[Act, No. 43 of 1958] [17th October, 1958] An Act to provide for the registration and better protection of trade
marks and for the prevention of the use of fraudulent marks on merchandise. BE it enacted by Parliament in the Ninth Year of the Republic of India as
follows:- (1) The Act may be called the Trade and Merchandise
Marks Act, 1958. (2) It extends to the whole of India. (3) It shall come into force on such date [1]as
the Central Government may, by notification in the Official Gazette, appoint. (1) In this Act, unless the context otherwise requires,- (a) "assignment" means an assignment in
writing by act of the parties concerned; (b) "associated trade marks" means trade
marks deemed to be, or required to be, registered as associated trade marks
under this Act; (c) "certification trade mark" means a mark
adapted in relation to any goods to distinguish, in the course of trade, goods
certified by any person in respect of origin, material, mode of manufacture,
quality, accuracy or other characteristic, from goods not so certified and
registrable as such under the provisions of Chapter VIII in respect of those
goods in the name as proprietor of the certification trade mark, of that
person; (d) "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; (e) "District Court" has the meaning assigned
to it in the Code of Civil Procedure, 1908 (5 of 1908); (f) "false trade description" means- (i) a trade description which is untrue or misleading
in a material respect as regards the goods to which it is applied; or (ii) any alteration of a trade description as regards
the goods 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 contained, as regards the goods to which it is applied, more yards or
meters than there are contained therein standard yards or standard meters; or (iv) any marks or arrangement or combination thereof
applied to goods in such 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; or (v) any false name or initials of a person applied to
goods 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
of the same description 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 of some person not bona fide carrying on business in
connection with such goods, 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; (g) "goods" means anything which is the
subject of trade or manufacture; (h) "High Court" means the High Court having
jurisdiction under section 3; (i) "limitations" (with its grammatical
variations) means any limitations 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 of use, as to use in relation to goods to be sold or
otherwise traded in within India, or as to use in relation to goods to be
exported to any market outside India; (j) "mark" includes a device, brand, heading,
label, ticket, name, signature, word, letter or numeral or any combination
thereof; (k) "name" includes any abbreviation of a
name; (l) "package" includes any case, box,
container, covering, folder, receptacle, vessel, casket, bottle, wrapper,
label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork; (m) "permitted use", in relation to a
registered trade mark, means the use of a trade mark- (i) by a registered user of the trade mark in relation
to goods (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 (ii) which complies with any conditions or restrictions
to which the registration of the trade mark is subject; (n) "prescribed" means, in relation to
proceedings before a High Court, prescribed by rules made by the High Court,
and in other cases, prescribed by rules made under this Act; (o) "register" means the Register of Trade
Marks referred to in section 6; (p) "registered" (with its grammatical
variations) means registered under this Act; (q) "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; (r) "registered trade mark' means a trade mark
which is actually on the register; (s) "registered user" means a person who is
for the time being registered as such under section 49; (t) "Registrar" means the Registrar of Trade
Marks referred to in section 4; (u) "trade description" means any
description, statement or other indication, direct or indirect,- (i) as to the number, quantity, measure, gauge or
weight of any goods; or (ii) as to the standard of quality of any goods,
according to a classification commonly used or recognised in the trade; or (iii) as to fitness for the purpose, strength,
performance or behaviors of any goods, being stet as defined in the Drugs 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 were made or produced; or (v) as to the name and address or other indication of
the identity of the manufacturer or of the person for whom the goods are
manufactured; or (vi) as to the mode of manufacture or producing any
goods; 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 a bill or entry of shipping bill; (c) any other description which is likely to be
misunderstood or mistaken for all or any of the said matters; (v) "trade mark" means- (i) in relation to Chapter X (other than section 81), a
registered trade mark or a mark used in relation to goods for the purpose of
indicating or so as to indicate a connection in the course of trade between the
goods and some person having the right as proprietor to use the mark; and (ii) in relation to the other provisions of this Act, a
mark used or proposed to be used in relation to goods for the purpose of
indicating or so as to indicate a connection in the course of trade between the
goods and some" person having the right, either as proprietor or as
registered user, to use the mark whether with or without any indication of the
identity of that person, and includes a certification trade mark registered as
such under the provisions of Chapter VIII; (w) "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; (x) "tribunal" means the Registrar or, as the
case may be, the High Court, before which the proceeding concerned is pending. (2) in this Act, unless the context otherwise requires,
any reference- (a) to the use of a mark shall be construed as a
reference to the use of a printed or other visual representation of the mark; (b) to the use of a mark 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; (c) to a registered trade mark shall be construed as
including a reference to a trade mark registered in Part A of the register or
Part B of the register, as the case may be; (d) to the Registrar shall be construed as including a
reference to any officer when discharging the functions of the Registrar in
pursuance of subsection (2) of section 4; (e) to the Trade Marks Registry shall be construed as
including a reference to any office of the Trade Marks Registry. The High Court having jurisdiction under this Act
shall be the High Court within the limits of whose appellate jurisdiction the
office of the Trade Marks Registry referred to in each of the following cases
is situate, namely:- (a) in relation to a trade mark on the Register of
Trade marks at the com?mencement of this Act, the office of the Trade Marks
Registry within whose territorial limits the principal place of business in
India of the proprietor of the trade mark as entered in the register at such
commence?ment is situate; (b) in relation to a trade mark for which an
application for registration of pending at or is made on or after the commencement
of this Act, the office of the Trade Marks Registry within whose territorial
limits the principal place of business in India of the applicant as disclosed
in his application is situate; (c) in relation to a trade mark registered in the names
of joint proprietors before the commencement of this Act, the office of the
Trade Marks Registry within whose territorial limits the principal place of
business in India of the proprietor whose name is entered first in the register
at such commencement as having such place of business is situate; (d) in relation to a trade mark for which an
application for registration in the names of joint proprietors is pending at or
is made on or after the commencement of this Act, the office of the Trade Marks
Registry within whole territorial limits the principal place of business in
India of the proprietor whose name is first mentioned in me said application as
having such place of business is situate; (e) where the registered proprietor or the applicant
for registration as afore?said has no place of business in India or where none
of the jointly registered proprietors or none of the joint applicants as
aforesaid has any place of business in India, the office of the Trade Marks
Registry within whose territorial limits- (i) in relation to trade mark on the Register of Trade
Marks at the commencement of this Act, the place mentioned in the address for
service in India as entered in the register at such commencement; (ii) in relation to a trade mark for which an
application for registration is pending at or is made on or after such
commencement, the place mentioned in the address for service in India as
specified in the application, is situate. (1) The Central Government may, by notifica?tion in the
Official Gazette, appoint a person to be known as the Controller-General of
Patents, Designs and Trade Marks, who shall be the [2][Registrar
of Trade Marks] for the purposes of this Act. [3][***]. (2) The Central Government may appoint such other
officers with such desig?nations 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 time to time authorise
them to discharge. (1) For the purpose of this Act there shall be
established a Registry which shall be known as the Trade Marks Registry. (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 officers of the Trade
Marks Registry, (3) The Central Government may, by notification [4]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. (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 descriptions of registered users, disclaimers, conditions,
limitations and such other matters relating to registered trademarks as may be
prescribed. (2) 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. (3) Subject to the superintendence and direction of the
Central Government, the register shall be kept under the control and management
of the Registrar. (4) 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 125 as the Central Government may, by notification in the
Official Gazette, direct. (1) The register referred to in section 6 shall be
divided into two parts called respectively Part A and Part B. (2) The Register of Trade Marks existing at the
commencement of this Act shall be incorporated with and form part of Part A of
the register, and this Part shall comprise all trade marks entered in the
Register of Trade marks existing at the commencement of this act and all trade
marks which after such commencement may be entered in Part A of the register. (3) Part B of the register shall comprise all trade
marks which after the com?mencement of this Act may be entered in Part B of the
register. (1) A trade mark may be registered in respect of any or
al! of the goods comprised in a prescribed class of goods. (2) Any question arising as to the class within which
any goods fall shall be determined by the Registrar whose decision in the
matter shall be final. (1) A trademark shall not be registered in Part A of
the register unless it contains or consists of at least one of the following
essential particulars, namely:- (a) the name of a company, individual or firm
represented in a special or particular manner; (b) the signature of the applicant for registration or
some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the
character or quality of the goods and not being according to its ordinary
signification, a geo?graphical name or a surname or a personal name or any
common abbre?viation thereof or the name of a sect, caste or tribe in India; (e) any other distinctive mark. (2) A name, signature or word, other than such as fall
within the descriptions in clauses (a), (b), (c) and (d) of sub-section (I)
shall not be registereable in Part A of the register except upon evidence of
its distinctiveness. (3)
For the
purposes of this Act, the expression "distinctive" in relation to the
goods in respect of which a trade mark is proposed to be registered, means
adapted to distinguish goods with which the proprietor of the trade mark is or
may be con?nected in the course of trade from goods in the case of which no
such connection subsists either gradually or, where the trade mark is proposed
to be registered subject to limitations, in relation to use within the extent
of the registration. (4)
A trade mark
shall not be registered in Part B of the register unless the trade mark in
relation to the goods in respect of which it is proposed to be registered is
distinctive, or is not distinctive but is capable of distinguishing goods with
which the proprietor of a trade mark is or may be connected in the course of
trade from goods in the case of which no such connection subsists, either
generally or, where the trade mark is proposed to be registered subject to
limitations, in relation to use within the extent of the registration. (5) In determining whether a trade mark is distinctive
or is capable of distin?guishing as aforesaid, the tribunal may have regard to
the extent to which- (a) a trade mark is inherently distinctive or is
inherently capable of distin?guishing as aforesaid; and (b) by reason of the use of the trade mark or of any
other circumstances, the trade mark is in fact so adapted to distinguish or is
in fact capable of distinguishing as aforesaid. (6) Subject to the other provisions of this section, a
trade mark in respect of any goods- (a) registered in Part A of the register may be
registered in Part B of the register; and (b) registered in Part B of the register may be
registered in Part A of the register, in the name of the same proprietor of the
same trade mark or any part or parts thereof. (1) A trade mark may be limited wholly or in part to
one or more specified 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. A mark- (a) the use of which would be likely to deceive or
cause confusion; or (b) the use of which would be contrary to any law for
the time being in force; or (c) which comprises or contains scandalous or obscene
matter; or (d) which comprises or contains any matter likely to
hurt the religious susceptibilities of any class or section of the citizens of
India; or (e) which would otherwise be disentitled to protection
in a court, shall not be registered as a trade mark. (1) Save as provided in sub-section (3), no trade mark
shall be registered in respect of any goods or description of goods which is
identical with or deceptively similar to a trade mark which is already
registered in the name of different proprietor in respect of the same goods or description
of goods. (2) Where separate applications are made by different
persons to be registered as proprietors respectively of trade marks which are
identical or nearly resemble each other in respect of the same goods or
description of goods the Registrar may defer the acceptance of the application
or applications bearing a later date until after the determination of the
proceedings in respect of the earlier application, and may dispose of such
application or applications in the light of the evidence tendered in relation
to earlier application and the oppositions thereto, if any. (3) In 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 trade
marks which are identical or nearly resemble each other (whether any such trade
mark is already registered or not) in respect of the same goods or description
of goods, subject to such conditions and limitations, if any, as the Registrar
may think fit to impose, (1) No word which is commonly used and accepted name of
any single chemical element or single chemical compound (as distinguished from
a mixture) shall be registered as a trade mark in respect of a chemical
substance or preparation, and any such registration shall, notwithstanding anything
in section 32, be deemed for the purposes of section 56 to be an entry made in
the register without sufficient cause or an entry wrongly remaining on the
register, as the circumstances may require. (2) This section shall not apply to a word which is
used to denote only a brand or make of the element or compound as made by the
proprietor or a registered user of the trade mark, as distinguished from the
element or compound as made by others, and in association with a suitable name
or description open to the public use. 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
twenty 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. (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
registrar the whole and the part as separate trade 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 re?spect of the same goods or description of goods
which, while resembling each other in the material particulars thereof, yet
differ in respect of- (a) statement of the goods in relation to which they are
respectively used or proposed to be used; or (b) statements 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. (1) Where a trade mark which is registered, or is the
subject of an application for registration, in respect of any goods is
identical with another trade mark which is registered, or is 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 so nearly resembles it as to be
likely to deceive or cause confusion if 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 a trade mark and any part thereof are, in
accordance with the provisions of sub-section (I) 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. (3) 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. (4) 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 like?lihood of deception or confusion being
caused if that trade mark were used by any other person in relation to any of
the goods in respect of which it is registered, and may amend the register
accordingly. If 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 tribunal, in deciding whether the trade mark shall be entered or
shall remain on the register, may require as a condition of its being on the
register, that the proprietor shall either disclaim any right to the exclusive
use of such part or of all or any portion of such matter, as the case may be,
to the exclusive use of which the tribunal holds him not to be entitled, or
make such other disclaimer as the tribunal may consider necessary for the
purpose of defining the rights of the proprietor under the registration: Provided that no disclaimer shall affect any rights of the proprietor of
a trade mark except such as arise out of the registration of the trade mark in
respect of which the disclaimer is made. (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 of his trade mark either in Part A or in Part B of the register. (2) An application shall not be made in respect of
goods comprised in more than one prescribed class of goods. (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 business in India or 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 of any or 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 in 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 an application for registration of a
trade mark (other than a certification trade mark) in Part A of the register,
the Registrar may, if the applicant so desires, instead of refusing the
application, treat it as an application for registra?tion in Part B of the
register and deal with the application accordingly. (6) 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 arriving at his
decision. 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 accep?tance and
proceed as if the application had not been accepted. (1) When an application for registration of a trade
mark has been accepted, whether absolutely or subject to conditions or limita?tions,
the Registrar shall, as soon as may be after acceptance, cause the application
as accepted 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 ac?ceptance if it relates to a trade mark to which sub-section (2) of
section 9 applies or in any other case where it appears to him that 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 the application. (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
Reg?istrar, on 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 Regis?trar, 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 counter-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 whether relied upon by the opponent or
not. (6) Where a person giving notice of opposition or an
application 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 proceedings before him, and in default of
such security being duly given, may treat the opposition or application, as the
case may be, as abandoned. The Registrar may on such terms as he thinks just- (a) 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 application or permit an amendment of the
application ; or (b) permit correction of any error in, or an amendment
of, a notice of opposition or a counter-statement under section 21. (1) Subject to the provisions of section 19, when an
applica?tion for registration of a trade mark in Part A or Part B of the
register 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 not 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
in Part A or Part B of the register, as the case may be, and the trade mark
when registered shall be registered as of the date of the making of the said
applica?tion and that date shall, subject to the provisions of section 131, 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 application 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. (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 on 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 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. (1) The registration of a trade mark shall be for a
period of seven years, but may be renewed from time to time in accordance with
the provisions of this section. (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 seven 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 pro?prietor of the date of expiration and
the conditions as to payment of fees and oth?erwise upon 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. (4) Where a trade mark has been removed from the
register for non-payment of the prescribed fee, the Registrar may, within one
year from the expiration of the last registration of trade mark, on receipt of
an application in the prescribed form, 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 limi?tations as he
thinks fit to impose, for a period of seven years from the expiration of the
last registration. Where a trade mark has been removed from the register for failure to pay
the fee for re?newal, it shall nevertheless, for the purpose of any application
for the registration of another 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. (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 as the goods of
another person or the remedies in respect thereof. (1) Subject to the other provisions of this Act, the
registration of a trade mark in Part A or Part B of the register 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 the goods 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 (I) 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
(except so far as their respective rights are subject to any 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 these persons has otherwise the same rights as
against other persons (not being registered users using by way of permitted
use) as he would have if he were the sole registered proprietor. (1) A registered trade mark is infringed by a person
who, not being the registered proprietor of the trade mark or a registered user
thereof using by way of permitted use, uses in the course of a trade mark which
is identical with, or deceptively similar to, the trade mark, in relation to
any goods 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) In an action for infringement of a trade mark
registered in Part B of the register an injunction or other relief shall not be
granted to the plaintiff if the de?fendant establishes to the satisfaction of
the court that the use of the mark of which the plaintiff complaints is not
likely to deceive or cause confusion or (o be taken as indicating a connection
in (he course of trade between the goods in respect of which the trade mark is
registered and some person having the right, either as registered proprietor or
as registered user, to use the trade mark. (1) Notwithstanding anything contained in this Act, the
following acts do not constitute an infringement of the right to the use of a
registered trade mark:- (a) Where 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
good to be exported to any market, or in any other circumstances, to which,
having regard to those conditions or limitations, the registration does not
extend; (b) the use by a person of a trade mark 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 of which they form part, the
reg?istered proprietor or the registered user conforming to the permitted use
has applied the trade mark and has not subsequently removed or oblit?erated it,
or has at any time expressly or impliedly consented to the use of the trade
mark; (c) 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 in relation
to which the trade mark has been used without infringement of the right given
by registra?tion under this Act or 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 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; (d) the use of a registered trade mark, being one of
two or more trade marks registered under this Act which are identical or nearly
reassemble each other, in exercise of the right to the use of that trade mark
given by registration under this Act. (2) Where the goods bearing a registered trade mark are
lawfully acquired by a person, the sale of or other dealings in those goods by
that person or by a person claiming under or through him is not an infringement
of the trade mark by reason only of the trade mark having been assigned by the
registered proprietor to some other person after the acquisition of those
goods. (1) In all legal pro?ceedings relating to a trade mark
registered under this Act (including applications under section 56), the
original registration of the trade mark and of all subsequent assignments and
transmissions of the trade mark shall be prime facie evidence of the validity
thereof. (2) In all legal proceedings as aforesaid a trade mark
registered in Part A of the register 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 the
Registrar before registration, in all legal proceed?ings as aforesaid, if it is
proved that the trade mark had been used by the registered proprietor or his
predecessor in title as to have become distinctive at the date of registration. Subject to the provisions of section 35 and section 46, in all legal
proceedings relating to a trade mark registered in Part A of the register
(including applications under section 56) the original registration of the
trade mark shall, after the expiration of seven years from the date of such
registration, be taken to be valid in all respects unless it is proved- (a) that the original registration was obtained by
fraud; or (b) that the trade mark was registered in contravention
of the provisions of section 11 or offends against the provisions of that
section on the date of commencement of the proceedings; or (c) that the trade mark was not, at the commencement of
the proceedings, distinctive of the goods of the registered proprietor. Nothing in this Act shall entitle the proprietor or a registered user of
a registered trade mark to interfere with or restrain the use by any person of
a trade mark identical with or nearly resembling in relation to goods 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 by 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 in the name of the proprietor or a
predecessor in title of his, which ever 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. Nothing in
this Act shall entitle the proprietor or a registered user of a registered
trade mark to interfere with any bonafide 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. (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 which the trade mark contains or of which it
consists as the name or description .of an article or substance: 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 by a
person or persons carrying on a trade therein, not being used in relation to
goods con?nected 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) goods
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 descrip?tion 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
56- (i) 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 substance in question or of any goods of the same
description, shall be deemed to be an entry wrongly remaining on the register; (ii) if the trade mark contains such words and other
matter, the tribunal in deciding whether the trade mark shall remain on the
register, so far as regards registration in respect of the article or substance
in question and of any goods of the same description, may, in case of a
decision in favour of its remaining on the register require as a condition
thereof that the proprietor shall disclaim any exclusive right to the use in
relation to that article or substance and any goods of the same description, of
such words: Provided that no disclaimer shall affect any rights of the proprietor of
trade mark except such as arise out of the registration of the trade mark in
respect of which the disclaimer is made ; (b) for (he purposes of any other legal proceeding
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 in relation to the article or substance in question or to any goods
of the same description; or (ii) if the trade mark contains such words and other
matter, all such rights of the proprietor to the use of such words, in such
relation as aforesaid, shall deemed to have ceased on the date at which the use
mentioned in clause (a) of the provision to sub-section (I) first became
well-known and established, or at the expiration of the period of two years
mentioned in clause (b) of the said proviso. 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. Notwithstand?ing
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 without the goodwill of the business concerned and in respect
either of all the goods in respect of which the trade mark is registered or of
some only of these goods. (1) An unregistered trade mark shall not be assignable
or transmissible except along with the goodwill of the business concerned. (2) Notwithstanding anything contained in sub-section
(1), an unregistered trade mark may be assigned or transmitted otherwise, than
along with the goodwill of the business concerned if- (a) at the time of assignment or transmission of the
unregistered trade mark, it is used in the same business as a registered trade
mark; and (b) the registered trade mark is assigned or
transmitted at the same time and to the same person as the unregistered trade
mark; and (c) the unregistered trade mark relates to goods in
respect of which the registered trade mark is assigned or transmitted. (1) Notwithstanding anything in section 37 and section
38, a trade mark shall not be assignable or transmissible in a case in which as
a result of the assignment or transmission 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 the same goods or
description of goods, of trade marks nearly resembling each other or of
identical trade marks, if, having regard to the similarity of the goods and of
the trade marks, the use of the trade marks in exercise of those rights would
be likely to deceive 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 regard to limitation
imposed thereon, such as not to be exercisable by two or more of those persons
in relation to goods to be sold, or otherwise traded in, within India otherwise
than for export thereform, or in relation to goods to be exported to the same
market outside India. (2) The proprietor of a registered trade mark who
proposes to assign ii may submit to the Registrar in the prescribed manner a
statement of case setting out the circum?stances and the Registrar may issue to
him a certificate stating whether, having regard to the similarity of the goods
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 certificate was
obtained by fraud or misrepresentation, be conclusive as to the validity or
inval?idity 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
certificate in favour of validity, only if application for the registration
under section 44 of the title of the person becoming entitled is made within
six months from the date on which the certificate is issued. Notwithstanding anything in section 37 and section 38, a trade mark
shall not be assignable or transmissible in a case in which as a result of the
assignment or transmission there would in the circumstances subsist, whether
under this Act or any other law, 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 and an exclusive right
in another of these persons to the use of a trade mark nearly resembling the
first-mentioned trade mark or of an identical trade mark in relation to the
same goods or description of goods limited to use in relation to goods to be
sold, or otherwise traded in, 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 since 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 assignment 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 39
if application for the registration under section 44 of the title of the 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. Where an assignment of a trade mark, whether registered, or unreg?istered,
is made otherwise than in connection with the goodwill of the business in which
the mark has 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 for which the trade mark is registered accompanied by the
transfer of the goodwill of the business concerned in those goods only; or (b) an assignment of a trade mark which is used in
relation to, goods exported from India if the assignment is accompanied by the
transfer of the goodwill of the export business only. A certification
trade mark shall not be assignable or transmissible otherwise than with the
consent of the Central Government, for which application shall be made in
writing in the prescribed manner through the Registrar. 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 to have been registered as separate trade marks. (1) Where a person be?comes 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
receipt 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 in respect of
which the assignment or transmission has effect, and shall cause particulars of
the assign?ment 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 (I) or an appeal from an order thereon, or an
application under section 56 or an appeal from an order thereon, a document or instrument
in respect of which no entry has been made in the register in accordance with
sub-section (1), shall not be admitted in evidence by the Registrar or any
court in proof of title to the trade mark by assignment or transmission unless
the Registrar or the court, as the case may be, otherwise directs. (1) No applica?tion for the registration of a trade
mark in respect of any goods shall be refused, nor shall permission for such
registration be withheld, on the ground only that it appears that the applicant
does not use or propose to use the trade mark if the Registrar is satisfied
that 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 by the
company. (2) The tribunal may, in a case to which sub-section
(1) applies, require the applicant to give security for the costs of any proceedings
relative to any opposition or appeal, and in default of such security being
duly given may treat the application as abandoned. (3) Where in a case to which sub-section (1) applies, a
trade mark in respect of any goods is registered in the name of in applicant
who relies on intention to assign the trade mark to a company, then, unless
within such period as may be prescribed, or within such further period not
exceeding six month 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 (hose goods, the registration shall cease to
have effect in respect thereof at the expiration of that period, and the
Registrar shall amend the register accordingly. (1) Subject to the provisions of section 47, a
registered trade mark may be taken off the register in respect of any of the
goods in respect of which it is registered on application made in the
prescribed manner to a High Court or to the Registrar 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 by him or, in a case to which the provisions of
section 45 apply, by the company concerned, and that there has, in fact, been
no bona fide use of the trade mark in relation to those goods by any proprietor
thereof for the time being up to a date one month before the date of the
application; or (b) that up to a date one month before the date of the
application, a continu?ous period of five years or longer had elapsed during
which the trade mark was registered and during which there was no bona fide use
thereof in relation to those goods by any proprietor thereof for the time
being: Provided that, except where the applicant has been permitted under
sub-section (3) of section 12 to register an identical or nearly resembling
trade mark in respect of the goods in question or where the tribunal is of
opinion that he might properly be permitted so to register such a trade mark,
the tribunal may refuse an application under clause (a) or clause (b) in
relation to any goods, if it is shown that there has been, before the relevent
date or during the relevant period, as the case may be, bona fide use of the
trade mark by any proprietor thereof for the time being in relation to goods of
the same description, being goods in respect of which the trade mark is
registered. (2) Where in relation to any goods in respect of which
a trade mark is registered- (a) the circumstances referred to in clause (1) 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, in a particular place
in India (other?wise than for export from India), or in relation to goods to be
exported to a particular market outside India; and (b) a person has been permitted under sub-section (3)
of section 12 to reg?ister 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 goods to be so
exported, 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 a High Court 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 registration shall 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 and not to any intention to abandon or not to use
the trade mark in relation to the goods to which the application relates. (1) Where a trade mark consisting of any invented word
has become so well-known as respects any goods in relation to which it is
registered and has been used, that the use thereof in relation to other goods
would be likely lo be taken as indicating a connection in the course of trade
between those goods and a person entitled to use the trade mark in relation to
the first mentioned goods, then, notwithstanding that the proprietor registered
in respect of the first mentioned goods does not use or propose to use the trade
mark in relation to those other goods and not- withstanding anything in section
48, the trade mark may, on application in the prescribed manner by such
proprietor, be registered in his name in respect of those other goods as a
defensive trade mark, and while so registered, shall not be liable to be taken
off the register in respect of those goods under the said section. (2) The registered proprietor of trade mark may apply
for the registration thereof in respect of any goods as a defensive trade mark
notwithstanding that it is already registered in his name in respect of those
goods otherwise than as a defensive trade mark, or may apply for the
registration thereof in respect of any goods otherwise than as a defensive
trade mark notwithstanding that it is already registered in his name in respect
of those goods as a defensive trade mark, in lieu in each case of the existing
registration. (3) A trade mark registered as a defensive trade mark
and that trade mark as otherwise registered in the name of the same proprietor
shall, notwithstanding that the respective registrations are in respect of
different goods, be deemed to be and shall be registered as associated trade
marks. (4) On application made in the prescribed manner to a
High Court or to the Registrar, by any person aggrieved, the registration of a
trade mark as a defensive trade mark may be cancelled on the ground that the
requirements of sub-section (1) are no longer satisfied in respect of any goods
in relation to which the trade mark is-registered in the name of the same
proprietor otherwise than as a defensive trade mark, or may be cancelled as
respects any goods in relation to which it is registered as a defensive trade
mark on the ground that there is no longer any likelihood that the use of the
trade mark in relation to those goods would be taken as giving the indication
mentioned in sub-section (1). (5) The Registrar may at any time cancel the
registration as a defensive trade mark of a trade mark of which there is no
longer any registration in the name of the same proprietor otherwise than as a
defensive trade mark. (6) Except as otherwise expressly provided in this
section, the provisions of this Act shall apply in respect of the registration
of trade marks as defensive trade marks and of trade marks so registered as
they apply in other cases. (1) Subject to the provisions of section 49, a person
other than the registered proprietor of a trade mark may be registered as the
registered user thereof in respect of any of all of the goods in respect of
which the trademark is registered otherwise than as a defensive trade mark; but
the Central Government may, by rules made in this behalf, provide that no
application for registration as such shall be entertained unless the agreement
between the. parties complies with the conditions laid down in the rules for
preventing trafficking in trade marks. (2) The permitted use of a trade mark shall be deemed
to be used by the pro?prietor thereof, and shall be deemed not to be used by a
person other than the pro?prietor, for the purposes of section 46 or for any
other purpose for which such use is material under this Act or any other law. (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 prescribed manner, and every such application shall be accompanied by- (i) 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 (ii) an affidavit made by the registered proprietor or
by some person authorised to the satisfaction of the Registrar to act on his
behalf,- (a) giving particulars of the relationship, existing or
proposed, between the proprietor and the proposed registered user, including
particulars showing the degree of control by the proprietor over the permitted
use which their relationship will 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; (b) stating the goods in respect of which registration
is proposed; (c) stating the conditions or restrictions, if any,
proposed with respect to the characteristics of the goods, to the mode or place
or permitted use, or to any other matter; (d) 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 (iii) 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 (I) have been
complied with to his satisfaction, the Registrar shall forward the application
together with his report and all the relevant documents to the Central
Government. (3) On receipt of an application under sub-section (2),
the Central Government, having regard to all the circumstances of the case and
to the interests of the general public, and the development of any industry,
trade or commerce in India, may direct the Registrar- (a) to refuse the application; or (b) to accept the application either absolutely or
subject to any conditions, restrictions or limitations which the Central
Government may think proper to impose: Provided that no direction for refusing the application or for its
acceptance con?ditionally shall be made unless the applicant has been given an
opportunity of being heard. (4) The Registrar shall dispose of the application in
accordance with the direc?tions issued by the Central Government under
sub-section (3). (5) The Central Government and the Registrar shall, if
so requested by the applicant, take steps for securing that information given
for the purposes of an ap?plication under this section (other than matters
entered in the register) is not dis?closed to rivals in trade. (6) 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. Notwithstanding
anything contained in any law for the time being in force or in any contract or
agreement, every registration made before the commencement of this Act of a registered
user shall cease to have effect after the expiration of three years from such
commencement. (1) Subject to any agreement subsisting between the
parties, a registered user of a trade mark shall be entitled to call upon the
proprietor thereof to take proceedings to prevent infringement thereof, and if
the proprietor refuses or neglects to do so within three months after being so
called upon, the registered user may institute proceedings for infringement in
his own name as if he were the proprietor, making the proprietor a defendant. (2) Notwithstanding anything contained in any other
law, a proprietor so added as defendant shall be liable for any costs unless he
enters an appearance and takes part in the proceedings. (1) Without prejudice the provisions of section 56, to
the registration of a person as a registered user- (a) may be varied by the Registrar as regards the goods
in respect of which or any conditions or restrictions subject to 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 of any of the
following grounds, namely:- (i) that the registered user has used the trade mark
otherwise than by way of the permitted use, or in such a 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 have justified the refusal
of the application for 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 have justified the refusal of an application for
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
per?formance of which he is interested; (d) may be cancelled by the Registrar of his own motion
or on the appli?cation in writing in the prescribed manner of any person, on
the ground that any stipulation in the agreement between the registered
proprietor and the registered user regarding the quality of the goods 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 in relation to which the trade mark is no longer registered. (2) The Registrar shall, before varying any
registration under clause (a) of sub?section (I) or (2) any registration on any
of the grounds mentioned in sub-clause (ii) or sub-clause (iv) of clause (c) of
that sub-section, forward the application made in that behalf for the
consideration of the Central Government, and the Central Govern?ment may, after
making such inquiry as it thinks fit, issue such directions to the Registrar as
it thinks fit, and the Registrar shall dispose of the application in accor?dance
with such directions. (3) The Registrar shall issue notice in the prescribed
manner of every application under this section to the registered proprietor and
each registered user (not being the applicant) of the trade mark. Nothing in this Act shall confer on a registered user of a trade mark
any assignable or trans?missible 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 2-For the purposes of Explanation 1, "firm" has
the same meaning as in the Indian Partnership Act, 1932, (9 of 1932). (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, it and so far as it shall 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 purposes of this Act be deemed to be also a 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. (1) The application in India of trade mark to goods to
be exported from India and any other act done in India in relation to goods to
be so exported which, if done in relation to goods to be sold or otherwise
traded within India would constitute use of a trade mark therein, shall be
deemed to constitute use of the trade mark in relation to those goods 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 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 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. (1) On application made in the prescribed manner to a
High Court 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 of defect in any entry in the ' register, may apply in the prescribed
manner to a High Court 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 High Court 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. (6) The power to rectify the register conferred by this
section shall include the power to remove a trade mark registered in Part A of
the register to Part B of the 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 from those
in respect of which a trade mark is registered; (e) enter a disclaimer or memorandum relating to a
trade mark which does not in any way extend the rights given by the existing
registration of the trade mark, 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 reg?istered 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. (1) The registered proprietor of 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
the 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 advertisement 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 manner. (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 adver?tised under sub-section (2). (1) The Registrar shall not, in exercise of any power
conferred on him by rules made with reference to clause (a) of sub-section (2)
of section 133, make any amendment of the register which would have the effect
of adding any goods or classes of goods to those in 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: Provided that this sub-section shall not apply when the Registrar is
satisfied that compliance therewith would involve under complexity and that the
addition or ante?dating, as the case may be, would not affect any substantial
quantity of goods and would not substantially prejudice the rights of any
person. (2) A proposal so to amend the register shall be
notified to the registered pro?prietor of the trade mark affected and
advertised in (he prescribed manner, and may be opposed before the Registrar by
any person aggrieved on the ground that the proposed amendment contravenes the
provisions of sub-section (1). The following provisions of this Act shall not apply to certification
trade marks, that is to say,- (a) section 9; (b) sections 18, 20 and 21, except as expressly applied
by this Chapter; (c) sections 28, 29, 30, 39, 40, 41, 45, 46, 47, 48,
49, 51, 52, 53 and sub?section (2) of section 55; (d) Chapter X, except section 81; (e) any provision the operation of which is limited by
the terms thereof to registration in Part B of the register. (1) A certification trade mark shall be registrable
only in Part A of the register. (2) 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. (3) In determining whether a certification trade mark
is adapted to distinguish in accordance with the provisions of clause (c) of
sub-section (I) of section 2, the tribunal may have regard to the extent to
which- (a) the mark is inherently so adapted distinguish in
relation to the goods in question; and (b) by reason of the use of the mark or of any other
circumstances, the mark is in fact so adapted to distinguish in relation to the
goods in question. (1) An application for the registration of a mark as a
certification trade mark shall be made to the Registrar in writing in the
prescribed manner by the person proposed to be registered as the proprietor
thereof, and accompanied by a draft of the regulations to be deposited under
section 65. (2) Subject to the provisions of section 61, the
provisions of sub-sections (1), (2), (3), (4) and (6) of section 18 and of
sections 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 therein 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 an application under section 18 and to any other
considerations (not being matters within the competence of the Central
Government under section 63) relevant 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. (1) When authorisation to proceed, with an application
under section 62 has been given, the Registrar shall forward the applications
to the Central Government. (2) The Central Government shall consider the
application so forwarded 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
deposited under section 65 is satisfactory; (c) whether in all the circumstances the registration
applied for would be to the public advantage, and may either - (i) direct that the application shall not be accepted;
or (ii) direct the Registrar to accept the application and
approve the said draft of the regulations either without modification and
unconditionally or subject to any conditions of limitations, or to any
amendments or modi?fication of the application or of the regulations, which it
thinks requisite having regard to any of the said matters. (4) Except in the case of a direction for acceptance
and approval without modi?fication and unconditionally the Central Government
shall not decide any matter under sub-section (2) without giving to the
applicant an opportunity of being heard. (5) Notwithstanding anything contained in this section,
the Central Government may, at the request of the applicant made through the
Registrar, consider the application with regard to any of the matters referred
to in sub-section (2) before authorisation to proceed with the application is
given, but the Central Government shall be at liberty to reconsider any matter
on which it has given a decision under this sub-section if any amendment or
modification is thereafter made in the application of in the draft of the
regulations. (1) 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
section 21 shall apply in relation to the registration of the mark as they
apply in relation to an application under section 18. (2) In deciding any matter relating to opposition
proceedings under the provisions aforesaid the tribunal shall have regard only
to the considerations referred to in sub-section (3) of section 62, and a
decision under the said provisions in favour of the applicant shall be
conditional on the determination in his favour by the Central Government under
sub-section (3) of this section of any opposition relating to any of the
matters referred to in section 63. (3) When notice of opposition is given relating to any
of the matters referred to in section 63, the Central Government shall, after
hearing the parties, if so required by them, and considering any evidence and
having regard to the matters aforesaid, direct the Registrar- (a) to refuse registration; or (b) to register the mark either absolutely or subject
to such conditions or limitations, or amendments or modifications of the
application or of the regulations to be deposited under section 65, as the
Central Government may think proper to impose or make, and the Registrar shall
dispose of the matter in accordance with the directions issued by the Central
Government under this sub-section. (1) There shall be deposited at the Trade Marks
Registry in respect of every mark registered as a certification trade mark
regulation approved by the Central Govern?ment for governing the use thereof,
which shall include provisions as to the cases in which the proprietor is to
certify goods and to authorise the use of the certification trade mark, and may
contain any other provisions which the Central Government may, by general or
special order, require or permit to be inserted 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 deposited shall
be open to inspection in like manner as the register. (2) The regulations so deposited may on the application
of the registered proprietor be altered by the Registrar with the consent of
the Central Government. (3) The Central Government may cause such application
to be advertised in any case where it appears to it expedient so to do, and
where it does so, if within the time specified in the advertisement any person
gives notice of opposition to the application, the Central Government shall not
decide the matter without giving (he parties an opportunity of being heard. (1) Subject to the provisions of sections 33, 34 and
68, the registration of a person as proprietor of a certification trade mark in
respect of any goods shall, if valid, give to that person the exclusive right
to the use of the mark in relation to those goods. (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. The right
conferred under section 66 is infringed by any person who, not being the
registered proprietor of the certification trade mark of a person authorised by
him in that behalf under the regu?lations deposited under section 65, 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 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 use as a trade mark. (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 marks:- (a) where a certification trade mark is registered to
any conditions or limi?tations 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 exported to any market or in any other
circum?stances, 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 certified by the proprietor of the mark if, as to those goods or a
bulk of which they form part, the proprietor of another in accordance with his
authorisation under the 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 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 being be so used, if the use of the
mark is reasonably necessary in order to indicate that the goods are so adapted
and neither the purpose not the effect of the use of mark is to indicate
otherwise than in accordance with the fact that the goods are certified by the
proprietor. (2) Clause (b) of sub-section (1) shall not apply to
the case of use consisting of (he application of a certification trade mark to
goods, notwithstanding that they are such goods as are mentioned in that clause
if such application 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 registration, shall not be deemed to be an
infringement of the right so given to the use of any other of those trade
marks. The Central Government may, on the application in the prescribed manner
of any person aggrieved or on the recom?mendation of the Registrar, and after
giving the proprietor an opportunity of opposing the application or recommendation,
make such order as it thinks fit for expunging or varying any entry in the
register relating to a certification trade mark, or for varying the deposited
regulations, on any of the following grounds, namely: (a) that the proprietor is no longer competent, in the
case of any of the goods in respect of which the mark is registered, to certify
those goods; (b) that the proprietor has failed to observe any
provision of the deposited 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 regulation should be varied, and neither a
High Court nor the Registrar shall have any jurisdiction to make an order under
section 56 on any of those grounds. The
Registrar shall rectify the register and the deposited regulations in such
manner as may be requisite for giving effect to an order made by the Central
Government under section 69. 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. (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 adapted to
distinguish; (c) the registration of a 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. (1) No addition shall, after the commence?ment of this
Act, be made to the Refused Textile Marks List maintained under the Trade Marks
Act, 1940 (5 of 1940). (2) A mark already entered on the Refused Textile Marks
List may, however, be continued to be so entered: Provided that an application therefore is made in the prescribed manner
and with the prescribed fee within one year after the commencement of this Act,
in which case it will be retained in the List for a period of seven years from
the date of the application. (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 Act, 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 conspicu?ously
stamped in international form of Indian numerals on each piece the length
thereof in standard yards, or in standard yards and a fraction of such a yard,
or in standard meters or in standard meters and a fraction of such a meter,
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 exempted
by the rules made under section 75 shall not be removed for sale from those
premises unless, in accordance with the said rules in the case of yarn- (a) the bundles are conspicuously marked with an
indication of the weight of yarn in the English or the metric system in each
bundle; and (b) the count of the yarn contained in the bundle 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 75 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 cooperative
society where not more than twenty workers are employed in the premises. (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, gauge 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 74 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 manu?facture, bleaching, dyeing of finishing 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 74 of this Act or section 18 of the Sea
Customs Act, 1878 (8 of 1878). (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 (I), the court or officer of customs, as the
case may be, having occasion to ascertain the number, 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 (o 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 (1), 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 officer 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 or officer
of customs may determine in the circumstances to be reasonable, the samples
being selected in the manner prescribed under sub-section (1), or in
sub-section (2), as the case may 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. (1) A person shall be deemed to apply a trade mark or
mark or trade description to goods who- (a) applies it to the goods themselves; or (b) applies it to any package in or with which the
goods are sold, or expose 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 manu?facture, in or with any package or other thing to which a trade
mark or mark or trade description has been applied; or (d) uses a trade mark or mark or trade description in
any manner reasonably likely to lead to the belief that the goods 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 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 to a 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. (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
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 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, the burden of proving the assent of the
proprietor shall lie on the accused. Any person who,- (a) falsifies any trade mark; or (b) falsely applies to goods 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 (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 manu?facturer or person for whom the goods are manufactured is required to
be applied under section 117, a false indication 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 117; 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 may extend to two
years, or with fine, or with both: Provided that where the offence under this section is in relation to
goods or any package containing goods which are drugs within the meaning of
clause (b) of section 3 of the Drugs and Cosmetics Act, 1940 (23 of
1940) or "food" as defined in clause (v) of section 2 of
the Prevention of Food Adulteration Act, 1954 (37 of 1954) the offender shall
be punishable with imprisonment for a term which may extend to three years, or
with fine, or with both. Any person who sells, on exposes for sale, or has in his possession for
sale or for any purpose of trade or manufacture, any goods or things to which
any false trade mark or false trade description is applied or which, being
required under section 117 to have applied to them an indication of the country
or place in which they were made or produced or me name and address of the manu?facturer
or the person for whom the goods are manufactured, are without the indi?cation
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 the
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; and (b) that, on demand by or on behalf of the prosecutor,
he gave all the in?formation in his power with respect to the person from whom
he ob?tained such goods or things; or (c) that otherwise he had acted innocently, be
punishable with imprisonment for a term which may extend to two years, or with
fine, or with both: Provided that when the offence against this section is in relation to
goods or any package containing goods which are drugs as defined in clause (b)
of section 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940)
or "food" as defined in clause (v) of section 2 of the
Prevention of Food Adulteration Act, 1954 (37 of 1954) the offender shall be
punishable with imprisonment for a term which may extend to three years, or
with fine, or with both. 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 74, 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 yam 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 packing thereof shall be forfeited
to Government and such person shall be punishable with fine which may extend to
one thousand rupees. (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 in respect of which it is not in fact
registered; or (d) to the effect that the registration of a trade mark
gives an exclusive right to the use thereof in any circumstances in which,
having regard to limitations 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 six months, or with fine which may extend to five hundred rupees, or
with both. (3) For the purposes of this section, (he use in India
in relation to a trade mark of the word "registered" or of any other
expression referring whether expressly or impliedly to registration, shall be
deemed to import a reference to registration in the register, except- (a) where that word or other expression is used in direct
association with Other words delineated in characters at least as large as
those in which that word or other expression is delineated and indicating that
the refer?ence is to registration as 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 is of itself such as to
indicate that the ref?erence 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. 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 place 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 six months, or
with fine, or with both. 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 on
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. The provisions of sections 77, 78 and 79 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 section 77 or section 78 or section 79 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. (1) Where a person is convicted of an offence under
section 78 or section 79, or is acquitted of an offence under section 78 on
proof that he acted without intent to defraud, or under section 79 on proof of
the matters specified in clauses (a), (b) and (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
committed, or but for such proof as afore?said would have been committed. (2) When a forfeiture is directed on a conviction and
an appeal lies against the conviction, an appeal shall against the forfeiture
also. (3) When a forfeiture is directed on an acquittal and
the goods or things to which the direction relates are of value exceeding fifty
rupees, an appeal against the forfei?ture may be preferred, within thirty days
from the date of the direction, to the court to which in appealable cases
appeals lie from sentences of the court which directed (he 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 of otherwise disposed of as the court thinks fit. Where a person accused of an offence under section 78 proves- (a) that in the ordinary course of his business he is
employed on behalf of others 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; 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. (1) Where the offence charged under section 78 or
section 79 is in relation to a registered trade mark and the accused pleads
that the registration of the trade mark is invalid, the following procedure
shall be followed:- (a) If the magistrate is satisfied that such defence is
prima facie tenable, he shall not proceed with me 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 application before the High Court
under this Act, for the rectification of the register on the ground that the
registration is invalid. (b) If the accused proves to the magistrate that he has
made such application within the time so limited or within such further time as
the magistrate may for sufficient cause allow, the further proceedings in the
prosecution shall stand stayed till the disposal of such application for
rectification and of the appeal, if any, therefrom. (c) If within a period of three months or within such
extended time as may be allowed by (he magistrate the accused fails to apply to
the High Court for rectification of the register, the magistrate shall proceed
with the case as if the registration were valid. (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 magistrate 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 of the
application for rectification in so far as the complainant relies upon the
registration of his mark. (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 offence 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 attributable 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 and punished
accordingly. Explanation For the purposes of this section- (a) "company" means any body corporate and
includes a firm or other as?sociation of individuals; and (b) "director" in relation to a firm means a
partner in the firm. (1) No court shall take cognizance of an offence under
section 81, section 82 or section 83 except on complaint in writing made by the
Registrar or any officer authorised by him in writing. (2) No court inferior to that of a sessions judge,
presidency magistrate or magistrate of the first class shall try an offence
under this Act. 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 (d), clause (dd),
clause (e), clause (f), clause (h), clause (i) or clause (j) of Section
18 of the Sea Customs Act, 1878 (8 of 1878), be prima facie evidence of
the place or country in which the goods were made or produced. 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
deemed reasonable having regard to all the circumstances of the case and the
conduct of the parties. Costs so awarded shall be recoverable as if they were a
fine. No prosecution
for an offence under this Act or under clause (d), clause (dd), clause (e),
clause (f), clause (h), clause (i) or clause (j) of Section 18 of the
Sea Customs Act, 1878 (8 of 1878), shall be commenced after the expiration of
three years next after the commission of the offence charged, or two years
after the discovery (hereof by the prosecutor, whichever expiration first
happens. No
prosecution for an offence under this Act or under clause (d), clause (dd),
clause (e), clause (f), clause (h), clause (i) or clause (j) of Section
18 of the Sea Customs Act, 1878 (8 of 1878), shall be commenced after the
expiration of three years next after the commission of the offence charged, or
two years after the discovery (hereof by the prosecutor, whichever expiration
first happens. If any
person, being within India, abets the commission, without India, of any act
which, if com?mitted in India, would, under this Act, be an offence, he may be
tried for such abetment in any place in India in which he may be found, and be
punished therefore with the punishment which he would be liable if he had
himself committed in that place the act which he abetted. The Central
Government may, by notification in the Official Gazette, issue instructions for
the limits of variation, as regards number, quantity, measure, gauge or weight,
which are to be recognised by criminal courts as permissible in the case of any
goods. On the sale
or in the contract for the sale of any goods to which a trade marks or mark or
trade description has been applied, 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 some writing signed by or on behalf of the
seller and delivered at the time of the sale or contract to and accepted by the
buyer. 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 examination of witnesses; (b) the Registrar may, subject to any rules made in
this behalf under section 133, make such orders as to costs as be 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 to authorise the use of the mark: (c) the Registrar may, on an application made in the
prescribed manner, review his own decision. Subject to
the provisions of section 101, 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 exercise of that power
without (if so required by that person within the prescribed time) giving to
that person an opportunity of being heard. 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. If a person
who is a party to a proceed?ing under this Act (not being a proceeding in a
court) dies pending the proceeding, the Registrar may, on request, and on proof
to his satisfaction of the transmission of the interest of the deceased person,
substitute in the preceding his successor in in?terest 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. (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 provided in the 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 notify 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. 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 with in the time specified in the
notice. (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 in Part A or Part B of the register, give advice as to whether
the trade mark appears to him prima facie to the inherently adapted to
distinguish, or capable of distinguishing as the case may be. (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, gives notice, to the applicant of
objection on the ground that the trade mark is not adapted to distinguish, or
is not capable of distinguishing, as the case may be, the applicant shall be
entitled, on giving notice of withdrawal of the application within the
prescribed period, to have a repaid to him any fee paid on the filing of the
application. In all proceedings under this Act before the Central Government,
evidence shall be given by affidavit: Provided that the Central Government may, if it thinks fit, take oral
evidence in lieu of, or in addition to, such evidence by affidavit, and shall
for that purpose have all the powers of a civil court referred to in clause (a)
of section 97. 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. (1) The relief which a court may grant in any suit for
infringement or for passing off referred to in section 105 includes an
injunction (subject to such terms, if any, as the court think fit) and the
option of the plaintiff, either damages or on account of profits, together with
or without any order for the delivery-up of the infringing lables and marks for
destruction or erasure. (2) Notwithstanding anything contained in sub-section
(1), the court shall not grant relief by way of damages (other than nominal
damages) or an 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 (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 registered user using by way of permitted use; and (ii) that when he became aware of the existence and
nature of the plaintiffs right in the trade mark, he forthwith ceased to use
the trade mark in relation to goods 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 be?lieving
that the trade mark of the plaintiff was in use; and (ii) that when he became aware of the existence and
nature of the plaintiffs trade mark, he forthwith ceased to use the trade mark
complained of. (1) Where in a suit for infringement of a registered
trade mark the validity of the registration of the plaintiffs trade mark is
questioned by the defendant or where in any such suit the defendant raises a
defence under clause (d) of sub?section (1) of section 30 and the palintiff
questions the validity of the registration of the defendant's trade mark, the
issue as to the validity of the registration of the trade mark concerned shall
be determined only on an application for the rectification of the register, and
notwithstanding anything contained in section 46, sub section (4) of section 47
or section 56, such application shall be made to the High Court and not to the
Registrar. (2) Subject to the provisions of sub-section (1) where
an application for rectification of the registered made to the Registrar under
section 46 or sub-section (4) of section 47 or section 56, the Registrar may,
if he thinks fit, refer the application at any stage of the proceeding to the
High Court. (1) An application for rectification of the register
made to a High Court under section 46, sub-section (4) of section 47 or section
56shall be in such form and shall contain such particulars as may be
prescribed. (2) Every such application shall be heard by a single
Judge of the High Court: Provided that any such Judge may, if he thinks fit, refer the
application at any stage of the proceedings for decision to a Bench of that
High Court. (3)
Where any
such application is heard by a single judge of the High Court, an appeal shall
lie from the order made by him on application to a Bench of the High Court. (4)
Subject to
the provisions of this Act and the rules made thereunder, the provisions of the
Code of Civil Procedure, 1908 (5 of1908), shall apply to applica?tions to a
High Court under this section. (5)
A certified
copy of every order or judgment of the High Court or of the Supreme Court, as
the case may be, relating to a registered trade mark under this section shall
be communicated to the Registrar by that Court and the Registrar shall give
effect to the order of the Court and shall, when so directed, amend the entries
in, or rectify, the register in accordance with such order. (1) No appeal shall lie from any decision, order or
direction made or issued under this Act by the Central Government or from any
act or order of the Registrar for the purpose of giving effect to any such
decision, order or direction. (2) Save as otherwise expressly provided in sub-section
(1) or in any other pro?vision of this Act, an appeal shall lie to the High
Court within the prescribed period from any order or decision of the Registrar
under this Act or the rules made there?under. (3) Every such appeal shall be preferred by petition in
writing and shall be in such form and shall contain such particulars as may be
prescribed. (4) Every such appeal shall be heard by a single Judge
of the High Court: Provided that any such Judge may, if he so thinks fit, refer the appeal
at any stage of the proceeding to a Bench of the High Court. (5)
Where an
appeal is heard by a single Judge, a further appeal shall lie to a Bench of the
High Court. (6)
The High
Court in disposing of an appeal under this section shall have the power to make
any order which the Registrar could make under this Act. (7)
In an appeal
by an applicant for registration against a decision of the Reg?istrar under
section 17 or section 18 or section 21, it shall not be open, save with the
express permission of the court, to the Registrar or any party opposing the
appeal to advance grounds other than those recorded in the said decision or
advanced by the party in the proceedings before the Registrar, as the case may
be, and where any such additional grounds are advanced, the applicant for
registration may, on giving notice in the prescribed manner, withdraw his
application without being liable to pay the costs of the Registrar or the
parties opposing his application. (8) Subject to the provisions of this Act and of the
rules made thereunder, the provisions of the Code of Civil procedure, 1908 (5
of 1908), shall apply to appeals before a High Court under this Act. The High Court may make rules consistent with this Act as to the conduct
and procedure of all proceedings under this Act before it. (1) Where in any suit for the infringement of a trade
mark- (a) the defendant pleads that the registration of the
plaintiffs trade mark is invalid; or (b) the defendant raises a defence under clause (d) of
sub-section (1) of section 30 and the plaintiff pleads the invalidity of the
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 High Court, 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
plaintiff's or defendant's trade mark in 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 High Court for rectification of the register. (3) 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 trial of the suit shall stand
stayed until the final disposal of the rectification proceedings. (4) 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 and the court shall proceed
with the suit in regard to the other issues in the case. (5) 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 at it relates to the issue as to the validity of the
registration of the trade mark. (6) The slay of a suit for the infringement of a trade
mark under this section shall not preclude the court making any interlocutory
order (including any order granting an injunction, directing accounts to be
kept, appointing a receiver or attach?ing any property), during the period of
the stay of the suit. (1) The Registrar shall have the right to appear and be
heard- (a) in any legal proceedings before a High Court 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 High Court 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 court. (3) Unless the High Court otherwise directs, the
Registrar may, in lieu of appear?ing, 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 grounds 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 knowl?edge as Registrar,
and such statement shall be evidence in the proceeding. In all
proceedings under this Act before a High Court the costs of the Registrar shall
be in the discretion of the High Court, but the Registrar shall not be ordered
to pay the costs of any of the parties. (1) In every proceeding under Chapter VII or under
section 109, every registered user of a trade mark using by way of permitted
use, who is not himself an applicant in respect of any proceeding under 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. (1) A copy of any entry in the register or of any
document referred to in sub-section (1) of section 125 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 of the matter or thing having
been done or not done. The
Registrar or any other 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 document 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. (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 imported 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 the 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 say, whether on
importation only, or also at the time of sale, whether by whole sale 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 interest of deal?ers in, or manufacturers,
producers, or users of, the goods concerned, or unless the 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 (10 of 1897), shall apply to the issue of a
notification under this section as the 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 Chief Customs Officer is satisfied at the
time of importation that they are intended for exportation whether after
transhipment in or transit through India or otherwise. (1) Where goods, which are prohibited to be imported
into India under clause (d), clause (dd), clause (c), clause (f), clause (h),
clause (i) or clause (j) of Section 18 of the Sea Customs Act, 1878,
(8 of 1878) and are liable to detention and confiscation on importation under
that Act, are imported into India, the Chief Customs Officer 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 agent, 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. (2) The importer or his agent shall, 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. (3) Any information obtained from the importer of the
goods or his agent under this section may be communicated by the Chief Customs
Officer to the registered proprietor or registered user of the trade mark which
is alleged to have been used as a false trade mark. If in any
legal proceeding for rectification of the register before a High Court 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 registration of the trade mark, the High
Court 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
conies info question the said proprietor on obtaining a final order or judgment
in his favour affirming the 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 costs, charges and expenses as between legal
practitioner and client. (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 person to be registered, or with some other like proceedings, a
person aggrieved may, whether the person making the threats is or is not
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 trade 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 51, with due diligence commences and
prosecutes an action against the person threat?ened for infringement of the
trade mark. (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. 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 opponent, as the case may be, and all documents 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. In any suit
or other proceeding relating to a trade mark, the tribunal shall admit evidence
of the usage of the trade concerned and of any relevant trade mark or trade
name or get up legitimately used by other persons. 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 person 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. 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 name of registered users. (1) Save as otherwise provided in sub-section (5) 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 65, and all
applications under section 69 for varying such regulations; (d) the indexes mentioned in section 124; 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 as the Trade
Marks Registry. (3) Any person may, on 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). 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. (1) There shall be paid in respect of applications and
registration and other matters under this Act such fees 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 lo
have been filed at the Registry until the fee has been paid. Nothing in Chapter X shall- (a) exempt any person from any suit or other proceeding
which might, but for anything in that Chapter, be brought against him, (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 an offence under Chapter X or
against clause (d), clause (dd), clause (e), clause (f), clause (h), clause (i)
or clause (j) of Section 18 of the Sea Customs Act, 1878, (8 of 1878),
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 full information as to his master
and as to the instructions which he has received from his master. Notwithstanding
anything contained in the Indian Registration Act, 1908 (16 of 1908), no
document declaring or purporting to declare the ownership or title of a person
to a trade mark other than a registered trade mark shall be registered under
that Act. The provisions of this Act shall be binding on the Government. (1) With a view to the fulfillment of a treaty,
convention or arrangement, with any country 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 to be a convention country 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 and that person, or his
legal representative 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, 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 and that date shall be deemed
for the purpose of this Act to be the date of registration. (3) Where applications have been made for the
registration of trade mark in two or more convention countries, the period of
six months referred to in the last preced?ing sub-section shall be reckoned
from the date on which the earlier or earliest of those applications was made. Where any country specified by the Central Government in this behalf by
notification in the Official Gazette does 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 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 in Part A or Part B of the register, (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. (1) The Central Govern?ment may, by notification in the
Official Gazette and subject to the condition of previous publication, make
rules [5]to
carry out the purposes 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:- (a) the classification of goods for the purpose of the
registration of trade marks, and the empowering of the Registrar to amend the register
so far as may be necessary for the purpose of adapting the entries therein to
any amended or substituted classification; (b) the making of duplicates of trade marks and other
documents connected therewith; (c) the securing and regulating the publication, sale
or distribution of copies of trade marks and other documents connected
therewith; (d) the additional matters to be entered in the
register; (e) the conditions and restrictions subject to which
the register, the Refused Textile Marks List and other documents may be
inspected; (f) the form of certificates of registration; (g) the further documents, information or evidence
which should accompany an application under sub-section (t) of section 49; (h) the prescribing of classes of goods as textile
goods for the purposes of section 71; (i) the awarding of cost by the Registrar under
section. 97; (j) the conditions subject to which a person may be
registered as a trade marks agent, and the conditions subject to which an agent
referred to in section 123 may act; (k) the fees to be paid under this Act; (l) the establishment of Offices of the Trade Marks
Registry for facilitating the working of this Act, the territorial jurisdiction
of each office of the Trade Marks Registry and the preparation of the copies of
the register to be kept at such offices; (m) the transfer of applications and proceedings
pending at the commence?ment of this Act in any office of the Registry to the
appropriate office of the Registry; (n) the manner in which, in proceedings under this Act
before the Central Government or the Registrar, applications shall be made,
notices given and matters advertised; (o) the times or periods required by this Act to be
prescribed; (p) the regulation generally of the business of the
Trade Marks Registry and of the offices established under clause (1) and the
regulation of all things by this Act placed under the direction or control of
the Central Government or the Registrar; (q) the number of samples to be selected and tested and
for the selection of the samples for the purposes of section 75; (r) the manner in which cotton yarn and cotton thread
shall be marked with the particulars required by section 74, and the exemption
of certain premises from the provisions of that section; (s) the classes of goods included in the expression
"piece goods, such as are ordinarily sold by length or by the piece"
for the purposes of section 74, and clause (f) of Section 18 of the
Sea Customs Act, 1878 (8 of 1878); (t) any other matter which is required to be or may be
prescribed. [6][134. Laying of rules before Parliament Every rule made 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 more
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 rule 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
anything previously done under that rule. The enactments specified in the Schedule shall be amended in the manner
specified there in. (1) The Indian Merchandise Marks Act, 1889 (4 of 1889),
and the Trade Marks Act, 1940 (5 of 1940), are 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, authorisation, consent,
application, request, or thing made, issued, given or done under [7]the
Indian Merchandise Marks Act, 1889 (4 of 1889), or the Trade Marks Act, 1940 (5
of 1940), shall, if in force at the commencement of this Act, continue in
force, and have effect as if made, issued, given or done under the
corresponding provision 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) Notwithstanding anything contained in 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. THE SCHEDULE AMENDMENTS (See section 135) Year No. Short title Amendment 1860 45 The Indian Penal Code, (i) In the heading to Chapter XVIII, the words "TRADE OR"
shall be omitted; (ii) in the heading above Section 478, the word "trade",
shall be omitted; (iii) Sections 478 and 480 shall be omitted; (iv) in Section 482, the words "any false trade mark
or" shall be omitted; (v) in Section 483, the words" trade mark or"
shall be omitted; (vi) for Section 485, the following section shall be substituted,
namely:- "485. Making 'or possession of any instrument for counterfeiting
a property mark. Whoever makes or has in his possession any die, plate or
other instrument for the purpose of counterfeiting a property mark, or has in
his possession a property mark for the purpose of denoting that any goods
belong to a person to whom they do not belong, shall be punished with
imprisonment of either description for a term which may extend to three
years, or with fine, or with both." ; (vii) in Section 486, for the words" Whoever sells, or
exposes, or has in possession for sale or any purpose of trade or
manufacture, any goods or things with a counterfeit trade.mark or property
mark", the words" Whoever sells, or exposes, or has in
possession for sale, any goods or things with a counterfeit property
mark" shall be substituted. 1877 1 The Specific Relief Act, 1877. In section 54, the Explanation and illustration (w) shall be omitted. 1878 8 The Sea Customs Act, 1878. In Section 18, (i) for clause (d), the following clause shall be substituted, namely: "(d) goods having applied there to a false trade mark within the
meaning of section 77 of the Trade and Merehandise Marks Act, 1958; (dd) goods having applied thereto a false trade description with in
the meaning of clause (f) of sub-sect ion (1) of section 2 of the
Trade and Merchandise Marks Act, 1958. otherwise than in relation to any
of the matters specified in sub- clauses (ii) and (iii) of clause (u) of that
sub-section," ; (ii) in clause (f), in sub-clause (ii), for the words "standard
yards", the words "standard yards or in standard meters" shall
be substituted; (iii) for clause (h), the following clause shall be substituted,
namely: - "(h) goods which are required by a notification
under section 117 of the Trade and Merchandise Marks Act, 1958, 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 manufacturer or the
person for whom the goods were manufactured, unless such goods show such
indication applied in the manner specified in the notification,", (iv) in clause (i), in sub-clause (ii) for the words and figures
"under section 20 of the Indian Merchandise Marks Act, 1889 (4 of 1889)
the words and figures "under section 75 of the Trade and
Merchandise Marks Act, 1958" shall be substituted; (v) in clause (f), in sub-clause (ii), for the words and figures
"under section 20 of the Indian Merchandise Marks Act, 1889 (4 of
1889)", the words and figures "under section 75 of the
Trade and Merchandise Marks Act, 1958" shall be substituted. 1898 5 The Code of Criminal Procedure, 1898. In Schedule II,- (i) in the heading to Chapter XVIII, the words "TRADE OR"
shall be omitted; (ii) in the heading above Section 482, the words "trade and'
shall be omitted; (iii) in the second column of the entry relating to Section 482,
the words "trade or" shall be omitted; (iv) in the second column of the entry relating to Section 483,
the words "trade or" shall be omitted; (v) in the second column of the entry relating to Section 485,
the words "or trade" shall be omitted; (vi) in the second column of the entry relating to Section 486,
the words "or trade" shall be omitted [1] Came into force on 25-11-1959, see Gazette of India, 1959, Extra. Pt.
II, section, 3(ii), p. 583 [2] Substituted by Act 58 of 1960, Section 3 and Second
Schedule, for "Registrar". [3] The words "and the Controller of Patents and Designs for the
purposes of the Indian Patents and Designs Act, 1911 (2 of
1911)" omitted by Act 39 of 1970, Section 163 (w.e.f.
20-4-72). [4] See Notification No. S.O. 2602, dated 25th November, 1959, Gazette of
India, Extra. 1959, Pt.II, section 3 (iii), pg.583. [5] See Trade and Merchandise Marks Rules, 1959, published in Gazette of
India, Extra., 1959, Pt., II, section 3 (ii), p. 584. [6] Substituted by Act 4 of 1986, Section 2 and Schedule wef.
15-5-1986. [7] Inserted by Act 58 of 1960, Section 3 and Second ScheduleTRADE AND MERCHANDISE MARKS ACT, 1958 [REPEALED]
PREAMBLE
Section 3 - High Court having
jurisdiction
Section 4 - Registrar of Trade
Marks
Section 5 - Trade Marks Registry
and offices thereof
Section 8 - Registration to be in respect of
particular goods
Section 9 - Requisites for registration in Parts A
and B of the register
Section 11 - Prohibition of registration of certain
marks
Section 12 - Prohibition of registration of
identical or deceptively similar trade marks
Section 13 - Prohibition of registration of names
of chemical elements
Section 14 - Use of names and representations of
living persons or persons recently dead
Section 15 - Registration of parts of trade marks
and of trade marks as a series
Section 16 - Registration of trade marks as
associated trade marks
Section 17 - Registration of trade marks subject to
disclaimer
Section 25 - Duration, renewal and restoration of
registration
Section 26 - Effect of removal from register for
failure to pay fee for renewal
Section 27 - No action for infringement of
unregistered trade mark
Section 31 - Registration to be prima fade evidence
of validity
Section 32 - Registration to be conclusive as to
validity after seven years
Section 34 - Saving for use of name, address or
description of goods
Section 35 - Saving for words used as name or
description of an article or substance
Section 36 - Power of registered proprietor to
assign and give receipts
Section 37 - Assign ability and transmissibility of
registered trade marks
Section 38 - Assignability and transmissibility of
unregistered trade marks
Section 39 - Restrictions on assignment or
transmission where multiple exclusive rights would be created
Section 40 - Restrictions on assignment or
transmission when exclusive rights would be created in different parts of India
Section 41 - Conditions for assignment otherwise
than in connection with the goodwill of a business
Section 42 - Assignability and transmissibility of
certification trade marks
Section 43 - Assignability and transmissibility of
associated trade marks
Section 44 - Registration of assignments and
transmissions
Section 45 - Proposed use of trade mark by company
to be formed
Section 46 - Removal from register and imposition
of limitations on ground of non-use
Section 47 - Defensive registration of well-known
trade marks
Section 49 - Application for registration as
registered users
Section 50 - Existing registration of registered
users not to have effect after three years
Section 51 - Power of registered user to take
proceedings against infringement
Section 52 - Power of Registrar to vary or cancel
registration as registered user
Section 53 - Registered user not to have right of
assignment or transmission
Section 54 - Use of one of associated or
substantial identical trade marks equivalent to use of another
Section 55 - Use of trade mark for export trade and
use when form of trade connec?tion changes
Section 56 - Power to cancel or vary registration
and to rectify the register
Section 59 - Adaptation of entries in register to
amended or substituted classification of goods
Section 60 - Certain provisions of this Act not
applicable to certification trade marks
Section 61 - Registration of certification trade
marks
Section 62 - Applications for registration of
certification trade marks
Section 63 - Consideration of applications for
registration by Central Government
Section 64 - Opposition to registration of
certification trade marks
Section 65 - Deposit of regulations governing the
use of a certification trade mark
Section 66 - Rights conferred by registration of
certification trade marks
Section 67 - Infringement of certification trade
marks
Section 68 - Acts not constituting infringement of
certification trade marks
Section 69 - Cancellation or varying of
registration
Section 70 - Registrar to give effect to orders of
Central Government
Section 72 - Restriction on registration of textile
goods
Section 74 - Stamping of piece goods, cotton yarn
and thread
Section 75 - Determination of character of textile
goods by sampling
Section 76 - Meaning of applying trade marks and trade
descriptions
Section 77 - Falsifying and falsely applying trade
marks
Section 78 - Penalty for applying false trade
marks, trade descriptions, etc
Section 79 - Penalty for selling goods to which a
false trade mark or false trade description is applied
Section 80 - Penalty for removing piece goods,
etc., contrary to section 74
Section 81 - Penalty for falsely representing a trade
mark as registered
Section 82 - Penalty for improperly describing a
place of business as connected with the Trade Marks Office
Section 83 - Penalty for falsification of entries
in the register
Section 86 - Exemption of certain persons employed
in ordinary course of business
Section 87 - Procedure where invalidity of
registration is pleaded by the accused
Section 90 - Evidence of origin of goods imported
by sea
Section 93 - Information as to commission of
offence
Section 94 - Punishment of abetment in India of
acts done out of India
Section 95 - Instructions by Central Government as
to permissible variations to be observed by criminal courts
Section 96 - Implied warranty on sale of marked
goods
Section 98 - Exercise of discretionary power by
Registrar
Section 103 - Preliminary advice by the Registrar
as to distinctiveness
Section 105 - Suit for infringement, etc., to be
instituted before District Court
Section 106 - Reliefs in suits for infringement or
for passing off
Section 107 - Application for rectification of
register to be made to High Court in certain cases
Section 108 - Procedure for application for
rectification before a High Court
Section 111 - Stay of proceedings where the
validity of registration of the trade mark is questioned, etc
Section 112 - Appearance of Registrar in legal
proceedings
Section 113 - Costs of Registrar in proceedings
before High Court
Section 114 - Registered user to be impleaded in
certain proceedings
Section 115 - Evidence of entries in register,
etc., and things done by the Registrar
Section 116 - Registrar and other officers not
compilable to produce register, etc
Section 117 - Power to require goods to show
indication of origin
Section 118 - Power to require information in
respect of imported goods bearing false trade marks
Section 120 - Groundless threats of legal
proceedings
Section 122 - Trade usage, etc., to be taken into
consideration
Section 126 - Reports of Registrar to be placed
before Parliament
Section 128 - Savings in respect of certain matters
in Chapter X
Section 129 - Declaration as to ownership of trade
mark not registrable under the Indian Registration Act, 1908
Section 131 - Special provisions relating to
applications for registration from citizens of convention countries
Section 133 - Power of Central Government to make
rules