions of this Act.
(3) The provisions of this Act shall apply to any application for
registration of a trade mark pending at the commencement of this Act
and to any proceedings consequent thereon and to any registration
granted in pursuance thereof.
(4) Subject to the provisions of section 100 and notwithstanding
anything contained in any other provision of this Act, any legal
proceeding pending in any court at the commencement of this Act may be
continued in that court as if this Act had not been passed.
(5) Notwithstanding anything contained in this Act, where a particular
use of a registered trade mark is not an infringement of a trade mark
registered before the commencement of this Act, then, the continued
use of that mark shall not be an infringemen under this Act.
(6) Notwithstanding anything contained in sub-section (2), the date of
expiration of registration of a trade mark registered before the
commencement of this Act shall be the date immediately after the
period of seven years for which it was registered or renewed:
Provided that the registration of a defensive trade mark referred to
in section 47 of the Trade and Merchandise Marks Act, 1958 (43 of
1958) shall cease to have effect on the date immediately after the
expiry of five years of such commencement or after he expiry of the
period for which it was registered or renewed, whichever is earlier.
