[Act No. 47 of 1999] [30th December, 1999] An Act to amend and consolidate the law
relating to trade marks, to provide for registration and better protection of
trade marks for goods and services and for the prevention of the use of
fraudulent marks. Be it enacted by Parliament in the Fiftieth Year of the Republic of
India as follows:- (1) This Act may be called the Trade Marks Act, 1999. (2) It extends to the whole of India. (3) It shall come into force on such date[1] as
the Central Government may, by notification in the Official Gazette, appoint: Provided that different dates may be appointed for different provisions
of this Act, and any reference in any such provision to the commencement of
this Act shall be construed as a reference to the coming into force of that
provision. (1) In this Act, unless the context otherwise
requires,- (2) [2][***] (3) "assignment" means an assignment in
writing by act of the parties concerned; (4) "associated trade marks" means trade
marks deemed to be, or required to be, registered as associated trade marks
under this Act; (5) [3][***] (6) "certification trade mark" means a mark
capable of distinguishing the goods or services in connection with which it is
used in the course of trade which are certified by the proprietor of the mark
in respect of origin, material, mode of manufacture of goods or performance of
services, quality, accuracy or other characteristics from goods or services not
so certified and registrable as such under Chapter IX in respect of those goods
or services in the name, as proprietor of the certification trade mark, of that
person; (7) [4][***] (8) "collective mark" means a trade mark
distinguishing the goods or services of members of an association of persons
[not being a partnership within the meaning of the Indian Partnership Act, 1932
(9 of 1932)] which is the proprietor of the mark from those of others; (9) "deceptively similar".-A mark shall be
deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion; (i) "false trade description" means- (I) a trade description which is untrue or misleading
in a material respect as regards the goods or services to which it is applied;
or (II) any alteration of a trade description as regards
the goods or services to which it is applied, whether by way of addition,
effacement or otherwise, where that alteration makes the description untrue or
misleading in a material respect; or (III) any trade description which denotes or implies that
there are contained, as regards the goods to which it is applied, more yards or
meters than there are contained therein standard yards or standard metres; or (IV) any marks or arrangement or combination thereof
when applied- (a) to goods in such a manner as to be likely to lead
persons to believe that the goods are the manufacture or merchandise of some
person other than the person whose merchandise or manufacture they really are; (b) in relation to services in such a manner as to be
likely to lead persons to believe that the services are provided or rendered by
some person other than the person whose services they really are; or (V) any false name or initials of a person applied to
goods or services in such manner as if such name or initials were a trade
description in any case where the name or initials- (a) is or are not a trade mark or part of a trade mark;
and (b) is or are identical with or deceptively similar to
the name or initials of a person carrying on business in connection with goods
or services of the same description or both and who has not authorised the use
of such name or initials; and (c) is or are either the name or initials of a
fictitious person or some person not bonafide carrying on business in
connection with such goods or services, (10) 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; (11) "goods" means anything which is the
subject of trade or manufacture; (12) [5][***] (13) "limitations" (with its grammatical
variations) means any limitation of the exclusive right to the use of a trade
mark given by the registration of a person as proprietor thereof, including limitations
of that right as to mode or area of use within India or outside India; (14) "mark" includes a device, brand, heading,
label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof; (15) [6][***] (16) "name" includes any abbreviation of a
name; (17) "notify" means to notify in the Trade
Mark Journal published by the Registrar; (18) "package" includes any case, box,
container, covering, folder, receptacle, vessel, casket, bottle, wrapper,
label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork; (19) "permitted use", in relation to a
registered trade mark, means the use of trade mark- (i) by a registered user of the trade mark in relation
to goods or services- (a) with which he is connected in the course of trade;
and (b) in respect of which the trade mark remains
registered for the time being; and (c) for which he is registered as registered user; and (d) which complies with any conditions or limitations
to which the registration of registered user is subject; or (ii) by a person other than the registered proprietor
and registered user in relation to goods or services- (a) with which he is connected in the course of trade;
and (b) in respect of which the trade mark remains
registered for the time being; and (c) by consent of such registered proprietor in a
written agreement; and (d) which complies with any conditions or limitations
to which such user is subject and to which the registration of the trade mark
is subject; (20) [7]["prescribed"
means,- (i) in relation to proceedings before a High Court,
prescribed by rules made by the High Court; and (ii) in other cases, prescribed by rules made under this
Act;] (21) "register" means the Register of Trade
Marks referred to in sub-section (1) of section 6; (22) "registered" (with its grammatical variations)
means registered under this Act; (23) "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; (24) "registered trade mark" means a trade
mark which is actually on the register and remaining in force; (25) "registered user" means a person who is
for the time being registered as such under section 49; (26) "Registrar" means the Registrar of Trade
Marks referred to in section 3; (27) "service" means service of any
description which is made available to potential users and includes the
provision of services in connection with business of any industrial or
commercial matters such as banking, communication, education, financing,
insurance, chit funds, real estate, transport, storage, material treatment,
processing, supply of electrical or other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of news or
information and advertising; (28) "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 or
services according to a classification commonly used or recognised in the
trade; or (iii) as to fitness for the purpose, strength,
performance or behaviour of any goods, being "drug" as defined in the
Drugs and Cosmetics Act, 1940 (23 of 1940), or "food" as defined in
the Prevention of Food Adulteration Act, 1954 (37 of 1954); or (iv) as to the place or country in which or the time at
which any goods or services were made, produced or provided, as the case may
be; or (v) as to the name and address or other indication of
the identity of the manufacturer or of the person providing the services or of
the person for whom the goods are manufactured or services are provided; or (vi) as to the mode of manufacture or producing any
goods or providing services; or (vii) as to the material of which any goods are composed;
or (viii) as to any goods being the subject of an existing
patent, privilege or copyright, (29) and includes- (a) any description as to the use of any mark which
according to the custom of the trade is commonly taken to be an indication of
any of the above matters; (b) the description as to any imported goods contained
in any bill of entry or shipping bill; (c) any other description which is likely to be
misunderstood or mistaken for all or any of the said matters; (30) "trade mark" means a mark capable of
being represented graphically and which is capable of distinguishing the goods
or services of one person from those of others and may include shape of goods,
their packaging and combination of colours; and- (i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in relation to goods or services
for the purpose of indicating or so as to indicate a connection in the course
of trade between the goods or services, as the case may be, and some person
having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark
used or proposed to be used in relation to goods or services for the purpose of
indicating or so to indicate a connection in the course of trade between the
goods or services, as the case may be, and some person having the right, either
as proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person, and includes a
certification trade mark or collective mark; (31) "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; (32) "Technical Member" means a Member who is
not a Judicial Member; (33) [8][***] (34) [9][***] (35) "well-known trade mark", in relation to
any goods or services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that the
use of such mark in relation to other goods or services would be likely to be
taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services. (36) In this Act, unless the context otherwise requires,
any reference- (a) to "trade mark" shall include reference
to "collective mark" or "certification trade mark"; (b) to the use of a mark shall be construed as a
reference to the use of printed or other visual representation of the mark; (c) to the use of a mark,- (i) in relation to goods, shall be construed as a
reference to the use of the mark upon, or in any physical or in any other
relation whatsoever, to such goods; (ii) in relation to services, shall be construed as a
reference to the use of the mark as or as part of any statement about the
availability, provision or performance of such services; (d) to the Registrar shall be construed as including a
reference to any officer when discharging the functions of the Registrar in
pursuance of sub-section (2) of section 3; (e) to the Trade Marks Registry shall be construed as
including a reference to any office of the Trade Marks Registry. (4) For the purposes of this Act, goods and services
are associated with each other if it is likely that those goods might be sold
or otherwise traded in and those services might be provided by the same
business and so with descriptions of goods and descriptions of services. (5) For the purposes of this Act, "existing
registered trade mark" means a trade mark registered under the Trade and
Merchandise Marks Act, 1958 (43 of 1958) immediately before the commencement of
this Act. (1) The Central Government may, by notification in the
Official Gazette, appoint a person to be known as the Controller-General of
Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for
the purposes of this Act. (2) The Central Government may appoint such other
officers with such designations as it thinks fit for the purpose of
discharging, under the superintendence and direction of the Registrar, such
functions of the Registrar under this Act as he may from time to time authorise
them to discharge. Without prejudice to the generality of the
provisions of sub-section (2) of section 3, the Registrar may, by order in
writing and for reasons to be recorded therein, withdraw any matter pending
before an officer appointed under the said sub-section (2) and deal with such
matter himself either de novo or from the stage it was so withdrawn or transfer
the same to another officer so appointed who may, subject to special directions
in the order of transfer, proceed with the matter either de novo or from the
stage it was so transferred. (1) For the purposes of this Act, there shall be a
trade marks registry and the Trade Marks Registry established under the Trade
and Merchandise Marks Act, 1958 (43 of 1958) shall be the Trade Marks Registry
under this Act. (2) The head office of the Trade Marks Registry shall
be at such place as the Central Government may specify, and for the purpose of
facilitating the registration of trade marks, there may be established at such
places as the Central Government may think fit branch offices of the Trade
Marks Registry. (3) The Central Government may, by notification in the
Official Gazette, define the territorial limits within which an office of the
Trade Marks Registry may exercise its functions. (4) There shall be a seal of the Trade Marks Registry. (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 description of the proprietors, notifications of assignment and
transmissions, the names, addresses and descriptions of registered users,
conditions, limitations and such other matter relating to registered trade
marks as may be prescribed. (2) Notwithstanding anything contained in sub-Section (1),
it shall be lawful for the Registrar to keep the records wholly or partly in
computer floppies, diskettes or in any other electronic form subject to such
safeguards as may be prescribed. (3) Where such register is maintained wholly or partly
on computer under subsection (2) any reference in this Act to entry in the
register shall be construed as the reference to any entry as maintained on
computer or in any other electronic form. (4) No notice of any trust, express or implied or
constructive, shall be entered in the register and no such notice shall be
receivable by the Registrar. (5) The register shall be kept under the control and
management of the Registrar. (6) There shall be kept at each branch office of the
Trade Marks Registry a copy of the register and such of the other documents
mentioned in section 148 as the Central Government may, by notification in the
Official Gazette, direct. (7) The Register of Trade Marks, both Part A and Part
B, existing at the commencement of this Act, shall be incorporated in and form
part of the register under this Act. (1) The Registrar shall classify goods and services, as
far as may be, in accordance with the International classification of goods and
services for the purposes of registration of trade marks. (2) Any question arising as to the class within which
any goods or services falls shall be determined by the Registrar whose decision
shall be final. (1) The Registrar may publish in the prescribed manner
an alphabetical index of classification of goods and services referred to in
section 7. (2) Where any goods or services are not specified in
the alphabetical index of goods and services published under sub-section (1),
the classification of goods or services shall be determined by the Registrar in
accordance with sub-section (2) of section 7. (1) The trade marks- (a) which are devoid of any distinctive character, that
is to say, not capable of distinguishing the goods or services of one person
from those of another person; (b) which consist exclusively of marks or indications
which may serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of production of the goods or
rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications
which have become customary in the current language or in the bona fide and
established practices of the trade, shall not be registered : Provided that a trade mark shall not be refused
registration if before the date of application for registration it has acquired
a distinctive character as a result of the use made of it or is a well-known
trade mark. (2) A mark shall not be registered as a trade mark if- (a) it is of such nature as to deceive the public or
cause confusion; (b) it contains or comprises of any matter likely to
hurt the religious susceptibilities of any class or section of the citizens of
India; (c) it comprises or contains scandalous or obscene
matter; (d) its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950 (12 of 1950). (3) A mark shall not be registered as a trade mark if
it consists exclusively of- (a) the shape of goods which results from the nature of
the goods themselves; or (b) the shape of goods which is necessary to obtain a
technical result; or (c) the shape which gives substantial value to the
goods. Explanation.- For the purposes of this section, the
nature of goods or services in relation to which the trade mark is used or
proposed to be used shall not be a ground for refusal of registration. (1) A trade mark may be limited wholly or in part to
any combination of colours and any such limitation shall be taken into
consideration by the [10][Registrar
or the High Court, as the case may be,] 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. (1) Save as provided in section 12, a trade mark shall
not be registered if, because of- (a) its identity with an earlier trade mark and
similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier trade mark and the
identity or similarity of the goods or services covered by the trade mark, there
exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark. (2) A trade mark which- (a) is identical with or similar to an earlier trade
mark; and (b) is to be registered for goods or services which are
not similar to those for which the earlier trade mark is registered in the name
of a different proprietor, shall not be registered, if or to the extent, the
earlier trade mark is a well-known trade mark in India and the use of the later
mark without due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark. (3) A trade mark shall not be registered if, or to the
extent that, its use in India is liable to be prevented- (a) by virtue of any law in particular the law of
passing off protecting an unregistered trade mark used in the course of trade;
or (b) by virtue of law of copyright. (4) Nothing in this section shall prevent the
registration of a trade mark where the proprietor of the earlier trade mark or
other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12. Explanation.- For the purposes of this section,
earlier trade mark means- (a) [11][a
registered trade mark or an application under section 18 bearing an earlier
date of filing or an international registration referred to in section 36E or
convention application referred to in section 154 which has a date of
application earlier than that of the trade mark in question, taking account,
where appropriate, of the priorities claimed in respect of the trade marks;] (b) a trade mark which, on the date of the application
for registration of the trade mark in question, or where appropriate, of the
priority claimed in respect of the application, was entitled to protection as a
well-known trade mark. (5) A trade mark shall not be refused registration on
the grounds specified in subsections (2) and (3), unless objection on any one
or more of those grounds is raised in opposition proceedings by the proprietor
of the earlier trade mark. (6) The Registrar shall, while determining whether a
trade mark is a well-known trade mark, take into account any fact which he
considers relevant for determining a trade mark as a well-known trade mark
including- (i) the knowledge or recognition of that trade mark in
the relevant section of the public including knowledge in India obtained as a
result of promotion of the trade mark; (ii) the duration, extent and geographical area of any
use of that trade mark; (iii) the duration, extent and geographical area of any
promotion of the trade mark, including advertising or publicity and
presentation, at fairs or exhibition of the goods or services to which the
trade mark applies; (iv) the duration and geographical area of any
registration of or any application for registration of that trade mark under
this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights
in that trade mark; in particular, the extent to which the trade mark has been
recognised as a well-known trade mark by any court or Registrar under that
record. (7) The Registrar shall, while determining as to
whether a trade mark is known or recognised in a relevant section of the public
for the purposes of sub-section (6), take into account- (i) the number of actual or potential consumers of the
goods or services; (ii) the number of persons involved in the channels of
distribution of the goods or services; (iii) the business circles dealing with the goods or
services, to which that trade mark applies. (8) Where a trade mark has been determined to be
well-known in at least one relevant section of the public in India by any court
or Registrar, the Registrar shall consider that trade mark as a well-known
trade mark for registration under this Act. (9) The Registrar shall not require as a condition, for
determining whether a trade mark is a well-known trade mark, any of the
following, namely:- (i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) that the application for registration of the trade
mark has been filed in India; (iv) that the trade mark- (a) is well known in; or (b) has been registered in; or (c) in respect of which an application for registration
has been filed in, any jurisdiction other than India; or (v) that the trade mark is well-known to the public at
large in India. (10) While considering an application for registration
of a trade mark and opposition filed in respect thereof, the Registrar shall- (i) protect a well-known trade mark against the
identical or similar trade marks; (ii) take into consideration the bad faith involved
either of the applicant or the opponent affecting the right relating to the
trade mark. (11) Where a trade mark has been registered in good
faith disclosing the material information's to the Registrar or where right to
a trade mark has been acquired through use in good faith before the
commencement of this Act, then, nothing in this Act shall prejudice the
validity of the registration of that trade mark or right to use that trade mark
on the ground that such trade mark is identical with or similar to a well-known
trade mark. In the case of honest concurrent use or of other
special circumstances which in the opinion of the Registrar, make it proper so
to do, he may permit the registration by more than one proprietor of the trade
marks which are identical or similar (whether any such trade mark is already
registered or not) in respect of the same or similar goods or services, subject
to such conditions and limitations, if any, as the Registrar may think fit to
impose. No word- (a) which is the commonly used and accepted name of any
single chemical element or any single chemical compound (as distinguished from
a mixture) in respect of a chemical substance or preparation, or (b) which is declared by the World Health Organisation
and notified in the prescribed manner by the Registrar from time to time, as an
international non-proprietary name or which is deceptively similar to such
name, shall be registered as a trade mark and any such
registration shall be deemed for the purpose of section 57 to be an entry made
in the register without sufficient cause or an entry wrongly remaining on the
register, as the circumstances may require. 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
register 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 respect of the same or similar goods or services or
description of goods or description of services, which, while resembling each
other in the material particulars thereof, yet differ in respect of- (a) statement of the goods or services in relation to
which they are respectively used or proposed to be used; or (b) statement of number, price, quality or names of
places; or (c) other matter of a non-distinctive character which
does not substantially affect the identity of the trade mark; or (d) colour, seeks to register those trade marks, they
may be registered as a series in one registration. (1) Where a trade mark which is registered, or is the
subject of an application for registration, in respect of any goods or services
is identical with another trade mark which is registered, or 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 same services or description of
services 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 there is an identity or near resemblance of
marks that are registered, or are the subject of applications for registration
in the name of the same proprietor, in respect of goods and in respect of
services which are associated with those goods or goods of that description and
with those services or services of that description, sub-section (1) shall
apply as it applies as where there is an identity or near resemblance of marks
that are registered, or are the subject of applications for registration, in
the name of the same proprietor in respect of the same goods or description of
goods or same services or description of services. (3) Where a trade mark and any part thereof are, in
accordance with the provisions of sub-section (1) of section 15, registered as
separate trade marks in the name of the same proprietor, they shall be deemed
to be, and shall be registered as, associated trade marks. (4) All trade marks registered in accordance with the
provisions of sub-section (3) of section 15 as a series in one registration
shall be deemed to be, and shall be registered as, associated trade marks. (5) On application made in the prescribed manner by the
registered proprietor of two or more trade marks registered as associated trade
marks, the Registrar may dissolve the association as respects any of them if he
is satisfied that there would be no likelihood of deception or confusion being
caused if that trade mark were used by any other person in relation to any of
the goods or services or both in respect of which it is registered, and may
amend the register accordingly. (1) When a trade mark consists of several matters, its
registration shall confer on the proprietor exclusive right to the use of the
trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section
(1), when a trade mark- (a) contains any part- (i) which is not the subject of a separate application
by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the
proprietor as a trade mark; or (b) contains any matter which is common to the trade or
is otherwise of a non-distinctive character, the registration thereof shall not
confer any exclusive right in the matter forming only a part of the whole of
the trade mark so registered. (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. (2) A single application may be made for registration
of a trade mark for different classes of goods and services and fee payable
therefore shall be in respect of each such class of goods or services. (3) Every application under sub-section (1) shall be
filed in the office of the Trade Marks Registry within whose territorial limits
the principal place of business in India of the applicant or in the case of
joint applicants the principal place of business in India of the applicant
whose name is first mentioned in the application as having a place of business
in India, is situate: Provided that where the applicant or any of the
joint applicants does not carry on business in India, the application shall be
filed in the office of the Trade Marks Registry within whose territorial limits
the place mentioned in the address for service 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 a refusal or conditional acceptance
of an application, the Registrar shall record in writing the grounds for such
refusal or conditional acceptance and the materials used by him in arriving at
his decision. Where, after the acceptance of an application for
registration of a trade mark but before its registration, the Registrar is
satisfied- (a) that the application has been accepted in error; or (b) that in the circumstances of the case the trade
mark should not be registered or should be registered subject to conditions or
limitations or to conditions additional to or different from the conditions or
limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if
he so desires, withdraw the acceptance and proceed as if the application had
not been accepted. (1) When an application for registration of a trade
mark has been accepted whether absolutely or subject to conditions or
limitations, the Registrar shall, as soon as may be after acceptance, cause the
application as 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 acceptance if it relates to a trade mark to
which sub-section (1) of section 9 and subsections (1) and (2) of section 11
apply, 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) [12][Any person
may, within four months from the date of the advertisement or re-advertisement
of an application for registration, give notice in writing in the prescribed
manner and on payment of such fee as may be prescribed, to the Registrar, of
opposition to the registration.] (2) The Registrar shall serve a copy of the notice on
the applicant for registration and, within two months from the receipt by the
applicant of such copy of the notice of opposition, the applicant shall send to
the Registrar in the prescribed manner a 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
applicant sending a counter-statement after receipt of a copy of such notice
neither resides nor carries on business in India, the Registrar may require him
to give security for the costs of 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. (7) The Registrar may, on request, permit correction of
any error in, or any amendment of, a notice of opposition or a
counter-statement on such terms as he thinks just. The Registrar may, on such terms as he thinks just,
at any time, whether before or after acceptance of an application for
registration under section 18, permit the correction of any error in or in connection
with the application or permit an amendment of the application: Provided that if an amendment is made to a single
application referred to in subsection (2) of section 18 involving division of
such application into two or more applications, the date of making of the
initial application shall be deemed to be the date of making of the divided
applications so divided. (1) Subject to the provisions of section 19, when an
application for registration of a trade mark has been accepted and either- (a) the application has not been opposed and the time
for notice of opposition has expired; or (b) the application has been opposed and the opposition
has been decided in favour of the applicant, the Registrar shall, unless the
Central Government otherwise directs, register the said trade mark [13][within
eighteen months of the filing of the application] and the trade mark when
registered shall be registered as of the date of the making of the said
application and that date shall, subject to the provisions of section 154, be
deemed to be the date of registration. (3) 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. (4) 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. (5) 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 no one of them is entitled as between
himself and the other or others of them to use it except- (a) on behalf of both or all of them; or (b) in relation to an article or service with which
both or all of them are connected in the course of trade, those persons may be
registered as joint proprietors of the trade mark, and this Act shall have
effect in relation to any rights to the use of the trade mark vested in those
persons as if those rights had been vested in a single person. (1) The registration of a trade mark, after the
commencement of this Act, shall be for a period of ten years, but may be
renewed from time to time in accordance with the provisions of this 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 ten years from the date of
expiration of the original registration or of the last renewal of registration,
as the case may be (which date is in this section referred to as the expiration
of the last registration). (3) At the prescribed time before the expiration of the
last registration of a trade mark the Registrar shall send notice in the
prescribed manner to the registered proprietor of the date of expiration and
the conditions as to payment of fees and otherwise 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: Provided that the Registrar shall not remove the
trade mark from the register if an application is made in the prescribed form
and the prescribed fee and surcharge is paid within six months from the
expiration of the last registration of the trade mark and shall renew the
registration of the trade mark for a period of ten years under subsection (2). (4) Where a trade mark has been removed from the
register for non-payment of the prescribed fee, the Registrar shall, after six
months and within one year from the expiration of the last registration of the
trade mark, on receipt of an application in the prescribed form and on payment
of the prescribed fee, if satisfied that it is just so to do, restore the trade
mark to the register and renew the registration of the trade mark either
generally or subject to such conditions or limitations as he thinks fit to
impose, for a period of ten 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 renewal, 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 [14][Registrar
or the High Court, as the case may be,] 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 or services as the
goods of another person or as services provided by another person, or the
remedies in respect thereof. (1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to the registered proprietor
of the trade mark the exclusive right to the use of the trade mark in relation
to the goods or services in respect of which the trade mark is registered and
to obtain relief in respect of infringement of the trade mark in the manner
provided by this Act. (2) The exclusive right to the use of a trade mark
given under sub-section (1) shall be subject to any conditions and limitations
to which the registration is subject. (3) Where two or more persons are registered
proprietors of trade marks, which are identical with or nearly resemble each
other, the exclusive right to the use of any of those trade marks shall not
(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 those 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 a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation to goods or services in
respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which because of- (a) its identity with the registered trade mark and the
similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered by such registered
trade mark; or (c) its identity with the registered trade mark and the
identity of the goods or services covered by such registered trade mark, is
likely to cause confusion on the part of the public, or which is likely to have
an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section
(2), the court shall presume that it is likely to cause confusion on the part
of the public. (4) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered
trade mark; and (b) is used in relation to goods or services which are
not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered trade
mark. (5) A registered trade mark is infringed by a person if
he uses such registered trade mark, as his trade name or part of his trade
name, or name of his business concern or part of the name, of his business
concern dealing in goods or services in respect of which the trade mark is
registered. (6) For the purposes of this section, a person uses a
registered mark, if, in particular, he- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the registered trade mark, or
offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers
or in advertising. (7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material intended to be used for
labeling or packaging goods, as a business paper, or for advertising goods or
services, provided such person, when he applied the mark, knew or had reason to
believe that the application of the mark was not duly authorised by the
proprietor or a licensee. (8) A registered trade mark is infringed by any
advertising of that trade mark if such advertising- (a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered
trade mark consist of or include words, the trade mark may be infringed by the
spoken use of those words as well as by their visual representation and
reference in this section to the use of a mark shall be construed accordingly. (1) Nothing in section 29 shall be construed as
preventing the use of a registered trade mark by any person for the purposes of
identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in
industrial or commercial matters, and (b) is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where- (a) the use in relation to goods or services indicates
the kind, quality, quantity, intended purpose, value, geographical origin, the
time of production of goods or of rendering of services or other
characteristics of goods or services; (b) a trade mark is registered subject to any
conditions or limitations, the use of the trade mark in any manner in relation
to goods to be sold or otherwise traded in, in any place, or in relation to
goods to be exported to any market (c) or in relation to services for use or available or
acceptance in any place or country outside India or in any other circumstances,
to which, having regard to those conditions or limitations, the registration
does not extend; (d) the use by a person of a trade mark- (i) in relation to goods connected in the course of
trade with the proprietor or a registered user of the trade mark if, as to
those goods or a bulk or which they form part, the registered proprietor or the
registered user conforming to the permitted use has applied the trade mark and
has not subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark; or (ii) in relation to services to which the proprietor of
such mark or of a registered user conforming to the permitted use has applied
the mark, where the purpose and effect of the use of the mark is to indicate,
in accordance with the fact, that those services have been performed by the
proprietor or a registered user of the mark; (e) the use of a trade mark by a person in relation to
goods adapted to form part of, or to be accessory to, other goods or services
in relation to which the trade mark has been used without infringement of the
right given by registration under this Act 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 or services are so adapted, and neither the purpose nor the effect
of the use of the trade mark is to indicate, otherwise than in accordance with
the fact, a connection in the course of trade between any person and the goods
or services, as the case may be; (f) the use of a registered trade mark, being one of
two or more trade marks registered under this Act which are identical or nearly
resemble each other, in exercise of the right to the use of that trade mark
given by registration under this Act. (3) Where the goods bearing a registered trade mark are
lawfully acquired by a person, the sale of the goods in the market or otherwise
dealing in those goods by that person or by a person claiming under or through
him is not infringement of a trade by reason only of- (a) the registered trade mark having been assigned by
the registered proprietor to some other person, after the acquisition of those
goods; or (b) the goods having been put on the market under the
registered trade mark by the proprietor or with his consent. (4) Sub-section (3) shall not apply where there exists
legitimate reasons for the proprietor to oppose further dealings in the goods
in particular, where the condition of the goods, has been changed or impaired
after they have been put on the market. (1) In all legal proceedings relating to a trade mark
registered under this Act (including applications under section 57), the
original registration of the trade mark and of all subsequent assignments and
transmissions of the trade mark shall be prima facie evidence of the validity
thereof. (2) In all legal proceedings as aforesaid a registered
trade mark shall not be held to be invalid on the ground that it was not a
registrable trade mark under section 9 except upon evidence of distinctiveness
and that such evidence was not submitted to the Registrar before registration,
if it is proved that the trade mark had been so used by the registered
proprietor or his predecessor in title as to have become distinctive at the
date of registration. Where a trade mark is registered in breach of
sub-section (1) of section 9, it shall not be declared invalid if, in
consequence of the use which has been made of it, it has after registration and
before commencement of any legal proceedings challenging the validity of such
registration, acquired a distinctive character in relation to the goods or
services for which it is registered. (1) Where the proprietor of an earlier trade mark has
acquiesced for a continuous period of five years in the use of a registered
trade mark, being aware of that use, he shall no longer be entitled on the basis
of that earlier trade mark- (a) to apply for a declaration that the registration of
the later trade mark is invalid, or (b) to oppose the use of the later trade mark in
relation to the goods or services in relation to which it has been so used, unless
the registration of the later trade mark was not applied in good faith. (2) Where sub-section (1) applies, the proprietor of
the later trade mark is not entitled to oppose the use of the earlier trade
mark, or as the case may be, the exploitation of the earlier right,
notwithstanding that the earlier trade mark may no longer be invoked against his
later trade mark. Nothing in this Act shall entitle the proprietor or
a registered user of registered trade mark to interfere with or restrain the
use by any person of a trade mark identical with or nearly resembling it in
relation to goods or services in relation to which that person or a predecessor
in title of his has continuously used that trade mark from a date prior- (a) to the use of the first-mentioned trade mark in
relation to those goods or services be the proprietor or a predecessor in title
of his; or (b) to the date of registration of the first-mentioned
trade mark in respect of those goods or services in the name of the proprietor
of a predecessor in title of his; whichever is the earlier, and the Registrar shall
not refuse (on such use being proved), to register the second mentioned trade
mark by reason only of the registration of the first mentioned trade mark. Nothing in this Act shall entitle the proprietor or
a registered user of a registered trade mark to interfere with any bona fide
use by a person of his own name or that of his place of business, or of the
name, or of the name of the place of business, of any of his predecessors in
business, or the use by any person of any bona fide description of the
character or quality of his goods or services. (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 or service: Provided that, if it is proved either- (a) that there is a well known and established use of
the said word as the name or description of the article or substance or service
by a person or persons carrying on trade therein, not being used in relation to
goods or services connected in the course of trade with the proprietor or a
registered user of the trade mark or (in the case of a certification trade
mark) in relation to goods or services certified by the proprietor; or (b) that the article or substance was formerly manufactured
under a patent that a period of two years or more after the cesser of the
patent has elapsed and that the said word is the only practicable name or
description of the article or substance, the provisions of sub-section (2)
shall apply. (2) Where the facts mentioned in clause (a) or clause
(b) of the proviso to sub-section (1) are proved with respect to any words,
then,- (a) for the purpose of any proceedings under section 57
if the trade mark consists solely of such words, the registration of the trade
mark, so far as regards registration in respect of the article or substance in
question or of any goods of the same description, or of the services or of any
services of the same description, as the case requires, shall be deemed to be
an entry wrongly remaining on the register; (b) for the purposes of any other legal proceedings
relating to the trade mark,- (i) if the trade mark consists solely of such words,
all rights of the proprietor under this Act or any other law to the use of the
trade mark; or (ii) if the trade mark contains such words and other
matter, all such right of the proprietor to the use of such words, in relation
to the article or substance or to any goods of the same description, or to the
service or to any services of the same description, as the case requires, shall
be deemed to have ceased on the date on which the use mentioned in clause (a)
of the proviso to subsection (1) first became well known and established or at
the expiration of the period of two years mentioned in clause (b) of the said
proviso. [15][The
provisions of this Chapter shall apply to international applications and
international registrations under the Madrid Protocol.] [16][In this
Chapter, unless the context otherwise requires,- (a) "application", in relation to a
Contracting State or a Contracting Organisation, means an application made by a
person who is a citizen of, or is domiciled in, or has a real and effective industrial
or commercial establishment in, that Contracting State or a State which is a
member of that Contracting Organisation, as the case may be. Explanation.- For the purposes of this clause,
"real and effective industrial or commercial establishment" means and
includes any establishment where some bona fide industrial or commercial
activity takes place and need not necessarily be the principal place of
business; (b)
"basic
application" means an application for the registration of a trade mark
filed under section 18 and which is used as a basis for applying for an
international registration; (c)
"basic
registration" means the registration of a trade mark under section 23 and
which is used as a basis for applying for an international registration; (d)
"Common
Regulations" means the Regulations concerning the implementation of the
Madrid Protocol; (e)
"Contracting
Organisation" means a Contracting Party that is an intergovernmental
organisation; (f)
"Contracting
Party" means a Contracting State or Contracting Organisation party to the
Madrid Protocol; (g)
"Contracting
State" means a country party to the Madrid Protocol; (h)
"international
application" means an application for international registration or for
extension of the protection resulting from an international registration to any
Contracting Party made under the Madrid Protocol; (i)
"International
Bureau" means the International Bureau of the World Intellectual Property
Organisation; (j)
"international
registration" means the registration of a trade mark in the register of
the International Bureau effected under the Madrid Protocol; (k)
"Madrid
Agreement" means the Madrid Agreement Concerning the International
Registration of Marks adopted at Madrid on the 14th day of April, 1891, as
subsequently revised and amended; (l) "Madrid Protocol" means the Protocol
relating to the Madrid Agreement Concerning the International Registration of
Marks adopted at Madrid on the 27th day of June, 1989, as amended from time to
time.] [17][Notwithstanding
anything contained in sub-section (3) of section 5, an international
application shall be dealt with by the head office of the Trade Marks Registry
or such branch office of the Registry, as the Central Government may, by notification
in the Official Gazette, specify.] (1) [18][Where an
application for the registration of a trade mark has been made under section 18
or a trade mark has been registered under section 23, the applicant or the
registered proprietor may make an international application on the form
prescribed by the Common Regulations for international registration of that
trade mark. (2) A person holding an international registration may
make an international application on the form prescribed by the Common
Regulations for extension of the protection resulting from such registration to
any other Contracting Party. (3) An international application under sub-section (1)
or sub-section (2) shall designate the Contracting Parties where the protection
resulting from the international registration is required. (4) The Registrar shall certify in the prescribed
manner that the particulars appearing in the international application
correspond to the particulars appearing, at the time of the certification, in
the application under section 18 or the registration under section 23, and
shall indicate the date and number of that application or the date and number
of that registration as well as the date and number of the application from
which that registration resulted, as the case may be, and shall within the
prescribed period, forward the international application to the International
Bureau for registration, also indicating the date of the international
application. (5) Where at any time before the expiry of a period of
five years of an international registration, whether such registration has been
transferred to another person or not, the application under section 18 or the
registration under section 23, as the case may be, has been withdrawn or
cancelled or has expired or has been finally refused in respect of all or some
of the goods or services listed in the international registration, the
protection resulting from such international registration shall cease to have
effect: Provided that where an appeal is made against the
decision of registration and an action requesting for withdrawal of application
or an opposition to the application has been initiated before the expiry of the
period of five years of an international registration, any final decision
resulting into withdrawal, cancellation, expiration or refusal shall be deemed
to have taken place before the expiry of five years of the international
registration. (6) The Registrar shall, during the period of five
years beginning with the date of international registration, transmit to the
International Bureau every information referred to in sub-section (5). (7) The Registrar shall notify the International Bureau
the cancellation to be effected to an international registration keeping in
view the current status of the basic application or the basic registration, as
the case may be.] (1) [19][The
Registrar shall, after receipt of an advice from the International Bureau about
any international registration where India has been designated, keep a record
of the particulars of that international registration in the prescribed manner. (2) Where, after recording the particulars of any
international registration referred to in sub-section (1), the Registrar is
satisfied that in the circumstances of the case the protection of trade mark in
India should not be granted or such protection should be granted subject to
conditions or limitations or to conditions additional to or different from the
conditions or limitations subject to which the international registration has
been accepted, he may, after hearing the applicant if he so desires, refuse
grant of protection and inform the International Bureau in the prescribed
manner within eighteen months from the date on which the advice referred to in
sub-section (1) was received. (3) Where the Registrar finds nothing in the
particulars of an international registration to refuse grant of protection
under sub-section (2), he shall within the prescribed period cause such
international registration to be advertised in the prescribed manner. (4) The provisions of sections 9 to 21 (both
inclusive), 63 and 74 shall apply mutatis mutandis in relation to an
international registration as if such international registration was an
application for registration of a trade mark under section 18. (5) When the protection of an international
registration has not been opposed and the time for notice of opposition has
expired, the Registrar shall within a period of eighteen months of the receipt
of advice under sub-section (1) notify the International Bureau its acceptance
of extension of protection of the trade mark under such international
registration and, in case the Registrar fails to notify the International
Bureau, it shall be deemed that the protection has been extended to the trade
mark. (6) Where a registered proprietor of a trade mark makes
an international registration of that trade mark and designates India, the
international registration from the date of the registration shall be deemed to
replace the registration held in India without prejudice to any right acquired
under such previously held registration and the Registrar shall, upon request
by the applicant, make necessary entry in the register referred to in sub-section
(1) of section 6. (7) A holder of international registration of a trade
mark who designates India and who has not been extended protection in India
shall have the same remedy which is available to any person making an
application for the registration of a trade mark under section 18 and which has
not resulted in registration under section 23. (8) Where at any time before the expiry of a period of
five years of an international registration, whether such registration has been
transferred to another person or not, the related basic application or, as the
case may be, the basic registration in a Contracting Party other than India has
been withdrawn or cancelled or has expired or has been finally refused in
respect of all or some of the goods or services listed in the international
registration, the protection resulting from such international registration in
India shall cease to have effect.] (1) [20][From the
date of the international registration of a trade mark where India has been
designated or the date of the recording in the register of the International
Bureau about the extension of the protection resulting from an international
registration of a trade mark to India, the protection of the trade mark in India
shall be the same as if the trade mark had been registered in India. (2) The indication of classes of goods and services
given by the applicant shall not bind the Registrar with regard to the
determination of the scope of the protection of the trade mark.] (1) [21][The
international registration of a trade mark at the International Bureau shall be
for a period of ten years and may be renewed for a period of ten years from the
expiry of the preceding period. (2) Subject to payment of a surcharge prescribed by the
rules, a grace period of six months shall be allowed for renewal of the
international registration.] 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. Notwithstanding
anything in any other law to the contrary, a registered trade mark shall,
subject to the provisions of this Chapter, be assignable and transmissible,
whether with or without the goodwill of the business concerned and in respect
either of all the goods or services in respect of which the trade mark is
registered or of some only of those goods of services. An
unregistered trade mark may be assigned or transmitted with or without the
goodwill of the business concerned. (1) Notwithstanding anything in sections 38 and 39, a
trade mark shall not be assignable or transmissible in a case in which as a
result of the assignment or 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- (a) same goods or services; (b) same description of goods or services; (c) goods or services or description of goods or
services which are associated with each other, of trade marks nearly resembling
each other or of identical trade mark, if having regard to the similarity of
the goods and services and to the similarity of the trade marks, the use of the
trade marks in exercise of those rights would be likely to 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 limitations
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 there from, or in relation to goods to be exported to the same
market outside India or in relation to services for use at any place in India
or any place outside India in relation to services available for acceptance in
India. (2) The proprietor of a registered trade mark who
proposes to assign it may submit to the Registrar in the prescribed manner a
statement of case setting out the circumstances and the Registrar may issue to
him a certificate stating whether, having regard to the similarity of the goods
or services and of the trade marks referred to in the case, the proposed
assignment would or would not be invalid under sub-section (1), and a
certificate so issued shall, subject to appeal and unless it is shown that the
certificate was obtained by fraud or misrepresentation, be conclusive as to the
validity or invalidity under sub-section (1) of the assignment insofar 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 45 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 sections 38 and 39, a trade mark shall not
be assignable or transmissible in a case in which as a result of the assignment
or transmission there would in the circumstances subsist, whether under this
Act or any other law- (a) an exclusive right in one of the persons concerned,
to the use of the trade mark limited to use in relation to goods to be sold or
otherwise traded in, in any place in India, or in relation to services for use,
or services available for acceptance in any place in India; and (b) an exclusive right in another of these persons
concerned, to the use of a trade mark nearly resembling the first-mentioned
trade mark or of an identical trade mark in relation to- (i) the same goods or services; or (ii) the same description of goods or services; or (iii) services which are associated with those goods or
goods of that description or goods which are associated with those services or
services of that description, limited to use in relation to goods to be sold or
otherwise traded in, or services for use, or available for acceptance, in any
other place in India: Provided that in any such case, on application in the prescribed manner
by the proprietor of a trade mark who proposes to assign it, or by a person who
claims that a registered trade mark has been transmitted to him or to a
predecessor in title of his 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 40
if application for the registration under section 45 of the title of the person
becoming entitled is made within six months from the date on which the 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 unregistered
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 or services for which the trade mark is registered accompanied
by the transfer of the goodwill of the business concerned in those goods or
services only; or (b) an assignment of a trade mark which is used in
relation to goods exported from India or in relation to services for use
outside India if the assignment is accompanied by the transfer of the goodwill
of the export business only. A
certification trade mark shall not be assignable or transmissible otherwise
than with the consent of the Registrar, for which application shall be made in
writing in the prescribed manner. 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) [22][Where a person becomes entitled by assignment or transmission
to a registered trade mark, he shall apply in the prescribed manner to the
Registrar to register his title, and the Registrar shall, on receipt of the
application, register him as the proprietor of the trade mark in respect of the
goods or services in respect of which the assignment or transmission has
effect, and shall cause particulars of such assignment or transmission to be
entered on the register. (2) The Registrar may require the applicant to furnish
evidence or further evidence in proof of title only where there is a reasonable
doubt about the veracity of any statement or any document furnished. (3) 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 and in all other cases the Registrar shall dispose of the
application within the prescribed period. (4) Until an application under sub-section (1) has been
filed, the assignment or transmission shall be ineffective against a person
acquiring a conflicting interest in or under the registered trade mark without
the knowledge of assignment or transmission.] (1) No application for the registration of a trade mark
in respect of any goods or services shall be refused nor shall permission for
such registration be withheld, on the ground only that it appears that the
applicant does not use or propose to use the trade mark if the Registrar is
satisfied that- (a) a company is about to be formed and registered
under the Companies Act, 1956 (1 of 1956) and that the applicant intends to
assign the trade mark to that company with a view to the use thereof in
relation to those goods or services by the company, or (b) the proprietor intends it to be used by a person,
as a registered user after the registration of the trade mark. (2) The provisions of section 47 shall have effect, in
relation to a trade mark registered under the powers conferred by this
sub-section, as if for the reference, in clause (a) of sub-section (1) of that
section, to the intention on the part of an applicant for registration that a
trade mark should be used by him there were substituted a reference to the intention
on his part that it should be used by the company or registered user concerned. (3) The [23][Registrar
or the High Court, as the case may be,] may, in a case to which sub-section (1)
applies, require the applicant to give security for the costs of any proceedings
relating to any opposition or appeal, and in default of such security being
duly given, may treat the application as abandoned. (4) Where in a case to which sub-section (1) applies, a
trade mark in respect of any goods or services is registered in the name of an
applicant who, relies on intention to assign the trade mark to a company, then,
unless within such period as may be prescribed or within such further period
not exceeding six months as the Registrar may, on application being made to him
in the prescribed manner, allow, the company has been registered as the
proprietor of the trade mark in respect of those goods or services, 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) A registered trade mark may be taken off the
register in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner to the Registrar or
the [24][High
Court] by any person aggrieved on the ground either- (a) that the trade mark was registered without any bona
fide intention on the part of the applicant for registration that it should be
used in relation to those goods or services by him or, in a case to which the
provisions of section 46 apply, by the company concerned or the registered
user, as the case may be, and that there has, in fact, been no bona fide use of
the trade mark in relation to those goods or services by any proprietor thereof
for the time being up to a date three months before the date of the
application; or (b) that up to a date three months before the date of
the application, a continuous period of five years from the date on which the
trade mark is actually entered in the register or longer had elapsed during
which the trade mark was registered and during which there was no bona fide use
thereof in relation to those goods or services by any proprietor thereof for
the time being: Provided that except where the applicant has been permitted under
section 12 to register an identical or nearly resembling trade mark in respect
of the goods or services in question, or where the [25][Registrar
or the High Court, as the case may be,] is of opinion that he might properly be
permitted so to register such a trade mark, the [26][Registrar
or the High Court, as the case may be,] may refuse an application under clause
(a) or clause (b) in relation to any goods or services, if it is shown that
there has been, before the relevant date or during the relevant period, as the
case may be, bona fide use of the trade mark by any proprietor thereof for the
time being in relation to- (i) goods or services of the same description; or (ii) goods or services associated with those goods or
services of that description being goods or services, as the case may be, in
respect of which the trade mark is registered. (2) Where in relation to any goods or services in
respect of which a trade mark is registered- (a) the circumstances referred to in clause (b) of
sub-section (1) are shown to exist so far as regards non-use of the trade mark
in relation to goods to be sold, or otherwise traded in a particular place in
India (otherwise than for export from India), or in relation to goods to be exported
to a particular market outside India; or in relation to services for use or
available for acceptance in a particular place in India or for use in a
particular market outside India; and (b) a person has been permitted under section 12 to
register an identical or nearly resembling trade mark in respect of those
goods, under a registration extending to use in relation to goods to be so
sold, or otherwise traded in, or in relation to goods to be so exported, or in
relation to services for use or available for acceptance in that place or for
use in that country, or the [27][Registrar
or the High Court, as the case may be,] is of opinion that he might properly be
permitted so to register such a trade mark, on application by that person in
the prescribed manner to the [28][High
Court] or to the Registrar, the [29][Registrar
or the High Court, as the case may be,] 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 subsection (1) or for the purposes of sub-section (2)
on any non-use of a trade mark which is shown to have been due to special
circumstances in the trade, which includes restrictions on the use of the trade
mark in India imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to the goods or services to
which the application relates. (1) Subject to the provisions of section 49, a person
other than the registered proprietor of a trade mark may be registered as a
registered user thereof in respect of any or all of the goods or services in
respect of which the trade mark is registered. (2) The permitted use of a trade mark shall be deemed
to be used by the proprietor thereof, and shall be deemed not to be used by a
person other than the proprietor, for the purposes of section 47 or for any
other purpose for which such use is material 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- (a) the agreement in writing or a duly authenticated
copy thereof, entered into between the registered proprietor and the proposed
registered user with respect to the permitted use of the trade mark; and (b) an affidavit made by the registered proprietor or
by some person authorised to the satisfaction of the Registrar to act on his
behalf,- (i) giving particulars of the relationship, existing or
proposed, between the registered proprietor and the proposed registered user,
including particulars showing the degree of control by the proprietor over the
permitted use which their relationship 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; (ii) stating the goods or services in respect of which
registration is proposed; (iii) stating the conditions or restrictions, if any,
proposed with respect to the characteristics of the goods or services, to the
mode or place of permitted use, or to any other matter; (iv) stating whether the permitted use is to be for a
period or without limit of period, and, if for a period, the duration thereof;
and (c) such further documents or other evidence as may be
required by the Registrar or as may be prescribed. (2) When the requirements of sub-section (1) have been
complied with, the Registrar shall register the proposed registered user in
respect of the goods or services as to which he is so satisfied. (3) The Registrar shall issue notice in the prescribed'
manner of the registration of a person as a registered user, to other
registered users of the trade mark, if any. (4) The Registrar shall, if so requested by the
applicant, take steps for securing that information given for the purposes of
an application under this section (other than matters entered in the register)
is not disclosed to rivals in trade. (1) Without prejudice to the provisions of section 57,
the registration of a person as registered user- (a) may be varied by the Registrar as regards the goods
or services in respect of which it has effect on the application in writing in
the prescribed manner of the registered proprietor of the trade mark; (b) may be cancelled by the Registrar on the
application in writing in the prescribed manner of the registered proprietor or
of the registered user or of any other registered user of the trade mark; (c) may be cancelled by the Registrar on the
application in writing in the prescribed manner of any person on any of the
following grounds, namely:- (i) that the registered user has used the trade mark
otherwise than in accordance with the agreement under clause (a) of sub-section
(1) of section 49 or in such way as to cause or to be likely to cause,
deception or confusion; (ii) that the proprietor or the registered user
misrepresented, or failed to disclose, some fact material to the application
for registration which if accurately represented or disclosed would not have
justified the registration of the registered user; (iii) that the circumstances have changed since the date
of registration in such a way that at the date of such application for
cancellation they would not have justified registration of the registered user; (iv) that the registration ought not to have been
effected having regard to rights vested in the applicant by virtue of a
contract in the performance of which he is interested; (d) may be cancelled by the Registrar on his own motion
or on the application in writing in the prescribed manner by any person, on the
ground that any stipulation in the agreement between the registered proprietor
and the registered user regarding the quality of the goods or services in
relation to which the trade mark is to be used is either not being enforced or
is not being complied with; (e) may be cancelled by the Registrar in respect of any
goods or services in relation to which the trade mark is no longer registered. (2) The Registrar shall issue notice in the prescribed
manner in respect of every application under this section to the registered
proprietor and each registered user (not being the applicant) of the trade mark. (3) The procedure for canceling a registration shall be
such as may be prescribed: Provided that before canceling of registration, the registered
proprietor shall be given a reasonable opportunity of being heard. (1) The Registrar may, at any time during the
continuance of the registration of the registered user, by notice in writing,
require the registered proprietor to confirm to him within one month that the
agreement filed under clause (a) of subsection (1) of section 49 continues to
be in force. (2) If the registered proprietor fails to furnish the
confirmation within one month as required under sub-section (1), the registered
user shall cease to be the registered user on the day immediately after the
expiry of the said period and the Registrar shall notify the same. (1) Subject to any agreement subsisting between the
parties, a registered user may institute proceedings for infringement in his
own name as if he were the registered proprietor, making the registered
proprietor a defendant and the rights and obligations of such registered user
in such case being concurrent with those of the registered proprietor. (2) Notwithstanding anything contained in any other
law, a registered proprietor so added as defendant shall not be liable for any
costs unless he enters an appearance and takes part in the proceedings. A person
referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2
shall have no right to institute any proceeding for any infringement. Nothing in this Act shall confer on a registered user of a trade mark
any assignable or transmissible right to the use thereof. Explanation I.- The right of a registered user of a trade mark shall not
be deemed to have been assigned or transmitted within the meaning of this
section in the following cases, namely:- (a) where the registered user being an individual
enters into a partnership with any other person for carrying on the business
concerned; but in any such case the firm may use the trade mark, if otherwise
in force, only for so long as the registered user is a member of the firm; (b) where the registered user being a firm subsequently
undergoes a change in its constitution; but in any such case the reconstituted
firm may use the trade mark, if otherwise in force, only for so long as any
partner of the original firm at the time of its registration as registered
user, continues to be a partner of the reconstituted firm. Explanation II.-For the purposes of Explanation 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 [30][Registrar
or the High Court, as the case may be,] may, if 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 purpose of this Act, be deemed to be also use of any trade mark
being a part thereof and registered in accordance with sub-section (1) of
section 15 in the name of the same proprietor. (3) Notwithstanding anything in section 32, the use of
part of the registered trade mark in sub-section (2) shall not be conclusive as
to its evidence of distinctiveness for any purpose under this Act. (1) The application in India of trade mark to goods to
be exported from India or in relation to services for use outside India and any
other act done in India in relation to goods to be so exported or services so
rendered outside India which, if done in relation to goods to be sold or
services provided or otherwise traded in within India would constitute use of a
trade mark therein, shall be deemed to constitute use of the trade mark in
relation to those goods or services for any purpose for which such use is
material under this Act or any other law. (2) The use of a registered trade mark in relation to
goods or services between which and the person using the mark any form of
connection in the course of trade subsists shall not be deemed to be likely to
cause deception or confusion on the ground only that the mark has been or is
used in relation to goods or services between which and the said person or a
predecessor in title of that person a different form of connection in the
course of trade subsisted or subsists. (1) On application made in the prescribed manner to
the [31][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 or defect in any entry in the register, may apply in the prescribed
manner to the [32][High
Court] or to the Registrar, and the [33][Registrar
or the High Court, as the case may be,] may make such order for making,
expunging or varying the entry as it may think fit. (3) The [34][Registrar
or the High Court, as the case may be,] 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 [35][Registrar
or the High Court, as the case may be,], 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 [36][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. (1) The Registrar may, on application made in the
prescribed manner by the registered proprietor,- (a) correct any error in the name, address or
description of the registered proprietor of a trade mark, or any other entry
relating to the trade mark; (b) enter any change in the name, address or description
of the person who is registered as proprietor of a trade mark; (c) cancel the entry of a trade mark on the register; (d) strike out any goods or classes of goods or
services from those in respect of which a trade mark is registered, and may
make any consequential amendment or alteration in the certificate of
registration, and for that purpose, may require the certificate of registration
to be produced to him. (2) The Registrar may, on application made in the
prescribed manner by a registered user of a trade mark, and after notice to the
registered proprietor, correct any error, or enter any change, in the name,
address or description of the registered user. (1) The registered proprietor of a trade mark may apply
in the prescribed manner to the Registrar for leave to add to or alter the
trade mark in any manner not substantially affecting the identity thereof, and
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 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 matter. (3) Where leave is granted under this section, the
trade mark as altered shall be advertised in the prescribed manner, unless the
application has already been advertised under sub-section (2). (1) The Registrar shall not make any amendment of the
register which would have the effect of adding any goods or classes of goods or
services to those 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 or
services: Provided that this sub-section, shall not apply when the Registrar is
satisfied that compliance therewith would involve undue complexity and that the
addition or antedating, as the case may be, would not affect any substantial
quantity of goods or services and would not substantially prejudice the rights
of any person. (2) A proposal so to amend the register shall be
brought to the notice of the registered proprietor of the trade mark affected
and advertised in the prescribed manner, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed amendment
contravenes the provisions of sub-section (1). (1) The provisions of this Act shall apply to
collective marks subject to the provisions contained in this Chapter. (2) In relation to a collective mark the reference in
clause (zb) of sub-section (1) of section 2 to distinguishing the goods or
services of one person from those of others shall be construed as a reference
to distinguishing the goods or services of members of an association of persons
which is the proprietor of the mark from those of others. A collective
mark shall not be registered if it is likely to deceive or cause confusion on
the part of public in particular if it is likely to be taken to be something
other than a collective mark, and in such case the Registrar may require that a
mark in respect of which application is made for registration comprises some
indication that it is a collective mark. (1) An application for registration of a collective
mark shall be accompanied by the regulations governing the use of such
collective mark. (2) The regulations referred to in sub-section (1)
shall specify the persons authorised to use the mark, the conditions of
membership of the association and, the conditions of use of the mark, including
any sanctions against misuse and such other matters as may be prescribed. If it
appears to the Registrar that the requirements for registration are satisfied,
he shall accept the application together with the regulations, either
unconditionally or subject to such conditions including amendments of the said
regulations, if any, as he may deem fit or refuse to accept it and if accepted
shall notify the regulations. The
regulations referred to in sub-section (1) of section 63 shall be open to
public inspection in the same way as the register as provided in section 148. Any
amendment of regulations referred to in subsection (1) of section 63 shall not
be effective unless the amended regulations are filed with the Registrar, and
accepted and published by him in accordance with section 64. In a suit
for infringement instituted by the registered proprietor of a collective mark
as plaintiff the court shall take into account any loss suffered or likely to
be suffered by authorised users and may give such directions as it thinks fit
as to the extent to which the plaintiff shall hold the proceeds of any
pecuniary remedy on behalf of such authorised users. The registration of a collective mark may also be removed from the
register on the ground- (a) that the manner in which the collective mark has
been used by the proprietor-or authorised user has caused it to become liable
to mislead the public as a collective mark; or (b) that the proprietor has failed to observe, or to
secure the observance of the regulations governing the use of the mark. Explanation I.- For the purposes of this Chapter, unless the context
otherwise requires, "authorised user" means a member of an
association authorised to use the registered collective mark of the
association. Explanation II.- For the purposes of this Act, use of a collective mark
by an authorised user referred to in Explanation I shall be deemed to be the
use by the registered proprietor thereof. The following provisions of this Act shall not apply to certification
trade marks, that is to say,- (a) clauses (a) and (c) of sub-section (1) of section
9; (b) sections 18,20 and 21, except as expressly applied
by this Chapter; (c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54
and sub-section (2) of section 56; (d) Chapter XII, except section 107. A mark shall
not be registrable as a certification trade mark in the name of a person who
carries on a trade in goods of the kind certified or a trade of the provision
of services of the kind certified. (1) An application for the registration of a mark as a
certification trade mark shall be made to the Registrar in the prescribed
manner by the person proposed to be registered as the proprietor thereof, and
accompanied by a draft of the regulations to be deposited under section 74. (2) Subject to the provisions of section 70, the
provisions of sections 18, 19 and 22 shall apply in relation to an application
under this section as they apply in relation to an application under section
18, subject to the modification that references therein to acceptance of an
application shall be construed as references to authorization to proceed with
an application. (3) In dealing under the said provision with an
application under this section, the [37][Registrar
or the High Court, as the case may be,] shall have regard to the like
considerations, so far as relevant, as if the application were application
under section 18 and to any other considerations 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) The Registrar shall consider the application made
under section 71 with regard to the following matters, namely:- (a) whether the applicant is competent to certify the
goods in respect of which the mark is to be registered; (b) whether the draft of the regulations to be filed
under section 74 is satisfactory; (c) whether in all the circumstances the registration
applied for would be to the public advantage, and may either- (i) refuse the application; or (ii) accept the application and approve the said draft
of the regulations either without modification and unconditionally or subject
to any conditions or limitations, or to any amendments or modifications of the
application or of the regulations, which he thinks requisite having regard to
any of the said matters. (2) Except in the case of acceptance and approval
without modification and unconditionally, the Registrar shall not decide any
matter under sub-section (1) without giving the applicant an opportunity of
being heard. 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. (1) There shall be filed at the Trade Marks Registry in
respect of every mark registered as a certification trade mark regulations for
governing the use thereof, which shall include provisions as to the cases in
which the proprietor is to certify goods or services and to authorise the use
of the certification trade mark, and may contain any other provisions which the
Registrar may by general or special order, require or permit to be 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 filed shall be open to inspection in like manner as the register
as provided in section 148. (2) The regulations so filed may, on the application of
the registered proprietor, be altered by the Registrar. (3) The Registrar may cause such application to be
advertised in any case where it appears to him expedient so to do, and where he
does so, if within the time specified in the advertisement any person gives
notice of opposition to the application, the Registrar shall not decide the
matter without giving the parties an opportunity of being heard. The right
conferred by section 78 is infringed by any person who, not being the
registered proprietor of the certification trade mark or a person authorised by
him in that behalf under the regulations filed under section 74, using it in
accordance therewith, uses in the course of trade, a mark, which is identical
with, or deceptively similar to the certification trade mark in relation to any
goods or services in respect of which it is registered, and in such manner as
to render the use of the mark likely to be taken as being a use as a trade
mark. (1) Notwithstanding anything contained in this Act, the
following acts do not constitute an infringement of the right to the use of a
registered certification trade mark- (a) where a certification trade mark is registered
subject to any conditions or limitations entered on the register, the use of
any such mark in any mode, in relation to goods to be sold or otherwise traded
in any place, or in relation to goods to be exported to any market or in
relation to services for use or available for acceptance in any place, country
or territory or in any other circumstances, to which having regard to any such
limitations, the registration does not extend; (b) the use of a certification trade mark in relation
to goods or services certified by the proprietor of the mark if, as to those
goods or services or a bulk of which they form part, the proprietor or another
in accordance with his authorisation under 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 or services adapted to form part of, or to be accessory to, other
goods in relation to which the mark has been used without infringement of the
right given as aforesaid or might for the time being be so used, if the use of
the mark is reasonably necessary in order to indicate that the goods or
services as so adapted and neither the purpose nor the effect of the use of the
mark is to indicate otherwise than in accordance with the fact that the goods
or services are certified by the proprietor. (2) Clause (b) of sub-section (1) shall not apply to
the case of use consisting of the application of a certification trade mark to
goods or services, notwithstanding that they are such goods or services as are
mentioned in that clause if such 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. Section 77 - Cancellation or
varying of registration of certification trade marks The Registrar may, on the application in the prescribed manner of any
person aggrieved and after giving the proprietor an opportunity of opposing the
application, make such order as he thinks fit for expunging or varying any
entry in the register to a certification trade mark, or for varying the
regulations, on any of the following grounds, namely:- (a) that the proprietor is no longer competent, in the
case of any of the goods or services in respect of which the mark is
registered, to certify those goods or services; (b) that the proprietor has failed to observe any
provisions of the regulations to be observed on his part; (c) that it is no longer to the public advantage that the
mark should remain registered; (d) that it is requisite for the public advantage that
if the mark remains registered, the regulations should be varied. Section 78 - Rights conferred by
registration of certification trade marks (1) Subject to the provisions of sections 34, 35 and
76, the registration of a person as a proprietor of certification trade mark in
respect of any goods or services shall, if valid, give to that person the
exclusive right to the use of the mark in relation to those goods or services. (2) The exclusive right to the use of a certification
trade mark given under sub-section (1) shall be subject to any conditions and
limitations to which the registration is subject. Section 79 - Textile goods [38][***] [39][***] [40][***] [41][***] CHAPTER 11 [42][APPEALS] [43][***] [44][***] [45][***] [46][***] [47][***] [48][***] [49][***] [50][***] [51][***] (1)
Any person aggrieved by an
order or decision of the Registrar under this Act, or the rules made there
under may prefer an appeal to the [53][High Court] within three months from
the date on which the order or decision sought to be appealed against is
communicated to such person preferring the appeal. (2)
No appeal shall be admitted
if it is preferred after the expiry of the period specified under sub-section
(1): Provided
that an appeal may be admitted after the expiry of the period specified
therefore, if the appellant satisfies the [54][High Court] that he had sufficient
cause for not preferring the appeal within the specified period. (3)
An appeal to the [55][High Court] shall be in the prescribed
form and shall be verified in the prescribed manner and shall be accompanied by
a copy of the order or decision appealed against and by such fees as may be
prescribed. [56][***] [57][***] On
ceasing to hold the office, the erstwhile Chairperson, Vice-Chairperson or
other Members shall not appear before the Registrar][58] [59][***] [60][***] (1)
An application for
rectification of the register made to the [62][High
Court] under section 57 shall be in such form as may be prescribed. (2)
A certified copy of every
order or judgment of the [63][High
Court] relating to a registered trade mark under this Act shall be communicated
to the Registrar by the Board and the Registrar shall give effect to the order
of the Board and shall, when so directed, amend the entries in, or rectify, the
register in accordance with such order. (1)
The Registrar shall have the
right to appear and be heard- (a)
in any legal proceedings
before the [64][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 [65][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 [66][High
Court]. (3)
Unless the [67][High
Court] otherwise directs, the Registrar may, in lieu of appearing, submit a
statement in writing signed by him, giving such particulars as he thinks proper
of the proceedings before him relating to the matter in issue or of the 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 knowledge as Registrar, and such statement shall be evidence in the
proceeding. [68][***] [69][***] (1)
A person shall be deemed to
apply a trade mark or mark or trade description to goods or services who- (a)
applies it to the goods
themselves or uses it in relation to services; or (b)
applies it to any package in
or with which the goods are sold, or exposed for sale, or had in possession for
sale or for any purpose of trade or manufacture, or (c)
places, encloses or annexes
any goods which are sold, or exposed for sale, or had in possession for sale or
for any purpose of trade or manufacture, in or with any package or other thing
to which a trade mark or mark or trade description has been 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 or services in connection with which it is used are designated or
described by that trade mark or mark or trade description; or (e)
in relation to the goods or
services uses a trade mark or trade description in any sign, advertisement,
invoice, catalogue, business letter, business paper, price list or other
commercial document and goods are delivered or services are rendered to 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. (3)
A person shall be deemed to falsely
apply to goods or services a trade mark who, without the assent of the
proprietor of the trade mark,- (a)
applies such trade mark or a
deceptively similar mark to goods or services or any package containing goods; (b)
uses any package bearing a
mark which is identical with or deceptively similar to the trade mark of such
proprietor, for the purpose of packing, filling or wrapping therein any goods
other than the genuine goods of the proprietor of the trade mark. (4)
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. (5)
In any prosecution for
falsifying a trade mark or falsely applying a trade mark to goods or services,
the burden of proving the assent of the proprietor shall lie on the accused. Any person who- (a)
falsifies any trade mark; or (b)
falsely applies to goods or
services any trade mark; or (c)
makes, disposes of, or has
in his possession, any die, block, machine, plate or other instrument for the
purpose of falsifying or of being used for falsifying, a trade mark; or (d)
applies any false trade
description to goods or services; or (e)
applies to any goods to
which an indication of the country or place in which they were made or produced
or the name and address of the manufacturer or person for whom the goods are
manufactured is required to be applied under section 139, a false 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 139; or (g)
causes any of the things
above-mentioned in this section to be done, shall, unless he proves that he acted, without
intent to defraud, be punishable with imprisonment for a term which shall not
be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two lakh
rupees: Provided that the court may, for
adequate and special reasons to be mentioned in the judgment, impose a sentence
of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees. Any person who sells, lets for hire or
exposes for sale, or hires or has in his possession for sale, goods or things,
or provides or hires services, to which any false trade mark or false trade
description is applied or which, being required under section 139 to have
applied to them an indication of the country or place in which they were made
or produced or the name and address of the manufacturer, or person for whom the
goods are manufactured or services provided, as the case may be, are without
the indications so required, shall, unless he proves,- (a)
that, having taken all
reasonable precautions against committing an offence against this section, he
had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trade mark or trade description or that any offence had been
committed in respect of the goods or services; or (b)
that, on demand by or on
behalf of the prosecutor, he gave all the information in his power with respect
to the person from whom he obtained such goods or things or services; or (c)
that otherwise he had acted
innocently, be punishable with imprisonment for a term which shall not be less
than six months but which may extend to three years and with fine which shall
not be less than fifty thousand rupees but which may extend to two lakh rupees: Provided that the court may, for
adequate and special reasons to be mentioned in the judgment, impose a sentence
of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees. Whoever having already been convicted of
an offence under section 103 or section 104 is again convicted of any such
offence shall be punishable for the second and for every subsequent offence,
with imprisonment for a term which shall not be less than one year but which
may extend to three years and with fine which shall not be less than one lakh
rupees but which may extend to two lakh rupees: Provided that the court may, for
adequate and special reasons to be mentioned in the judgment, impose a sentence
of imprisonment for a term of less than one year or a fine of less than one
lakh rupees: Provided further that for the purposes
of this section, no cognizance shall be taken of any conviction made before the
commencement of this Act. [70][***] (1)
No person shall make any
representation- (a)
with respect to a mark, not
being a registered trade mark, to the effect that it is a registered trade
mark; or (b)
with respect to a part of a
registered trade mark, not being a part separately registered as a trade mark,
to the effect that it is separately registered as a trade mark; or (c)
to the effect that a
registered trade mark is registered in respect of any goods or services in
respect of which it is not in fact registered; or (d)
to the effect that
registration of a trade mark gives an exclusive right to the use thereof in any
circumstances in which, having regard to limitation entered on the register,
the registration does not in fact give that right. (2)
If any person contravenes
any of the provisions of sub-section (1), he shall be [71][liable
to penalty of a sum equal to one half per cent. of the total sales or turnover,
as the case may be, in business or of the gross receipts in profession, as
computed in the audited accounts of such person, or a sum equal to five lakh
rupees, whichever is less]. (3)
For the purposes of this
section, the use in India in relation to a trade mark of the word
"registered", or of any other expression, symbol or sign referring
whether expressly or impliedly to registration, shall be deemed to import a
reference to registration in the register, except- (a)
where that word or other
expression, symbol or sign is used in direct association with other words
delineated in characters at least as large as those in which that word or other
expression, symbol or sign is delineated and indicating that the reference is
to registration as a trade mark under the law of a country outside India being
a country under the law of which the registration referred to is in fact in
force; or (b)
where that other expression,
symbol or sign is of itself such as to indicate that the reference is to such
registration as is mentioned in clause (a); or (c)
where that word is used in
relation to a mark registered as a trade mark under the law of a country outside
India and in relation solely to goods to be exported to that country or in
relation to services for use in that country. [72][***] [73][***] The provisions of sections 102, 103, 104
and 105 shall, in relation to a registered trade mark or proprietor of such
mark, be subject to the rights created or recognised by this Act and no act or
omission shall be deemed to be an offence under the aforesaid sections if,- (a)
the alleged offence relates
to a registered trade mark and the act or omission is permitted under this Act;
and (b)
the alleged offence relates
to a registered or an unregistered trade mark and the act or omission is
permitted under any other law for the time being in force. (1)
Where a person is convicted
of an offence under section 103 or section 104 or section 105 or is acquitted
of an offence under section 103 or section 104 on proof that he acted without
intent to defraud, or under section 104 on proof of the matters specified in
clause (a), clause (b) or clause (c) of that section, the court convicting or
acquitting him may direct the forfeiture to Government of all goods and things
by means of, or in relation to, which the offence has been committed, or but
for such proof as aforesaid would have been committed. (2)
When a forfeiture is
directed on a conviction and an appeal lies against the conviction, an appeal
shall lie against the forfeiture also. (3)
When a forfeiture is
directed on acquittal and the goods or things to which the direction relates
are of value exceeding fifty rupees, an appeal against the forfeiture may be
preferred, within thirty days from the date of the direction, to the court to
which in appealable cases appeals lie from sentences of the court which
directed the forfeiture. (4)
When a forfeiture is
directed on a conviction, the court, before whom the person is convicted, may
order any forfeited articles to be destroyed or otherwise disposed of as the
court thinks fit. Where a person accused of an offence
under section 103 proves- (a)
that in the ordinary course
of his business he is employed on behalf of other persons to apply trade marks
or trade descriptions, or as the case may be, to make dies, blocks, machines,
plates, or other instruments for making, or being used in making, trade marks;
and (b)
that in the case which is
the subject of the charge he was so employed, and was not interested in the
goods or other thing by way of profit or commission dependent on the sale of
such goods or providing of services, as the case may be; and (c)
that, having taken all
reasonable precautions against committing the offence charged, he had, at the
time of the commission of the alleged offence, no reason to suspect the
genuineness of the trade mark or trade description; and (d)
that, on demand made by or
on behalf of the prosecutor, he gave all the information in his power with
respect to the persons on whose behalf the trade mark or trade description was
applied, he shall be acquitted. The Registrar may, by
an order, authorise an officer referred to in section 3, to be adjudicating
officer for holding an inquiry and imposing penalty under the provisions of
this Act, in the manner as may be prescribed, after giving a reasonable
opportunity of being heard. (1)
Whoever
aggrieved by an order of the adjudicating officer under section 112A may prefer
an appeal to the appellate authority, who shall be an officer at least one rank
above the adjudicating officer, within a period of sixty days from the date of
receipt of the order, as the Central Government may by notification authorise
in this behalf (2)
Every
appeal under this section shall be preferred in such form and manner as may be
prescribed. (3)
An
appeal may be admitted after the expiry of the period of sixty days if the
appellant satisfies the appellate authority that he had sufficient cause for
not preferring the appeal within that period. (4)
No
appeal shall be disposed of unless the appellant has been given a reasonable
opportunity of being heard. (6)
The
appellate authority referred to in sub-section (1) shall dispose of the appeal
within sixty days from the date of filing. (7)
Notwithstanding
anything contained in this Act, if the person fails to comply with the order of
the adjudicating officer under section 112A or the order of the appellate
authority under this section, as the case may be, within ninety days of such
order, he shall, in addition to the penalty, be punishable with fine of one
lakh rupees or imprisonment for a term which may extend to one year, or with
both.][74]
(1)
Where the offence charged
under section 103 or section 104 or section 105 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 court is satisfied
that such defence is prima facie tenable, it shall not proceed with the charge
but shall adjourn the proceeding for three months from the date on which the
plea of the accused is recorded to enable the accused to file an application
before the 1[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
court that he has made such application within the time so limited or within
such further time as the court may for sufficient cause allow, the further
proceedings in the prosecution shall stand stayed till the disposal of such
application for rectification. (c)
If within a period of three
months or within such extended time as may be allowed by the court the accused
fails to apply to the [75][High
Court] for rectification of the register, the court 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 [76][Registrar
or the High Court, as the case may be,], the court shall stay the further
proceedings in the prosecution pending the disposal of the application
aforesaid and shall determine the charge against the accused in conformity with
the result 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 association 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 107 or section 108 or section 109 except
on complaint in writing made by the Registrar or any officer authorised by him
in writing: Provided that in relation to clause (c)
of sub-section (1) of section 107, a court shall take cognizance of an offence
on the basis of a certificate issued by the Registrar to the effect that a
registered trade mark has been represented as registered in respect of any
goods or services in respect of which it is not in fact registered. (2)
No court inferior to that of
a Metropolitan Magistrate or Judicial Magistrate of the first class shall try
an offence under this Act. (3)
The offences under section
103 or section 104 or section 105 shall be cognizable. (4)
Any police officer not below
the rank of deputy superintendent of police or equivalent, may, if he is
satisfied that any of the offences referred to in sub-section (3) has been, is
being, or is likely to be, committed, search and seize without warrant the
goods, die, block, machine, plate, other instruments or things involved in
committing the offence, wherever found, and all the articles so seized shall,
as soon as practicable, be produced before a Judicial Magistrate of the first
class or Metropolitan Magistrate, as the case may be: Provided that the police officer, before
making any search and seizure, shall obtain the opinion of the Registrar on
facts involved in the offence relating to trade mark and shall abide by the
opinion so obtained. (5)
Any person having an
interest in any article seized under sub-section (4), may, within fifteen days
of such seizure, make an application to the Judicial Magistrate of the first
class or Metropolitan Magistrate, as the case may be, for such article being
restored to him and the Magistrate, after hearing the applicant and the
prosecution, shall make such order on the application as he may deem fit. In the case of goods
brought into India by sea, evidence of the port of shipment shall, in a
prosecution for an offence under this Act or under clause (b) of section
112 of the Customs Act, 1962 (52 of 1962),
relating to confiscation of goods under clause (d) of section
111 and notified by the Central Government
under clause (n) of sub-section (2) of section 11 of
the said Act for the protection of trade marks relating to import of goods, be
prima facie evidence of the place or country in which the goods are 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 deems
reasonable having regard to all the circumstances of the case and the conduct
of the parties and the costs so awarded shall be recoverable as if they were a
fine. No prosecution for an
offence under this Act or under clause (b) of section 112 of
the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under
clause (d) of section 111 and
notified by the Central Government under clause (n) of sub-section (2) of section
11 of the said Act for the protection of
trade marks, relating to import of goods shall be commenced after expiration of
three years next after the commission of the offence charged, or two years
after the discovery thereof by the prosecutor, whichever expiration first
happens. An officer of the
Government whose duty it is to take part in the enforcement of the provisions
of this Chapter shall not be compelled in any court to say whence he got any
information as to the commission of any offence against this Act. If any person, being
within India, abets the commission, without India, of any act which, if
committed in India, would, under this Act, be an offence, he may be tried for
such abetment in any place in India in which he may be found, and be punished
therefore with the punishment to 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 recognized by criminal courts as permissible in the case of any
goods. No suit or other
legal proceedings shall lie against any person in respect of anything which is
in good faith done or intended to be done in pursuance of this Act. Every person appointed under this
Act [77][***]
shall be deemed to be a public servant within the meaning of section
21 of the Indian Penal Code (45 of 1860). (1)
Where in any suit for
infringement of a trade mark- (a)
the defendant pleads that
registration of the plaintiff's trade mark is invalid; or (b)
the defendant raises a
defence under clause (e) of sub-section (2) of section 30 and the plaintiff
pleads the invalidity of registration of the defendant's trade mark, the court
trying the suit (hereinafter referred to as the court), shall,- (i)
if any proceedings for
rectification of the register in relation to the plaintiff's or defendant's
trade mark are pending before the Registrar or the Appellate Board, stay the
suit pending the final disposal of such proceedings; (ii)
if no such proceedings are
pending and the court is satisfied that the plea regarding the invalidity of
the registration of the plaintiff's or defendant's trade mark is prima facie
tenable, raise an issue regarding the same and adjourn the case for a period of
three months from the date of the framing of the issue in order to enable the
party concerned to apply to the [78][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 as it relates to the issue as to the
validity of the registration of the trade mark. (6)
The stay of a suit for the
infringement of a trade mark under this section shall not preclude the court
from making any interlocutory order (including any order granting an injunction
directing account to be kept, appointing a receiver or attaching any property),
during the period of the stay of the suit. (1)
Where in a suit for
infringement of a registered trade mark the validity of the registration of the
plaintiff's trade mark is questioned by the defendant or where in any such suit
the defendant raises a defence under clause (e) of sub-section (2) of section
30 and the plaintiff questions the validity of the registration of the
defendant's trade mark, the issue as to the validity of the registration of the
trade mark concerned shall be determined only on an application for the
rectification of the register and, notwithstanding anything contained in
section 47 or section 57, such application shall be made to the [79][High
Court] and not to the Registrar. (2)
Subject to the provisions of
sub-section (1), where an application for rectification of the register is made
to the Registrar under section 47 or section 57, the Registrar may, if he
thinks fit, refer the application at any stage of the proceedings to the [80][High
Court]. Where a mark or a
trade mark or trade description has been applied to the goods on sale or in the
contract for sale of any goods or in relation to any service, the seller shall
be deemed to warrant that the mark is a genuine mark and not falsely applied,
or that the trade description is not a false trade description within the
meaning of this Act unless the contrary is expressed in writing signed by or on
behalf of the seller and delivered at the time of the sale of goods or
providing of services on 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 157, make such orders as to costs
as he considers reasonable, and any such order shall be executable as a decree
of a civil court: Provided that the Registrar shall have
no power to award costs to or against any party on an appeal to him against a
refusal of the proprietor of a certification trade mark to certify goods or
provision of services or to authorise the use of the mark; (c)
the Registrar may, on an
application made in the prescribed manner, review his own decision. Subject to the provisions of section
131, the Registrar shall not exercise any discretionary or other power vested
in him by this Act or the rules made thereunder adversely to a person applying
for the exercise of that power without (if so required by that person within
the prescribed time) giving to the 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
proceeding under this Act (not being a proceeding before [81][***]
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 proceeding his successor in interest in his place,
or, if the Registrar is of opinion that the interest of the deceased person is
sufficiently represented by the surviving parties, permit the proceeding to
continue without the substitution of his successor in interest. (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 this Act), whether
the time so specified has expired or not, he may, subject to such conditions as
he may think fit to impose, extend the time and inform the parties accordingly. (2)
Nothing in sub-section (1)
shall be deemed to require the Registrar to hear the parties before disposing
of an application for extension of time, and no appeal shall lie from any order
of the Registrar under this section. Where, in the opinion
of the Registrar, an applicant is in default in the prosecution of an
application filed under this Act or any Act relating to trade marks in force
prior to the commencement of this Act, the Registrar may, by notice require the
applicant to remedy the default within a time specified and after giving him,
if so, desired, an opportunity of being heard, treat the application as
abandoned, unless the default is remedied within the time specified in the
notice. (1)
The Registrar may, on
application made to him in the prescribed manner by any person who proposes to
apply for the registration of a trade mark, give advice as to whether the trade
mark appears to him prima facie to be distinctive. (2)
If, on an application for
the registration of a trade mark as to which the Registrar has given advice as
aforesaid in the affirmative made within three months after the advice was
given, the Registrar, after further investigation or consideration, gives
notice to the applicant of objection on the ground that the trade mark is not
distinctive, the applicant shall be entitled, on giving notice of withdrawal of
the application within the prescribed period, to have repaid to him any fee
paid on the filing of the application. (1)
No suit- (a)
for the infringement of a
registered trade mark; or (b)
relating to any right in a
registered trade mark; or (c)
for passing off arising out
of the use by the defendant of any trade mark which is identical with or
deceptively similar to the plaintiff's trade mark, whether registered or
unregistered, shall be instituted in any court inferior to a District Court
having jurisdiction to try the suit. (2)
For the purpose of clauses
(a) and (b) of sub-section (1), a "District Court having
jurisdiction" shall, notwithstanding anything contained in the Code of Civil
Procedure, 1908 (5 of 1908) or any other law for the time being in force,
include a District Court within the local limits of whose jurisdiction, at the
time of the institution of the suit or other proceeding, the person instituting
the suit or proceeding, or, where there are more than one such persons any of
them, actually and voluntarily resides or carries on business or personally
works for gain. Explanation.-For the purposes of
sub-section (2), "person" includes the registered proprietor and the
registered user. (1)
The relief which a court may
grant in any suit for infringement or for passing off referred to in section
134 includes injunction (subject to such terms, if any, as the court thinks
fit) and at the option of the plaintiff, either damages or an account of
profits, together with or without any order for the delivery-up of the
infringing labels and marks for destruction or erasure. (2)
The order of injunction
under sub-section (1) may include an ex prate injunction or any interlocutory
order for any of the following matters, namely:- (a)
for discovery of documents; (b)
preserving of infringing
goods, documents or other evidence which are related to the subject-matter of
the suit; (c)
restraining the defendant
from disposing of or dealing with his assets in a manner which may adversely
affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff. (3)
Notwithstanding anything
contained in sub-section (1), the court shall not grant relief by way of
damages (other than nominal damages) or on account of profits in any case- (a)
where in a suit for
infringement of a trade mark, the infringement complained of is in relation to
a certification trade mark or collective mark; or (b)
where in a suit for
infringement the defendant satisfies the court- (i)
that at the time he
commenced to use the trade mark complained of in the suit, he was unaware and
had no reasonable ground for believing that the trade mark of the plaintiff was
on the register or that the plaintiff was a registered user using by way of
permitted use; and (ii)
that when he became aware of
the existence and nature of the plaintiff's right in the trade mark, he
forthwith ceased to use the trade mark in relation to goods or services in
respect of which it was registered; or (c)
where in a suit for passing
off, the defendant satisfies the court- (i)
that at the time he
commenced to use the trade mark complained of in the suit he was unaware and
had no reasonable ground for believing that the trade mark of the plaintiff was
in use; and (ii)
that when he became aware of
the existence and nature of the plaintiff's trade mark he forthwith ceased to
use the trade mark complained of. (1)
In every proceeding under
Chapter VII or under section 91, every registered user of a trade mark using by
way of permitted use, who is not himself an applicant in respect of any
proceeding 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 148
purporting to be certified by the Registrar and sealed with the seal of the
Trade Marks Registry shall be admitted in evidence in all courts and in all
proceedings without further proof or production of the original. (2)
A certificate purporting to
be under the hand of the Registrar as to any entry, matter or thing that he is
authorised by this Act or the rules to make or do shall be prima facie evidence
of the entry having been made, and of the contents thereof, or of the matter or
things having been done or not done. The Registrar or any
officer of the Trade Marks Registry shall not, in any legal proceedings to
which he is not a party, be compellable to produce the register or any other
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
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 wholesale or retail
or both. (3)
No notification under this
section shall be issued, unless application is made for its issue by persons or
associations substantially representing the interests of dealers in, or
manufacturers, producers, or users of, the goods concerned, or unless 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 they
apply to the making of a rule or bye-law the making of which is subject to the
condition of previous publication. (5)
A notification under this
section shall not apply to goods made or produced beyond the limits of India
and imported into India, if in respect of those goods, the Commissioner of
Customs is satisfied at the time of importation that they are intended for
exportation whether after transhipment in or transit through India or
otherwise. (1)
The proprietor or a licensee
of a registered trade mark may give notice in writing to the Collector of
Customs to prohibit the importation of any goods if the import of the said
goods constitute infringement under clause (c) of sub-section (6) of section
29. (2)
Where goods, which are
prohibited to be imported into India by notification of the Central Government
under clause (n) of sub-section (2) of Section 11 of
the Customs Act, 1962 (52 of 1962), for the protection of trade marks, and are
liable to confiscation on importation under that Act, are imported into India,
the Commissioner of Customs if, upon representation made to him, he has reason
to believe that the trade mark complained of is used as a false trade mark, may
require the importer of the goods, or his 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. (3)
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 liable to penalty of ten
thousand rupees: Provided that the
penalty under this section shall be levied and recovered by such authority
under the Customs Act, 1962 (52 of 1962) for this purpose.][82] (4)
Any information obtained
from the importer of the goods or his agent under this section may be
communicated by the Commissioner of Customs to the registered proprietor or
registered user of the trade mark which is alleged to have been used as a false
trade mark. If in any legal proceeding for
rectification of the register before the [83][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 [84][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
comes into question the said proprietor on obtaining a final order or judgment
in his favour affirming validity of the registration of the trade mark shall,
unless the said final order or judgment for sufficient reason directs
otherwise, be entitled to his full cost charges and expenses as between legal
practitioner and client. (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 proceeding,
a person aggrieved may, whether the person making the threats is or is not the
registered proprietor or the registered user of the trade mark, bring a suit
against the first-mentioned person and may obtain a declaration to the effect
that the threats are unjustifiable, and an injunction against the continuance
of the threats and may recover such damages (if any) as he has ' sustained,
unless the first-mentioned person satisfies the court that the 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 52 with due
diligence commences and prosecutes an action against the person threatened 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 or 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 proceeding relating to a trade
mark, the [85][Registrar
or the High Court, as the case may be,] shall admit evidence of the usages of
the trade concerned and of any relevant trade mark or trade name or get up
legitimately used by other 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. If an agent or a representative of the
proprietor of a registered trade mark, without authority uses or attempts to
register or registers the mark in his own name, the proprietor shall be
entitled to oppose the registration applied for or secure its cancellation or
rectification of the register so as to bring him as the registered proprietor
of the said mark by assignment in his favour: Provided that such action shall be taken
within three years of the registered proprietor of the trade mark becoming aware
of the conduct of the agent or representative. There shall be kept under the direction
and supervision of the Registrar- (a)
an index of registered trade
marks, (b)
an index of trade marks in
respect of which applications for registration are pending, (c)
an index of the names of the
proprietors of registered trade marks, and (d)
an index of the names of
registered users. (1)
Save as otherwise provided
in subsection (4) of section 49,- (a)
the register and any
document upon which any entry in the register is based; (b)
every notice of opposition
to the registration of a trade mark application for rectification before the
Registrar, counter-statement thereto, and any affidavit or document filed by
the parties in any proceedings before the Registrar; (c)
all regulations deposited
under section 63 or section 74, and all applications under section 66 or
section 77 for varying such regulations; (d)
the indexes mentioned in
section 147; and (e)
such other documents as the
Central Government may, by notification in the Official Gazette, specify, shall,
subject to such conditions as may be prescribed, be open to public inspection
at the Trade Marks Registry: Provided that when such register is
maintained wholly or partly on computer, the inspection of such register under
this section shall be made by inspecting the computer print-out of the relevant
entry in the register so maintained on computer. (2)
Any person may, on an
application to the Registrar and on payment of such fees as may be prescribed,
obtain a certified copy of any entry in the register or any document referred
to in sub-section (1). 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 [86][applications,
international applications] and registration and other matters under this Act
such fees and surcharge as may be prescribed by the Central Government. (2)
Where a fee is payable in
respect of the doing of an act by the Registrar, the Registrar shall not do
that act until the fee has been paid. (3)
Where a fee is payable in
respect of the filing of a document at the Trade Marks Registry, the document
shall be deemed not to have been filed at the registry until the fee has been
paid. Nothing in Chapter XII shall- (a)
exempt any person from any
suit or other proceeding which might, but for anything in mat Chapter, be
brought against him; or (b)
entitle any person to refuse
to make a complete discovery, or to answer any question or interrogatory in any
suit or other proceeding, but such discovery or answer shall not be admissible
in evidence against such person in any such prosecution for an offence under
that Chapter or against clause (h) of section 112 of
the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under
clause (d) of section 111 of
that Act and notified by the Central Government under clause (n) of sub-section
(2) of section 11 thereof
for the protection of trade marks relating to import of goods; or (c)
be construed so as to render
liable to any prosecution or punishment any servant of a master resident in
India who in good faith acts in obedience to the instructions of such master,
and, on demand made by or on behalf of the prosecutor, has given full
information as to his master and as to the instructions which he has received
from his master. Notwithstanding
anything contained in the 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 or country
which is a member of a group of countries or union of countries or
Inter-Governmental Organisation outside India which affords to citizens of
India similar privileges as granted to its own citizens, the Central Government
may, by notification in the Official Gazette, declare such country or group of
countries or union of countries or Inter-Governmental Organisation to be a
convention country or group of countries or union of countries, or
Inter-Governmental Organisations as the case may be, for the purposes of this
Act. (2)
Where a person has made an
application for the registration of a trade mark in a convention country or
country which is a member of a group of countries or union of countries or
Inter-Governmental Organisation and that person, or his legal 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 or country which is a member of a group of countries or
union of countries or Inter-Governmental Organisations the trade mark shall, if
registered under this Act, be registered as of the date on which the
application was made in the convention country or country which is a member of
a group of countries or union of countries or Inter-Governmental organisations
and that date shall be deemed for the purposes of this Act to be the date of
registration. (3)
Where applications have been
made for the registration of a trade mark in two or more convention countries
or country which are members of group of countries or union of countries or
Inter-Governmental Organisation the period of six months referred to in the
last preceding sub-section shall be reckoned from the date on which the earlier
or earliest of those applications was made. (4)
Nothing in this Act shall
entitle the proprietor of a trade mark to recover damages for infringement
which took place prior to the date of application for registration under this
Act. Where any country or country which is a
member of a group of countries or union of countries or Inter-Governmental
Organisation specified by the Central Government in this behalf by notification
in the Official Gazette 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 or country which is a member of a group
of countries or union of countries or Inter-Governmental Organisation, as the
case may be, shall be entitled, either solely or jointly with any other person,- (a)
to apply for the
registration of, or be registered as the proprietor of, a trade mark; (b)
to be registered as the
assignee of the proprietor of a registered trade mark; or (c)
to apply for registration or
be registered as a registered user of a trade mark under section 49. (1)
If any difficulty arises in
giving effect to the provisions of this Act, the Central Government may, by
order published in the Official Gazette, make such provisions not inconsistent
with the provisions of this Act as may appear to be necessary for removing the
difficulty: Provided that no order shall be made
under this section after the expiry of five years from the commencement of this
Act. (2)
Every order made under this
section shall, as soon as may be after it is made, be laid before each House of
Parliament. (1)
The Central Government may,
by notification in the Official Gazette and subject to the conditions of
previous publication, make rules to carry out the provisions of this Act. (2)
In particular, and without
prejudice to the generality of the foregoing power, such rules may provide for
all or any of the following matters, namely:- (i)
the matters to be included
in the Register of Trade Marks under sub-section (1) of section 6, and the
safeguards to be observed in the maintenance of records on computer floppies or
diskettes or in any other electronic form under sub-section (2) of that
section; (ii)
the manner of publication of
alphabetical index of classification of goods and services under sub-section
(1) of section 8; (iii)
the manner in which the
Registrar may notify a word as an international non-proprietary name under
section 13: (iv)
the manner of making an
application for dissolution of an association under sub-section (5) of section
16; (v)
the manner of making an
application for registration of a trade mark under sub-section (1) of section
18; (vi)
the manner of advertising of
an application for registration under subsection (1), and the manner of
notifying corrections or amendments under sub-section (2), of section 20; (vii)
[87][the
manner of giving a notice of opposition and the fee payable for such notice
under sub-section (1) and sending counter-statement under sub-section (2) and
submission of evidence and the time therefore under sub-section (4) of section
21;] (viii)
the form of certificate of
registration under sub-section (2), and the manner of giving notice to the
applicant under sub-section (3) of section 23; (ix)
the forms of application for
renewal and restoration the time within which such application is to be made
and fee and surcharge if any payable with each application, under section 25
and the time within which the Registrar shall send a notice and the manner of
such notice under sub-section (3) of that section; [88][(ixa)
(the time within which the international application is to be forwarded to the
International Bureau and the manner of certifying the particulars by the
Registrar under sub-section (4) of section 36D; (ixb)
the manner of keeping a record of particulars of an
international registration under sub-section (1) of section 36E; (ixc)
(the manner of informing the International Bureau under
sub-section (2) of section 36E; (ixd) the manner of
advertising the international registration and the time within which the
international registration shall be advertised under sub-section (3) of section
36E;] (x)
the manner of submitting
statement of cases under sub-section (2) of section 40; (xi)
the manner of making an
application by the proprietor of a trade mark under section 41; (xii)
the manner of making an
application for assignment or transmission of a certification trade mark under
section 43; (xiii)
the manner of making an
application to the Registrar to register title under sub-section (1) of section
45; [89][(xiiia)
the period within which the Registrar shall dispose of an application under
sub-section (3) of section 45;] (xiv)
the manner in which and the
period within which an application is to be made under sub-section (4) of
section 46; (xv)
the manner of marking an
application under sub-section (2) of section 47; (xvi)
the manner of making an
application, documents and other evidence to accompany such application under
sub-section (1) and the manner in which notice is to be issued under
sub-section (3) of section 49; (xvii)
the manner of making an
application under sub-section (1), the manner of issuing a notice under
sub-section (2) and the procedure for cancelling a registration under
sub-section (3) of section 50; (xviii)
the manner of making
applications under sub-sections (1) and (2), the manner of giving notice under
sub-section (4) and the manner of service of notice of rectification under
sub-section (5) of section 57; (xix)
the manner of making an
application under section 58; (xx)
the manner of making an
application under sub-section (1), the manner of advertising an application,
time and manner of notice by which application may be opposed under
sub-sections (2) and (3) of section 59; (xxi)
the manner of advertisement
under sub-section (2) of section 60; (xxii)
the other matters to be
specified in the regulations under sub-section (2) of section 63; (xxiii)
the manner of making an
application under sub-section (1) of section 71; (xxiv)
the manner of advertising an
application under section 73; (xxv)the
manner of making an application under section 77; (xxvi)
[90][***] (xxvii)
[91][***] (xxviii)
[92][***] (xxix)
the salaries and allowances
payable to and the other terms and conditions of service of the [93][Chairperson], [94][Vice-Chairperson]
and other Members under subsection (1) of section 88; (xxx)the
procedure for investigation of misbehaviour or incapacity of the [95][Chairperson], [96][Vice-Chairperson]
and other members under sub-section (3) of section 89; (xxxi)
[97][***] (xxxii)
[98][***] (xxxiii)
the form in which and the
particulars to be included in the application to the [99][High
Court] under sub-section (1) of section 97; [100][(xxxiiia) the manner of holding inquiry and
imposing penalty under Section 112A; (xxxiiib)
the form and manner of preferring appeal under sub-section (2) of Section
112B;] (xxxiv)
the manner of making an
application for review under clause (c) of section 127; (xxxv)
the time within which an
application is to be made to the Registrar for exercising his discretionary
power under section 128; (xxxvi)
the manner of making an
application and the fee payable therefore under sub-section (1) of section 131; (xxxvii)
the manner of making an
application under sub-section (1) and the period for withdrawal of such
application under sub-section (2) of section 133; (xxxviii)
the manner of authorising
any person to act and the manner of registration as a trade mark agent under
section 145; (xxxix) the
conditions for inspection of documents under sub-section (1) and the fee
payable for obtaining a certified copy of any entry in the register under
subsection (2) of section 148; (xl)
the fees and surcharge
payable for making applications and registration and other matters under
section 150; (xli)
any other matter which is
required to be or may be prescribed. (3)
The power to make rules
conferred by this section shall include the power to give retrospective effect
in respect of the matters referred to in clauses (xxix) and (xxxi) of
subsection (2) from a date not earlier than the date of commencement of this
Act, but no retrospective effect shall be given to any such rule so as to
prejudicially affect the interests of any person to whom sub-rule may be
applicable. (4)
Every rule made by the
Central Government under this Act shall be laid, as soon as may be after it is
made, before each House of Parliament, while it is in session for a total
period of thirty days which may be comprised in one session or in two or 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 enactment specified in the Schedule
shall be amended in the manner specified therein. (1)
The Trade and Merchandise
Marks Act, 1958 (43 of 1958) is hereby repealed. (2)
Without prejudice to the
provisions contained in the General Clauses Act, 1897 (10 of 1897), with
respect to repeals, any notification, rule, order, requirement, registration,
certificate, notice, decision, determination, direction, approval,
authorisation, consent, application, request or thing made, issued, given or
done under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall, if in
force at the commencement of this Act, continue to be in force and have effect
as if made, issued, given or done under the corresponding provisions of this
Act. (3)
The provisions of this Act
shall apply to any application for registration of a trade mark pending at the
commencement of this Act and to any proceedings consequent thereon and to any
registration granted in pursuance thereof. (4)
Subject to the provisions of
section 100 and notwithstanding anything contained in any other provision of
this Act, any legal proceeding pending in any court at the commencement of this
Act may be continued in that court as if this Act had not been passed. (5)
Notwithstanding anything
contained in this Act, where a particular use of a registered trade mark is not
an infringement of a trade mark registered before the commencement of this Act,
then, the continued use of that mark shall not be an infringement under this
Act. (6)
Notwithstanding anything
contained in sub-section (2), the date of expiration of registration of a trade
mark registered before the commencement of this Act shall be the date
immediately after the period of seven years for which it was registered or
renewed: Provided that the registration of a
defensive trade mark referred to in section 47 of
the Trade and Merchandise Marks Act, 1958 (43 of 1958), shall cease to have
effect on the date immediately after the expiry of five years of such
commencement or after the expiry of the period for which it was registered or
renewed, whichever is earlier. THE
SCHEDULE (See
section 158) AMENDMENTS Year Act No. Short title Amendment (1) (2) (3) (4) 1956 1 The Companies (I) In section 20, for sub-section
(2), the following sub-sections shall be substituted, namely:- (2) Without prejudice to the
generality of the foregoing power, a name which is identical with, or too nearly
resembles,- (i) the name by which a company in
existence has been previously registered, or (ii) a registered trade mark, or a
trade mark which is subject of an application for registration, o) any other
person under the Trade Marks Act, 1999; may be deemed to be undesirable by the
Central Government within the meaning ol sub-section (1). (3) The Central Government may, before
deeming a name as undesirable under clause (ii) of sub-section (2), consult the Registrar of Trade Marks." (II) In section 22, in sub-section
(1), (i) for the portion beginning with
"if, through" and ending with "the first-mentioned company-"
the following shall be substituted, namely:- "If, through inadvertence or
otherwise, a company on its first registration or on its registration by a
new name, is registered by a name which,- (i) in the opinion of the Central
Government, is identical with, or too nearly resembles, the name by which a
company in existence has been previously registered, whether under this Act
or any previous companies law, the first-mentioned company, or (ii) on an application by a registered
proprietor of a trade mark, is in the opinion of the Central Government
identical with, or too nearly resembles, a registered trade mark of such
proprietor under the Trade Marks Act, 1999, such company,-" (ii) the following proviso shall be
added, namely:- "Provided that no application
under clause (ii) made by a registered proprietor of a trade mark after five
years of coming to notice of registration of the company shall be considered
by the Central Government." STATEMENT
OF OBJECTS AND REASONS (1)
The Trade and Merchandise
Marks Act, 1958 has served its :purpose over the last four decades. It was felt
that a comprehensive review of the existing law be made in view of developments
in trading and commercial practices, increasing globalisation of trade and
industry, the need to encourage investment flows And transfer of technology;
need for simplification and harmonization of trade mark management systems and
to give effect to important judicial decisions. To achieve these purposes, the
present Bill proposes to incorporate, inter alia the following, namely:- (a)
providing- or registration
of trade mark for services, in addition to goods; (b)
registration of trade narks,
which are imitation of well known trademarks, not to be permitted, besides
enlarging the grounds for refusal of registrant mentioned in clauses 9 and 11.
Consequently, the provisions for defensive registration of trade Marks are
proposed to be Omitted; (c)
amplification of factors to
be considered for defining a well-known mark; (d)
doing away with the system
of maintaining registration of trade marks in Part A and Part B with different
legal rights, and to provide only a single register with simplified procedure
for registration and with equal rights; (e)
simplifying the procedure
for registration of registered user and enlarging the scope of permitted use; (f)
providing for registration
of "Collective Marks" owned by associations, etc.; (g)
providing an Appellate Board
for speedy disposal of appeals and rectification applications which at present
lie before High Court; (h)
transferring the final
authority relating to registration of certification trade marks to the
Registrar instead of the Central Government; (i)
providing enhanced
punishment for the offences relating to trade marks on par with the present
Copyright Act, 1957, to prevent the sale of spurious goods; (j)
prohibiting use of some one
else's trade marks as part of corporate names, or name of business concern; (k)
extension of application of
convention country to include countries which are members of Group or union of
countries and Inter-Governmental Organisations; (l)
incorporating other
provisions, like amending the definition of "trade marks", provisions
for filing a single application for registration in more than one class,
increasing the period of registration and renewal from 7 to 10 years; making
trade mark offences cognizable, enlarging the jurisdiction of courts to bring
the law in this respect on par with the copyright law, amplifying the powers of
the court to grant ex parte injunction in certain cases and other related
amendments to simplify and streamline the trade mark law and procedure. (2)
In view of the extensive
amendments necessitated in the Trade and Merchandise Marks Act, 1958, it has
been thought fit to repeal and re-enact the said Act incorporating the
necessary changes. (3)
The Bill seeks to achieve
the above objects. The Notes on clauses explain the various provisions of the
Bill. [1] 15th September, 2003 vide S.O. 1048 (E), dated
15-9-2003, published in the Gazette of India, Extra., Part II, Section 3(ii),
dated 15th September, 2003. [2] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board
established under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [3] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board established
under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [4] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board
established under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [5] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board
established under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [6] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board
established under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [7] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(s) "prescribed" means prescribed by rules made under
this Act;" [8] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board
established under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [9] Omitted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "(a) "Appellate Board" means the Appellate Board established
under section 83; (d) "Bench" means a Bench of the Appellate Board; (f) "[Chairperson]" means the [Chairperson] of the
Appellate Board; (k) "Judicial Member" means a Member of the Appellate Board
appointed as such under this Act, and includes the [Chairperson] and
the [Vice-Chairperson]; (n) "Member" means a Judicial Member or a Technical Member of
the Appellate Board and includes the [Chairperson] and
the [Vice-Chairperson];" (ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding concerned is pending; (zf) "[Vice-Chairperson]" means a [Vice-Chairperson] of
the Appellate Board;" [10] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [11] Substituted by the Trade Marks (Amendment)
Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "(a) a registered trade mark or convention application referred to
in section 154 which has a date of application earlier than that of the trade
mark in question, taking account, where appropriate, of the priorities claimed
in respect of the trade marks;" [12] Substituted by the Trade Marks (Amendment)
Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "(1) Any person may, within three months from the date of the
advertisement or re-advertisement of an application for registration or within
such further period, not exceeding one month in the aggregate, as the
Registrar, 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 Registrar, of opposition to the registration." [13] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [14] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [15] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [16] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [17] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [18] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [19] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [20] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [21] Inserted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013. [22] . Substituted by the Trade Marks (Amendment)
Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following :- "(1) Where a person becomes entitled by assignment or transmission
to a registered trade mark, he shall apply in the prescribed manner to the
Registrar to register his title, and the Registrar shall, on 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 or services in respect of
which the assignment or transmission has effect, and shall cause particulars of
the assignment or transmission to be entered on the register: Provided that where the validity of an assignment or transmission is in
dispute between the parties, the Registrar may refuse to register the
assignment or transmission until the rights of the parties have been determined
by a competent court. (2) Except for the purpose of an application before the Registrar under
sub-section (1) or an appeal from an order thereon, or an application under
section 57 or an appeal from an order thereon, a document or instrument in
respect of which no entry has been made in the register in accordance with
sub-section (1), shall not be admitted in evidence by the Registrar or the
Appellate Board or any court in proof of title to the trade mark by assignment
or transmission unless the Registrar or the Appellate Board or the court, as
the case may be, otherwise directs." [23] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [24] Substituted by the Tribunals Reforms Act, 2021 (w.e.f.
04.04.2021), for the following:- "Appellate Board" [25] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [26] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [27] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [28] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [29] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [30] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [31] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [32] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [33] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [34] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [35] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [36] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [37] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [38] Omitted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "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." [39] Omitted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "(1) In respect of textile goods being piece goods- (a) no mark consisting of a line heading alone shall be registrable as a
trade mark; (b) a line heading shall not be deemed to be capable of distinguishing; (c) the registration of trade mark shall not give any exclusive right to
the use of a line heading. (2) In respect of any textile goods, the registration of letters or
numerals, or any combination thereof, shall be subject to such conditions and
restrictions as may be prescribed." [40] Omitted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "(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
conspicuously 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 82 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 English or the metric system in each bundles; and (b) the count of the yarn contained in the bundles and in the case of
thread each unit is conspicuously marked with the length or weight of thread in
the unit and in such other manner as may be required by the said rules; and (c) except where the goods are sold from the premises for export from
India, unless each bundle or unit is conspicuously marked with the name of the
manufacturer or of the wholesale purchaser in India of the goods: Provided that the rules made under section 82 shall exempt all premises
where the work is done by members of one family with or without the assistance
of not more than ten other employees, and all premises controlled by a
co-operative society where not more than twenty workers are employed in the
premises." [41] Omitted by the Trade Marks (Amendment) Act,
2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for the following : - "(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 81
cotton yarn and cotton thread shall be marked with the particulars required by
that section, and for the exemption of certain premises used for the
manufacture, bleaching, dying or 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 81, of this Act or clause (n) of sub-section (2)
of section 11 of the Customs Act, 1962 (52 of 1962). (2) With respect to any goods for the selection and testing of samples
of which provision is not made in any rules for the time being in force under
sub-section (1), the court or officer of customs, as the case may be, having
occasion to ascertain the 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 to be selected. (3) The average of the results of the testing in pursuance of rules
under subsection (1) or of an order under sub-section (2) shall be prima facie
evidence of the number, quantity, measure, gauge or weight, as the case may be,
of the goods. (4) If a person having any claim to, or in relation to, any goods of
which samples have been selected and tested in pursuance of rules under
sub-section (1), or of an order under sub-section (2), desires that any further
samples of the goods be selected and tested, such further samples shall, on his
written application and on the payment in advance by him to the court or
officer of customs, as the case may be, of such sums for defraying the cost of
the further selection and testing as the court or 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." [42] Substituted by the Tribunals Reforms Act,
2021 (w.e.f. 04.04.2021), for the following:- "APPELL ATE BOARD" [43] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "83. Establishment of Appellate Board1 The Central Government shall, by notification in the Official Gazette,
establish an Appellate Board to be known as the Intellectual Property Appellate
Board to exercise the jurisdiction, powers and authority conferred on it by or
under this Act." [44] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "84. Composition of Appellate Board (1) The Appellate Board shall consist of
a [Chairperson], [Vice-Chairperson] and such number of other Members,
as the Central Government may, deem fit and, subject to the other provision's
of this Act, the jurisdiction, powers and authority of the Appellate Board may
be exercised by Benches thereof. (2) Subject to the other provisions of this Act, a Bench shall consist
of one Judicial Member and one Technical Member and shall sit at such place as
the Central Government may, by notification in the Official Gazette, specify. (3) Notwithstanding anything contained in sub-section (2), the 1[Chairperson]- (a) may, in addition to discharging the functions of the Judicial Member
or Technical Member of the Bench to which he is appointed, discharge the
functions of the Judicial Member or, as the case may be, the Technical Member,
of any other Bench; (b) may transfer a Member from one Bench to another Bench; (c) may authorise the [Vice-Chairperson], the Judicial Member or
the Technical Member appointed to one Bench to discharge also the functions of
the Judicial Member or the Technical Member, as the case may be, of another
Bench. (4) Where any Benches are constituted, the Central Government may, from
time to time, by notification, make provisions as to the distribution of the
business of the Appellate Board amongst the Benches and specify the matters
which may be dealt with by each Bench. (5) If any question arises as to whether any matter falls within the
purview of the business allocated to a Bench, the decision of
the [Chairperson] shall be final. Explanation.-For the removal of doubts, it is hereby declared that the
expression "matter" includes an appeal under section 91. (6) If the Members of a Bench differ in opinion on any point, they shall
state the point or points on which they differ, and make a reference to
the [Chairperson] who shall either hear the point or points himself or
refer the case for hearing on such point or points by one or more of the other
Members and such point or points shall be decided according to the opinion of
the majority of the Members who have heard the case, including those who first
heard it." [45] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "85. Qualifications for appointment
as [Chairperson], [Vice-Chairperson], or other Members (1) A person shall not be qualified for appointment as
the [Chairperson] unless he- (a) is, or has been, a Judge of a High Court; or (b) has, for at least two years, held the office of a
[Vice-Chairperson]. (2) A person shall not be qualified for appointment as
the [Vice-Chairperson], unless he- (a) has, for at least two years, held the office of a Judicial Member or
a Technical Member; or (b) has been a member of the Indian Legal Service and has held a post in
Grade I of that Service or any higher post for at least five years. (3) A person shall not be qualified for appointment as a Judicial
Member, unless he- (a) has been a member of the Indian Legal Service and has held the post
in Grade I of that Service for at least three years; or (b) has, for at least ten years, held a civil judicial office. (4) A person shall not be qualified for appointment as a Technical
Member, unless he- (a) has, for at least ten years, exercised functions of a tribunal under
this Act or under the Trade and Merchandise Marks Act, 1958 (43 of 1958), or
both, and has held a post not lower than the post of a Joint Registrar for at
least five years; or (b) has, for at least ten years, been an advocate of a proven
specialised experience in trade mark law. (5) Subject to the provisions of sub-section (6), the [Chairperson], [Vice-Chairperson]
and every other Member shall be appointed by the President of India. (6) No appointment of a person as the [Chairperson] shall be made
except after consultation with the Chief Justice of India." [46] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "86. Term of office of [Chairperson], [Vice-Chairperson]
and other Members The [Chairperson], [Vice-Chairperson] or other Members shall
hold office as such for a term of five years from the date on which he enters
upon his office or until he attains,- (a) in the case of [Chairperson] and [Vice-Chairperson], the
age of sixty-five years; and (b) in the case of a Member, the age of sixty-two years, whichever is
earlier. [47] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "87. [Vice-Chairperson] or senior-most Member to act
as [Chairperson] or discharge his functions in certain circumstances (1) In the event of or any vacancy in the office of
the [Chairperson] by reasons of his death, resignation or otherwise,
the [Vice-Chairperson] and in his absence the senior-most Member shall act
as [Chairperson] until the date on which a new [Chairperson],
appointed in accordance with the provisions of this Act to fill such vacancy,
enters upon his office. (2) When the [Chairperson] is unable to discharge his functions
owing to his absence, illness or any other cause, the [Vice-Chairperson]
and in his absence the senior-most Member shall discharge the functions of
the [Chairperson] until the date on which the [Chairperson] resumes
his duty." [48] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "88. Salaries, allowances and other terms and conditions of service
of [Chairperson], [Vice-Chairperson] and other Members (1) The salaries and allowances payable to, and other terms and
conditions of service (including pension, gratuity and other retirement
benefits) of the [Chairperson], [Vice-Chairperson] and other Members
shall be such as may be prescribed. (2) Notwithstanding anything contained in sub-section (1), a person who,
immediately before the date of assuming office as the
[Chairperson], [Vice-Chairperson] or other Member was in service of
Government, shall be deemed to have retired from service on the date on which
he enters upon office as the [Chairperson], [Vice-Chairperson] or
other Member." [49] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "89. Resignation and removal (1) The [Chairperson], [Vice-Chairperson] or any other Member
may, by notice in writing under his hand addressed to the President of India,
resign his office: Provided that the [Chairperson], [Vice-Chairperson] or any
other Member shall, unless he is permitted by the President of India to
relinquish his office sooner, continue to hold office until the expiry of three
months from the date of receipt of such notice or until a person duly appointed
as his successor enters upon his office or until the expiry of his term of
office, whichever is earlier. (2) The [Chairperson], [Vice-Chairperson] or any other Member
shall not be removed from his office except by an order made by the President
of India on the ground of proved misbehaviors or incapacity after an inquiry made
by a Judge of the Supreme Court in which the [Chairperson],
[Vice-Chairperson] or other Member had been informed of the charges against him
and given a reasonable opportunity of being heard in respect of those charges. (3) The Central Government
may, by rules, regulate the procedure for the investigation of misbehaviors or
incapacity of the [Chairperson], [Vice-Chairperson] or other Member
referred to in sub-section (2)." [50] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "[89-A. Qualifications, terms and conditions of service of
Chairperson, Vice-Chairperson and member Notwithstanding anything in this Act, the qualifications, appointment,
term of office, salaries and allowances, resignations, removal and other terms
and conditions of service of the Chairperson, Vice-Chairperson and other Members
of the Appellate Board appointed after the commencement of Part XIV of
chapter VI of the Finance Act 2017 (7 of 2017), shall be governed by the
provisions of section 184 of that Act: Provided that the Chairperson, Vice-Chairperson and other Members appointed
before the commencement of Part XIV of Chapter VI of the Finance Act, 2017 (7
of 2017), shall continue to be governed by the provisions of this Act, and the
rules made thereunder as if the provisions of section 184 of the Finance Act,
2017 (7 of 2017), had not come into force.]" [51] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "90. Staff of Appellate Board" (1) The Central Government shall determine the nature and categories of
the officers and other employees required to assist the Appellate Board in the
discharge of its functions and provide the Appellate Board with such officers
and other employees as it may think fit. (2) The salaries and allowances and conditions of service of the
officers and other employees of the Appellate Board shall be such as may be
prescribed. (3) The officers and other employees of the Appellate Board shall
discharge their functions under the general superintendence of
the [Chairperson] in the manner as may be prescribed." [52] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [53] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [54] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [55] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [56] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "92. Procedure and powers of Appellate Board (1) The Appellate Board shall not be bound by the procedure laid down in
the Code of Civil Procedure, 1908 (5 of 1908) but shall be guided by principles
of natural justice and subject to the provisions of this Act and the rules made
thereunder, the Appellate Board shall have powers to regulate its own procedure
including the fixing of places and times of its hearing. (2) The Appellate Board shall have, for the purpose of discharging its
functions under this Act, the same powers as are vested in a civil court under
the Code of Civil Procedure, 1908 (5 of 1908) while trying a suit in respect of
the following matters, namely:- (a) receiving evidence; (b) issuing commissions for examination of witnesses; (c) requisitioning any public record; and (d) any other matter which may be prescribed. (3) Any proceeding before the Appellate Board shall be deemed to be a
judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the
Indian Penal Code (45 of 1860), and the Appellate Board shall be deemed to be a
civil court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal
Procedure, 1973 (2 of 1974)." [57] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "93. Bar of jurisdiction of courts, etc. No court or other authority shall have or, be entitled to, exercise any
jurisdiction, powers or authority in relation to the matters referred to in
sub-section (1) of section 91." [58] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "94. Bar to appear before Appellate Board On ceasing to hold office,
the [Chairperson], [Vice-Chairperson] or other Members shall not
appear before the Appellate Board or the Registrar." [59] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "95. Conditions as to making of interim orders Notwithstanding anything contained in any other provisions of this Act
or in any other law for the time being in force, no interim order (whether by
way of injunction or stay or any other manner) shall be made on, or in any
proceedings relating to, an appeal unless- (a) copies of such appeal and of all documents in support of the plea
for such interim order are furnished to the party against whom such appeal is
made or proposed to be made; and (b) opportunity is given to such party to be heard in the matter." [60] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "96. Power of [Chairperson] to transfer cases from one Bench
to another On the application of any of the parties and after notice to the
parties, and after hearing such of them as he may desire to be heard, or on his
own motion without such notice, the [Chairperson] may transfer any case
pending before one Bench, for disposal, to any other Bench." [61] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [62] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [63] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [64] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [65] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [66] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [67] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [68] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "99. Costs of Registrar in proceedings before Appellate Board In all proceedings under this Act before the Appellate Board the costs
of the Registrar shall be in the discretion of the Board, but the Registrar
shall not be ordered to pay the costs of any of the parties." [69] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "100. Transfer of pending proceedings to Appellate Board All cases of appeals against any order or decision of the Registrar and
all cases pertaining to rectification of register, pending before any High
Court, shall be transferred to the Appellate Board from the date as
notified by the Central Government in the Official Gazette and the Appellate
Board may proceed with the matter either dc novo or from the stage it was so
transferred." [70] Omitted by The Jan Vishwas (Amendment of
Provisions) Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 1-8-2024). [71] Subs. by The Jan Vishwas (Amendment of Provisions)
Act, 2023 (18 of 2023), s. 2 and Schedule, for certain words "punishable
with imprisonment for a term which may extend to three years, or with fine, or
with both" (w.e.f. 1-8-2024) [72] Omitted by The Jan Vishwas (Amendment of Provisions)
Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 1-8-2024) [73] Omitted by The Jan Vishwas (Amendment of
Provisions) Act, 2023 (18 of 2023) s. 2 and Schedule, ibid. (w.e.f. 1-8-2024). [74] Ins. by The Jan Vishwas (Amendment of Provisions)
Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 1-8-2024) [75] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [76] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [77] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "and every Member of the Appellate Board" [78] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [79] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [80] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [81] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "the Appellate Board or" [82] Subs. by The Jan Vishwas (Amendment of Provisions)
Act, 2023 (18 of 2023), s. 2 and Schedule, for sub-section (3) (w.e.f.
1-8-2024). [83] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [84] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [85] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "tribunal" [86] Substituted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following :- "applications" [87] Substituted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following :- "(vii) the manner of making an application and the fee payable for
such application giving notice under sub-section (1) and sending
counter-statements under sub-section (2) and submission of evidence and the
time therefore under sub-section (4) of section 21;" [88] Inserted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 [89] Inserted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 [90] Omitted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following : - "the classes of goods under section 79;" [91] Omitted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following : - "the conditions and restrictions under sub-section (2)
of section 80;" [92] Omitted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following : - "determination of character of textile goods by sampling
under section 82;" [93] Substituted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following :- "(vii) the manner of making an application and the fee payable for
such application giving notice under sub-section (1) and sending
counter-statements under sub-section (2) and submission of evidence and the
time therefore under sub-section (4) of section 21;" [94] Inserted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 [95] Substituted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 for
the following :- "(vii) the manner of making an application and the fee payable for
such application giving notice under sub-section (1) and sending
counter-statements under sub-section (2) and submission of evidence and the
time therefore under sub-section (4) of section 21;" [96] Inserted by the Trade Marks (Amendment) Act, 2010 (Act No. 40 of 2010) w.e.f. 08.07.2013 [97] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "(xxxi) the salaries and allowances and other conditions of service
of the officers and other employees of the Appellate Board under sub-section
(2) and the manner in which the officers and other employees of the Appellate
Board shall discharge their functions under sub-section (3) of section 90; [98] Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "(xxxii) the form of making an appeal, the manner of verification
and the fee payable under sub-section (3) of section 91;" [99] Substituted by the Tribunals Reforms Act, 2021 (w.e.f. 04.04.2021), for the following:- "Appellate Board" [100] Ins. by The Jan Vishwas (Amendment of Provisions)
Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 1-8-2024).TRADE
MARKS ACT, 1999 (Amended Upto 2023)
PREAMBLE
Section 1 - Short title, extent
and commencement
Section 2 - Definitions and
interpretation
Section 3 - Appointment
of Registrar and other officers
Section 4 -
Power of Registrar to withdraw or transfer cases, etc.
Section 5 -
Trade Marks Registry and offices thereof
Section 6 - The
Register of Trade Marks
Section 7 -
Classification of goods and services
Section 8 -
Publication of alphabetical index
Section 9 -
Absolute grounds for refusal of registration
Section 10 -
Limitation as to colour
Section 11 -
Relative grounds for refusal of registration
Section 12 -
Registration in the case of honest concurrent use, etc.
Section 13 -
Prohibition of registration of names of chemical elements or international
non-proprietary names
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 -
Effect of registration of parts of a mark
Section 18 -
Application for registration
Section 19 -
Withdrawal of acceptance
Section 20 -
Advertisement of application
Section 21 -
Opposition to registration
Section 22 -
Correction and amendment
Section 23 -
Registration
Section 24 -
Jointly owned trade marks
Section 25 -
Duration, renewal, removal 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 mark
Section 28 -
Rights conferred by registration
Section 29 -
Infringement of registered trade marks
Section 30 -
Limits on effect of registered trade mark
Section 31 -
Registration to be prima facie evidence of validity
Section 32 -
Protection of registration on ground of distinctiveness in certain cases
Section 33 -
Effect of acquiescence
Section 34 -
Saving for vested rights
Section 35 -
Saving for use of name, address or description of goods or services
Section 36 -
Saving for words used as name or description of an article or substance or
service
Section 36A -
Application of Act in case of international registration under Madrid Protocol
Section 36B -
Definitions
Section 36C -
Trade Marks Registry to deal with international applications
Section 36D -
International application originating from India
Section 36E -
International registrations where India has been designated
Section 36F -
Effects of international registration
Section 36G -
Duration and renewal of international registration
Section 37 - Power of registered
proprietor to assign and give receipts
Section 38 - Assignability and
transmissibility of registered trade marks
Section 39 - Assignability and
transmissibility of unregistered trade marks
Section 40 - Restriction on
assignment or transmission where multiple exclusive rights would be created
Section 41 - Restriction on
assignment or transmission when exclusive rights would be created in different
parts of India
Section 42 - Conditions for
assignment otherwise than in connection with the goodwill of a business
Section 43 - Assignability and
transmissibility of certification trade marks
Section 44 - Assignability and
transmissibility of associated trade marks
Section 45 - Registration of
assignments and transmissions
Section 46 - Proposed use of trade
mark by company to be formed, etc.
Section 47 - Removal from register
and imposition of limitations on ground of non-use
Section 49 - Registration as
registered user
Section 50 - Power of Registrar
for variation or cancellation of registration as registered user
Section 51 - Power of Registrar to
call for information relating to agreement in respect of registered users
Section 52 - Right of registered
user to take proceedings against infringement
Section 53 - No right of permitted
user to take proceeding against infringement
Section 54 - Registered user not
to have right of assignment or transmission
Section 55 - Use of one of
associated or substantially identical trade marks equivalent to use of another
Section 56 - Use of trade mark for
export trade and use when form of trade connection changes
Section 57 - Power to cancel or
vary registration and to rectify the register
Section 58 - Correction of
register
Section 59 - Alteration of
registered trade marks
Section 60 - Adaptation of entries
in register to amended or substituted classification of goods or services
Section 61 - Special provisions
for collective marks
Section 62 - Collective mark not
to be misleading as to character or significance
Section 63 - Application to be
accompanied by regulations governing use of collective marks
Section 64 - Acceptance of
application and regulations by Registrar
Section 65 - Regulations to be
open to inspection
Section 66 - Amendment of
regulations
Section 67 - Infringement
proceedings by registered proprietor of collective mark
Section 68 - Additional grounds
for removal of registration of collective mark
Section 69 - Certain provisions of
this Act not applicable to certification trade marks
Section 70 - Registration of
certification trade marks
Section 71 - Applications for
registration of certification trade marks
Section 72 - Consideration of
application for registration by the Registrar
Section 73 - Opposition to
registration of certification trade marks
Section 74 - Filing of regulations
governing use of a certification trade mark
Section 75 - Infringement of
certification trade marks
Section 76 - Acts not constituting
infringement of certification trade marks
Section 80 - Restriction on
registration of textile goods
Section 81 - Stamping of piece
goods, cotton yarn and thread
Section 82 - Determination of
character of textile goods by sampling
Section 85 -
[***]
Section 86 -
[***]
Section 87 -
[***]
Section 88 -
[***]
Section 89 -
[***]
Section 89 A -
[***]
Section 90 -
[***]
Section 91 -
Appeals to [High Court][52]
Section 92 -
[***]
Section 94 – [Bar to appear before Registrar