THE
TRADEMARKS ACT, 1999
ACT
NO. 47 OF 1999
[30th December, 1999]
An Act to amend and consolidate the law relating to trademarks,
to provide for registration and better protection of trademarks
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:-
CHAPTER
PRELIMINARY
CHAPTER I
PRELIMINARY
1. Short title and commencement.
1. Short title and commencement.-(1) This Act may be called the
Trademarks Act, 1999.
(2) It extends to the whole of India.
(3) It shall come into force on such date as the Central Government
may, by notification in the Official Gazette, appoint:
Provided that different dates may be appointed for different
provisions of this Act, and any reference in any such provision
to the commencement of this Act shall be construed as a reference to
the coming into force of that provision.
2. Definitions and interpretation.
2. Definitions and interpretation.-(1) In this Act, unless the
context otherwise requires,-
(a) "Appellate Board" means the Appellate Board established
under section 83;
(b) "assignment" means an assignment in writing by act
of the parties concerned;
(c) "associated trademarks" means trademarks deemed
to be, or required to be, registered as associated trademarks
under this Act;
(d) "Bench" means a Bench of the Appellate Board;
(e) "certification trademark" 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 trademark, of
that person;
(f) "Chairman" means the Chairman of the Appellate Board;
(g) "collective mark" means a trademark 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;
(h) "deceptively similar".-A mark shall be deemed to
be deceptively similar to another mark if it so nearly resembles
that other mark as to be likely to deceive or cause confusion;
(i) "false trade description" means-
(I) a trade description which is untrue or misleading in a material
respect as regards the goods or services to which it is applied;
or
(II) any alteration of a trade description as regards the goods
or services to which it is applied, whether by way of addition,
effacement or otherwise, where that alteration makes the description
untrue or misleading in a material respect; or
(III) any trade description which denotes or implies that there
are con-tained, as regards the goods to which it is applied, more
yards or metres than there are contained therein standard yards
or standard metres; or
(IV) any marks or arrangement or combination thereof when applied-
(a) to goods in such a manner as to be likely to lead persons
to believe that the goods are the manufacture or merchandise of
some person other than the person whose merchandise or manufacture
they really are;
(b) in relation to services in such a manner as to be likely to
lead persons to believe that the services are provided or rendered
by some person other than the person whose services they really
are; or
(V) any false name or initials of a person applied to goods or
services in such manner as if such name or initials were a trade
description in any case where the name or initials-
(a) is or are not a trademark or part of a trademark; and
(b) is or are identical with or deceptively similar to the name
or initials of a person carrying on business in connection with
goods or services of the same description or both and who has
not authorised the use of such name or initials; and
(c) is or are either the name or initials of a fictitious person
or some person not bona fide carrying on business in connection
with such goods or services, and the fact that a trade description
is a trademark or part of a trademark shall not prevent such
trade description being a false trade description within the meaning
of this Act;
(j) "goods" means anything which is the subject of trade
or manufacture;
(k) ''Judicial Member'' means a Member of the Appellate Board
appointed as such under this Act, and includes the Chairman and
the Vice-Chairman;
(l) "limitations" (with its grammatical variations)
means any limitation of the exclusive right to the use of a trademark 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;
(m) "mark" includes a device, brand, heading, label,
ticket, name,signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof;
(n) "Member" means a Judicial Member or a Technical
Member of the Appellate Board and includes the Chairman and the
Vice-Chairman;
(o) "name" includes any abbreviation of a name;
(p) "notify" means to notify in the Trade Mark Journal
published by the Registrar;
(q) "package" includes any case, box, container, covering,
folder, receptacle, vessel, casket, bottle, wrapper, label, band,
ticket, 0reel, frame, capsule, cap, lid, stopper and cork;
(r) "permitted use", in relation to a registered trademark, means the use of trademark-
(i) by a registered user of the trademark in relation to goods
or services-
(a) with which he is connected in the course of trade; and
(b) in respect of which the trademark 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 trademark 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 trademark
is subject;
(s) "prescribed" means prescribed by rules made under
this Act;
(t) "register" means the Register of Trademarks referred
to in sub-section (1) of section 6;
(u) "registered" (with its grammatical variations) means
registered under this Act;
(v) "registered proprietor", in relation to a trademark, means the person for the time being entered in the register
as proprietor of the trademark;
(w) "registered trademark" means a trademark which
is actually on the register and remaining in force;
(x) "registered user" means a person who is for the
time being registered as such under section 49;
(y) "Registrar" means the Registrar of Trademarks referred
to in section 3;
(z) "service" means service of any description which
is made available to potential users and includes the provision
of services in connection with business of any industrial or commercial
matters such as banking, communication, education, financing,
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;
(za) "trade description" means any description, statement
or other indication, direct or indirect,-
(i) as to the number, quantity, measure, guage or weight of any
goods;
or
(ii) as to the standard of quality of any goods or services according
to a classification commonly used or recognised in the trade;
or
(iii) as to fitness for the purpose, strength, performance or
behaviour of any goods, being "drug" as defined in the
Drugs and Cosmetics Act, 1940 (23 of 1940), or "food" as defined
in the Prevention of Food Adulteration Act, 1954 (37 of 1954); or
(iv) as to the place or country in which or the time at which
any goods or services were made, produced or provided, as the case
may be; or
(v) as to the name and address or other indication of the identity
of the manufacturer or of the person providing the services or
of the person for whom the goods are manufactured or services
are provided; or
(vi) as to the mode of manufacture or producing any goods or providing
services; or
(vii) as to the material of which any goods are composed; or
(viii) as to any goods being the subject of an existing patent,
privilege or copyright, and includes-
(a) any description as to the use of any mark which according
to the custom of the trade is commonly taken to be an indication
of any of the above matters;
(b) the description as to any imported goods contained in any
bill of entry or shipping bill;
(c) any other description which is likely to be misunderstood
or mistaken for all or any of the said matters;
(zb) "trademark" 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
trademark or a mark used in relation to goods or services for
the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services, as the ase
may be, and some person having the right as proprietor to use
the mark; and
(ii) in relation to other provisions of this Act, a mark used
or proposed to be used in relation to goods or services for the
purpose of indicating or so to indicate a connection in the course
of trade between the goods or services, as the case may be, a
d some person having the right, either as proprietor or by way
of permitted user, to use the mark whether with or without any
indication of the identity of that person, and includes a certification
trademark or collective mark;
(zc) "transmission" means transmission by operation
of law, devolution on the personal representative of a deceased
person and any other mode of transfer, not being assignment;
(zd) ''Technical Member'' means a Member who is not a Judicial
Member;
(ze) "tribunal" means the Registrar or, as the case
may be, the Appellate Board, before which the proceeding concerned
is pending;
(zf) "Vice-Chairman" means a Vice-Chairman of the Appellate
Board;
(zg) "well-known trademark" , in relation to any goods
or services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such services
that the use of such mark in relation to other goods or service
would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first-mentioned
goods or services.
(2) In this Act, unless the context otherwise requires, any reference-
(a) to "trademark" shall include reference to "collective
mark" or "certification trademark";
(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 Trademarks Registry shall be construed as including
a reference to any office of the Trademarks Registry.
(3) For the purposes of this Act, goods and services are associated
with each other if it is likely that those goods might be sold
or otherwise traded in and those services might be provided by
the same business and so with descriptions of goods and descriptions
of services.
(4) For the purposes of this Act, "existing registered trademark" means a trademark registered under the Trade and Merchandise
Marks Act, 1958 (43 of 1958) immediately before the commencement
of this Act.
CHAPTER
THE REGISTER AND CONDITIONS FOR REGISTRATION
CHAPTER II
THE REGISTER AND CONDITIONS FOR REGISTRATION
3. Appointment of Reistrar and other officers.
3. Appointment of Registrar and other officers.-(1) The Central
Government may, by notification in the Official Gazette, appoint
a person to be known as the Controller-General of Patents, Designs
and Trademarks, who shall be the Registrar of Trademarks for
the purposes of this Act.
(2) The Central Government may appoint such other officers with
such designations as it thinks fit for the purpose of discharging,
under the superintendence and direction of the Registrar, such
functions of the Registrar under this Act as he may from ti e
to time authorise them to discharge.
4. Power of Reistrar to withdraw or transfer cases, etc.
4. Power of Registrar to withdraw or transfer cases, etc.-Without
prejudice to the generality of the provisions of sub-section (2)
of section 3, the Registrar may, by order in writing and for reasons
to be recorded therein, withdraw any matter pending be ore an
officer appointed under the said sub-section (2) and deal with
such matters 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.
5. Trademarks Registry and offices thereof.
5. Trademarks Registry and offices thereof.-(1) For the purposes
of this Act, there shall be a trademarks registry and the Trademarks Registry established under the Trade and Merchandise Marks
Act, 1958 (43 of 1958) shall be the Trademarks Registry u der
this Act.
(2) The head office of the Trademarks Registry shall be at such
place as the Central Government may specify, and for the purpose
of facilitating the registration of trademarks, there may be
established at such places as the Central Government may think
fit branch offices of the Trademarks Registry.
(3) The Central Government may, by notification in the Official
Gazette, define the territorial limits within which an office
of the Trademarks Registry may exercise its functions.
(4) There shall be a seal of the Trademarks Registry.
6. The Register of Trademarks.
6. The Register of Trademarks.-(1) For the purposes of this Act,
a record called the Register of Trademarks shall be kept at the
head office of the Trademarks Registry, wherein shall be entered
all registered trademarks with the names, addresses and escription
of the proprietors, notifications of assignment and transmissions,
the names, addresses and descriptions of registered users, conditions,
limitations and such other matter relating to registered trademarks as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), it
shall be lawful for the Registrar to keep the records wholly or
partly in computer floppies diskattes or in any other electronic
form subject to such safeguards as may be prescribed.
(3) Where such register is maintained wholly or partly on computer
under sub-section (2) any reference in this Act to entry in the
register shall be construed as the reference to any entry as maintained
on computer or in any other electronic form.
(4) No notice of any trust, express or implied or constructive,
shall be entered in the register and no such notice shall be receivable
by the Registrar.
(5) The register shall be kept under the control and management
of the Registrar.
(6) There shall be kept at each branch office of the Trademarks
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 Trademarks, both Part A and Part B, existing
at the commencement of this Act, shall be incorporated in and
form part of the register under this Act.
7. Classification of goods and services.
7. Classification of goods and services.-(1) The Registrar shall
classify goods and services, as far as may be, in accordance with
the International classification of goods and services for the
purposes of registration of trademarks.
(2) Any question arising as to the class within which any goods
or services falls shall be determined by the Registrar whose decision
shall be final.
8. Publication of alphabetical index.
8. Publication of alphabetical index.-(1) The Registrar may publish
in the prescribed manner an alphabetical index of classification
of goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical
index of goods and services published under sub-section (1), the
classification of goods or services shall be determined by the
Registrar in accordance with sub-section (2) of section.
9. Absolute grounds for refusal of registration.
9. Absolute grounds for refusal of registration.-(1) The trademarks-
(a) which are devoid of any distinctive character, that is to
say, not capable of distinguishing the goods or services of one
person from those of another person;
(b) which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of production
of the goods or rendering of the service or other characteris
ics of the goods or service;
(c) which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade, shall not be registered:
Provided that a trademark 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 trademark.
(2) A mark shall not be registered as a trademark 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 trademark 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 trademark is used or proposed
to be used shall not be a ground for refusal of registration.
10. Limitation as to colour.
10. Limitation as to colour.-(1) A trademark may be limited wholly
or in part to any combination of colours and any such limitation
shall be taken into consideration by the tribunal having to decide
on the distinctive character of the trademark.
(2) So far as a trademark is registered without limitation of
colour, it shall be deemed to be registered for all colours.
11. Relative grounds for refusal of registration.
11. Relative grounds for refusal of registration.-(1) Save as
provided in section 12, a trademark shall not be registered if,
because of-
(a) its identity with an earlier trademark and similarity of
goods or services covered by the trademark; or
(b) its similarity to an earlier trademark and the identity or
similarity of the goods or services covered by the trademark,
there exists a likelihood of confusion on the part of the public,
which includes the likelihood of association with the earlier
trademark.
(2) A trademark which-
(a) is identical with or similar to an earlier trademark; and
(b) is to be registered for goods or services which are not similar
to those for which the earlier trademark is registered in the
name of a different proprietor, shall not be registered if or
to the extent the earlier trademark is a well-known trademark
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 trademark.
(3) A trademark 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 trademark 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 trademark where the proprietor of the earlier trademark or
other earlier right consents to the registration, and in such
case the Registrar may register the mark under special circumstance
under section 12.
Explanation.-For the purposes of this section, earlier trademark
means-
(a) a registered trademark or convention application referred
to in section 154 which has a date of application earlier than
that of the trademark in question, taking account, where appropriate,
of the priorities claimed in respect of the trademarks;
(b) a trademark which, on the date of the application for registration
of the trademark in question, or where appropriate, of the priority
claimed in respect of the application, was entitled to protection
as a well-known trademark.
(5) A trademark shall not be refused registration on the grounds
specified in sub-sections (2) and (3), unless objection on any
one or more of those grounds is raised in opposition proceedings
by the proprietor of the earlier trademark.
(6) The Registrar shall, while determining whether a trademark
is a well-known trademark, take into account any fact which he
considers relevant for determining a trademark as a well-known
trademark including-
(i) the knowledge or recognition of that trademark in the relevant
section of the public including knowledge in India obtained as
a result of promotion of the trademark;
(ii) the duration, extent and geographical area of any use of
that trademark;
(iii) the duration, extent and geographical area of any promotion
of the trademark, including advertising or publicity and presentation,
at fairs or exhibition of the goods or services to which the trademark applies;
(iv) the duration and geographical area of any registration of
or any application for registration of that trademark under this
Act to the extent they reflect the use or recognition of the trademark;
(v) the record of successful enforcement of the rights in that
trademark, in particular, the extent to which the trademark
has been recognised as a well-known trademark by any court or
Registrar under that record.
(7) The Registrar shall, while determining as to whether a trademark 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 trademark applies.
(8) Where a trademark 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 trademark as
a well-known trademark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining
whether a trademark is a well-known trademark, any of the following,
namely:-
(i) that the trademark has been used in India;
(ii) that the trademark has been registered;
(iii) that the application for registration of the trademark
has been filed in India;
(iv) that the trademark-
(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 trademark is well-known to the public at large in
India.
(10) While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall-
(i) protect a well-known trademark against the identical or similar
trademarks;
(ii) take into consideration the bad faith involved either of
the applicant or the opponent affecting the right relating to
the trademark.
(11) Where a trademark has been registered in good faith disclosing
the material informations to the Registrar or where right to a
trademark has been acquired through use in good faith before
the commencement of this Act, then, nothing in this Act shal prejudice
the validity of the registration of that trademark or right to
use that trademark on the ground that such trademark is identical
with or similar to a well-known trademark.
12. Registration in the case of honest concurrent use, etc.
12. Registration in the case of honest concurrent use, etc.-In
the case of honest concurrent use or of other special circumstances
which in the opinion of the Registrar, make it proper so to do,
he may permit the registration by more than one proprietor of
the trademarks which are identical or similar (whether any such
trademark is already registered or not) in respect of the same
or similar goods or services, subject to such conditions and limitations,
if any, as the Registrar may think fit to impose
13. Prohibition of registration of names of chemical elements
orinternational non-proprietary names.
13. Prohibition of registration of names of chemical elements
or international non-proprietary names.-No word-
(a) which is the commonly used and accepted name of any single
chemical element or any single chemical compound (as distinguished
from a mixture) in respect of a chemical substance or preparation,
or
(b) which is declared by the World Health Organisation and notified
in the prescribed manner by the Registrar from time to time, as
an international non- proprietary name or which is deceptively
similar to such name, shall be registered as a trademark and
any such registration shall be deemed for the purpose of section
57 to be an entry made in the register without sufficient cause
or an entry wrongly remaining on the register, as the circumstances
may require.
14. Use of names and representations of living persons or personsrecently
dead.
14. Use of names and representations of living persons or persons
recently dead.-Where an application is made for the registration
of a trademark which falsely suggests a connection with any living
person, or a person whose death took place within twen y years
prior to the date of application for registration of the trademark, 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 trademark, and may refuse to proceed with the application unless the
applicant furnishes the registrar with such consent.
15. Registration of parts of trademarks and of trademarks as
a series.
15. Registration of parts of trademarks and of trademarks as
a series.-(1) Where the proprietor of a trademark claims to be
entitled to the exclusive use of any part thereof separately,
he may apply to register the whole and the part as separate trad
marks.
(2) Each such separate trademark shall satisfy all the conditions
applying to and have all the incidents of, an independent trademark.
(3) Where a person claiming to be the proprietor of several trademarks in respect of the same or similar goods or services or description
of goods or description of services, which, while resembling each
other in the material particulars thereof, yet d ffer in respect
of-
(a) statement of the goods or services in relation to which they
are respectively used or proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not
substantially affect the identity of the trademark; or
(d) colour, seeks to register those trademarks, they may be registered
as a series in one registration.
16. Registration of trademarks as associated trademarks.
16. Registration of trademarks as associated trademarks.-(1)
Where a trademark which is registered, or is the subject of an
application for registration, in respect of any goods or services
is identical with another trademark which is registered, or s
the subject of an application for registration, in the name of
the same proprietor in respect of the same goods or description
of goods or same services or description of services or so nearly
resembles it as to be likely to deceive or cause confusion f used
by a person other than the proprietor, the Registrar may, at any
time, require that the trademarks shall be entered on the register
as associated trademarks.
(2) Where there is an identity or near resemblance of marks that
are registered, or are the subject of applications for registration
in the name of the same proprietor, in respect of goods and in
respect of services which are associated with those goods r goods
of that description and with those services or services of that
description, sub-section (1) shall apply as it applies as where
there is an identity or near resemblance of marks that are registered,
or are the subject of applications for registra ion, in the name
of the same proprietor in respect of the same goods or description
of goods or same services or description of services.
(3) Where a trademark and any part thoreof are, in accordance
with the provisions of sub-section (1) of section 15, registered
as separate trademarks in the name of the same proprietor, they
shall be deemed to be, and shall be registered as, associated
trademarks.
(4) All trademarks 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
trademarks.
(5) On application made in the prescribed manner by the registered
proprietor of two or more trademarks registered as associated
trademarks, the Registrar may dissolve the association as respects
any of them if he is satisfied that there would be no li elihood
of deception or confusion being caused if that trademark were
used by any other person in relation to any of the goods or services
or both in respect of which it is registered, and may amend the
register accordingly.
17. Effect of registration of parts of a mark.
17. Effect of registration of parts of a mark.-(1) When a trademark consists of several matters, its registration shall confer
on the proprietor exclusive right to the use of the trademark taken
as a whole.
(2) Notwithstanding anything contained in sub-section (1), when
a trademark-
(a) contains any part-
(i) which is not the subject of a separate application by the
proprietor for registration as a trademark; or
(ii) which is not separately registered by the proprietor as a
trademark; 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 trademark so registered.
CHAPTER
PROCEDURE FOR AND DURATION OF REGISTRATION
CHAPTER III
PROCEDURE FOR AND DURATION OF REGISTRATION
18. Application for registration.
18. Application for registration.-(1) Any person claiming to be
the proprietor of a trademark used or proposed to be used by
him, who is desirous of registering it, shall apply in writing
to the Registrar in the prescribed manner for the registration
o his trademark.
(2) A single application may be made for registration of a trademark 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 Trademarks Registry within whose territorial
limits the principal place of business in India of the applicant
or in the case of joint applicants the principal place of busi
ess in India of the applicant whose name is first mentioned in
the application as having a place of business in India, is situate:
Provided that where the applicant or any of the joint applicants
does not carry on business in India, the application shall be
filed in the office of the Trademarks Registry within whose territorial
limits the place mentioned in the address for service n India
as disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse
the application or may accept it absolutely or subject to such
amendments, modifications, conditions or limitations, if any,
as he may think fit.
(5) In the case of a refusal or conditional acceptance of an application,
the Registrar shall record in writing the grounds for such refusal
or conditional acceptance and the materials used by him in arriving
at his decision.
19. Withdrawal of acceptance.
19. Withdrawal of acceptance.-Where, after the acceptance of an
application for registration of a trademark 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 trademark should
not be registered or should be registered subject to conditions
or limitations or to conditions additional to or different from
the conditions or limitations subject to which the application
has been accepted, the Registrar may, after hearing the applicant
if he so desires, withdraw the acceptance and proceed as if the
application had not been accepted.
20. Advertisement of application.
20. Advertisement of application.-(1) When an application for
registration of a trademark has been accepted, whether absolutely
or subject to conditions or limitations, the Registrar shall,
as soon as may be after acceptance, cause the application as ac
epted together with the conditions or limitations, if any, subject
to which it has been accepted, to be advertised in the prescribed
manner:
Provided that the Registrar may cause the application to be advertised
before acceptance if it relates to a trademark to which sub-section
(1) of section 9 and sub-sections (1) and (2) of section 11 apply,
or in any other case where it appears to him th t it is expedient
by reason of any exceptional circumstances so to do.
(2) Where-
(a) an application has been advertised before acceptance under
sub-section (1); or
(b) after advertisement of an application,-
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section
22, the Registrar may in his discretion cause the application
to be advertised again or in any case falling under clause (b)
may, instead of causing the application to be advertised again,
notify in the prescribed manner the correction or amendment made
in the application.
21. Opposition to registration.
21. Opposition to registration.-(1) Any person may, within three
months from the date of the advertisement or re-advertisement
of an application for registration or within such further period,
not exceeding one month in the aggregate, as the Registrar, o
application made to him in the prescribed manner and on payment
of the prescribed fee, allows, give notice in writing in the prescribed
manner to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant
for registration and, within two months from the receipt by the
applicant of such copy of the notice of opposition, the applicant
shall send to the Registrar in the prescribed manner a 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 wether relied
upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant
sending a counter-statement after receipt of a copy of such notice
neither resides nor carries on business in India, the Registrar
may require him to give security for the costs of proceeding before
him, and in default of such security being duly given, may treat
the opposition or application, as the case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error
in, or any amendment of, a notice of opposition or a counter-statement
on such terms as he thinks just.
22. Correction and amendment.
22. Correction and amendment.-The Registrar may, on such terms
as he thinks just, at any time, whether before or after acceptance
of an application for registration under section 18, permit the
correction of any error in or in connection with the applica ion
or permit an amendment of the application:
Provided that if an amendment is made to a single application
referred to in sub-section (2) of section 18 involving division
of such application into two or more applications, the date of
making of the divided applications so divided. initial application
shall be deemed to be the date of making of the
23. Registration.
23. Registration.-(1) Subject to the provisions of section 19,
when an application for registration of a trademark 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 trademark and the trademark when registered shall be registered as
of the date of the making of the said application and that date
shall, subject to the provisions f section 154, be deemed to be
the date of registration.
(2) On the registration of a trademark, the Registrar shall issue
to the applicant a certificate in the prescribed form of the registration
thereof, sealed with the seal of the Trademarks Registry. (3)
Where registration of a trademark is not completed within twelve
months from the date of the application by reason of default on
the part of the applicant, the Registrar may, after giving notice
to the applicant in the prescribed manner, treat the a plication
as abandoned unless it is completed within the time specified
in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration
for the purpose of correcting a clerical error or an obvious mistake.
24. Jointly owned trademarks.
24. Jointly owned trademarks.-(1) Save as provided in sub-section
(2), nothing in this Act shall authorise the registration of two
or more persons who use a trademark independently, or propose
so to use it, as joint proprietors thereof. (2) Where the relations
between two or more persons interested in a trademark 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 trademark, and this
Act shall have effect in relation to any rights to the use of
the trademark vested in those persons as if those rights had
been vested in a single person.
25. Duration, renewal, removal and restoration of registration.
25. Duration, renewal, removal and restoration of registration.-(1)
The registration of a trademark, 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 trademark in the prescribed manner and within
the prescribed period and subject to payment of the prescribed
fee, renew the registration of the trademark 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 trademark the Registrar shall send notice in the prescribed
manner to the registered proprietor of the date of which a renewal
of registration may be obtained, and, if at the expiration of
the time prescribed in that behalf those conditions have not been
duly complied with the Registrar may remove the trademark from
the register: expiration and the conditions as to payment of fees
and otherwi e upon Provided that the Registrar shall not remove
the trademark 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 trademark a d shall renew the registration of the trademark for a period of ten years under sub-section (2).
(4) Where a trademark 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 trademark, 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 trademark to the register
and renew the registration of the trademark either generally
or subject to such conditions or limitations as he thinks fi to
impose, for a period of ten years from the expiration of the last
registration.
26. Effect of removal from register for failure to pay fee for
renewal.
26. Effect of removal from register for failure to pay fee for
renewal.-Where a trademark has been removed from the register
for failure to pay the fee for renewal, it shall nevertheless,
for the purpose of any application for the registration of anothe
trademark during one year, next after the date of the removal,
be deemed to be a trademark already on the register, unless the
tribunal is satisfied either-
(a) that there has been no bona fide trade use of the trademark
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 trademark which is the subject of the application
for registration by reason of any previous use of the trademark
which has been removed.
CHAPTER
EFFECT OF REGISTRATION
CHAPTER IV
EFFECT OF REGISTRATION
27. No action for infringement of unregistered trademark.
27. No action for infringement of unregistered trademark.-(1)
No person shall be entitled to institute any proceeding to prevent,
or to recover damages for, the infringement of an unregistered
trademark.
(2) Nothing in this Act shall be deemed to affect rights of action
against any person for passing off goods or services as the goods
of another person or as services provided by another person, or
the remedies in respect thereof.
28. Rights conferred by registration.
28. Rights conferred by registration.-(1) Subject to the other
provisions of this Act, the registration of a trademark shall,
if valid, give to the registered proprietor of the trademark
the exclusive right to the use of the trademark in relation to
the goods or services in respect of which the trademark is registered
and to obtain relief in respect of infringement of the trademark
in the manner provided by this Act.
(2) The exclusive right to the use of a trademark 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 trademarks, which are identical with or nearly resemble each other,
the exclusive right to the use of any of those trademarks shall
not conditions or limitations entered on the register) be deemed
to have been acquired by any one of those persons as against any
other of those persons merely by registration of the trademarks
but each of those persons has otherwise the same rights as (except
so far as their respective rights are subject to any gainst other
persons (not being registered users using by way of permitted
use) as he would have if he were the sole registered proprietor.
29. Infringement of registered trademarks.
29. Infringement of registered trademarks.-(1) A registered trademark 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 trademark in relation to goods or services in respect
of which the trademark is registered and in such manner as to
render the use of the mark likely to be taken as being used as
a trademark.
(2) A registered trademark 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 trademark and the similarity
of the goods or services covered by such registered trademark;
or
(b) its similarity to the registered trademark and the identity
or similarity of the goods or services covered by such registered
trademark; or
(c) its identity with the registered trademark and the identity
of the goods or services covered by such registered trademark,
is likely to cause confusion on the part of the public, or which
is likely to have an association with the registered trademark.
(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 trademark 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 trademark;
and
(b) is used in relation to goods or services which are not similar
to those for which the trademark is registered; and
(c) the registered trademark 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 trademark.
(5) A registered trademark is infringed by a person if he uses
such registered trademark, as his trade name or part of his trade
name, or name of his business concern or part of the name, of
his business concern dealing in goods or services in respect f
which the trademark 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 trademark,
or offers or supplies services under the registered trademark;
(c) imports or exports goods under the mark; or
(d) uses the registered trademark on business papers or in advertising.
(7) A registered trademark is infringed by a person who applies
such registered trademark to a material intended to be used for
labelling or packaging goods, as a business paper, or for advertising
goods or services, provided such person, when he 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 trademark is infringed by any advertising of that trademark 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 trademark.
(9) Where the distinctive elements of a registered trademark
consist of or include words, the trademark may be infringed by
the spoken use of those words as well as by their visual representation
and reference in this section to the use of a mark shall be construed
accordingly.
30. Limits on effect of registered trademark.
30. Limits on effect of registered trademark.-(1) Nothing in
section 29 shall be construed as preventing the use of a registered
trademark 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 trademark.
(2) A registered trademark 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 trademark is registered subject to any conditions or limitations,
the use of the trademark in any manner in relation to goods to
be sold or otherwise traded in, in any place, or in relation to
goods to be exported to any market or in relation to ervices for
use or available or acceptance in any place or country outside
India or in any other circumstances, to which, having regard to
those conditions or limitations, the registration does not extend;
(c) the use by a person of a trademark-
(i) in relation to goods connected in the course of trade with
the proprietor or a registered user of the trademark 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 trademark and has not subsequently removed
or obliterated it, or has at any time expressly or impliedly consented
to the use of the trademark; 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;
(d) the use of a trademark 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 trademark has been used without infringement
of the right given by registration under this Act r might for
the time being be so used, if the use of the trademark 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 trademark is to indicate, otherwise than in accordance
with the fact, a connection in the course of trade between any
person and the goods or services, as the case may be;
(e) the use of a registered trademark, being one of two or more
trademarks registered under this Act which are identical or nearly
resemble each other, in exercise of the right to the use of that
trademark given by registration under this Act.
(3) Where the goods bearing a registered trademark 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 trademark 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
trademark by the proprietor or with his consent.
(4) Sub-section (3) shall not apply where there exists legitimate
reasons for the proprietor to oppose further dealings in the goods
in particular, where the condition of the goods, has been changed
or impaired after they have been put on the market.
31. Registration to be prima facie evidence of validity.
31. Registration to be prima facie evidence of validity.-(1) In
all legal proceedings relating to a trademark registered under
this Act (including applications under section 57), the original
registration of the trademark and of all subsequent assignme
ts and transmissions of the trademark shall be prima facie evidence
of the validity thereof;
(2) In all legal proceedings as aforesaid a registered trademark
shall not be held to be invalid on the ground that it was not
a registrable trademark 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 trademark
had been so used by the registered proprietor or his predecessor
in title as to have become distinctive at the date of registration.
32. Protection of registration on ground of distinctiveness in
certaincases.
32. Protection of registration on ground of distinctiveness in
certain cases.-Where a trademark is registered in breach of sub-section
(1) of section 9, it shall not be declared invalid if, in consequence
of the use which has been made of it, it has aft r registration
and before commencement of any legal proceedings challenging the
validity of such registration, acquired a distinctive character
in relation to the goods or services for which it is registered.
33. Effect of acquiescence.
33. Effect of acquiescence.-(1) Where the proprietor of an earlier
trademark has acquiesced for a continuous period of five years
in the use of a registered trademark, being aware of that use,
he shall no longer be entitled on the basis of that earlier trademark-
(a) to apply for a declaration that the registration of the later
trademark is invalid, or
(b) to oppose the use of the later trademark in relation to the
goods or services in relation to which it has been so used, unless
the registration of the later trademark was not applied in good
faith.
(2) Where sub-section (1) applies, the proprietor of the later
trademark is not entitled to oppose the use of the earlier trademark,
or as the case may be, the exploitation of the earlier right,
notwithstanding that the earlier trademark may no longer be invoked
against his later trademark.
34. Saving for vested rights.
34. Saving for vested rights.-Nothing in this Act shall entitle
the proprietor or a registered user of registered trademark to
interfere with or restrain the use by any person of a trademark
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 trademark from a date
prior- (a) to the use of the first-mentioned trademark 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
trademark 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 trademark by reason
only of the registration of the first-mentioned trademark.
35. Saving for use of name, address or description of goods or
services.
35. Saving for use of name, address or description of goods or
services.-Nothing in this Act shall entitle the proprietor or
a registered user of a registered trademark to interfere with
any bona fide use by a person of his own name or that of his place
of business, or of the name, or of the name of the place of business,
of any of his predecessors in business, or the use by any person
of any bona fide description of the character or quality of his
goods or services.
36. Saving for words used as name or description of an article
orsubstance or service.
36. Saving for words used as name or description of an article
or substance or service.-(1) The registration of a trademark
shall not be deemed to have become invalid by reason only of any
use after the date of the registration of any word or words whic
the trademark contains or of which it consists as the name or
description of an article or substance or service: Provided that,
if it is proved either-
(a) that there is a well known and established use of the said
word as the name or description of the article or substance or
service by a person or persons carrying on trade therein, not
being use in relation to goods or services connected in the course
of trade with the proprietor or a registered user of the trademark or (in the case of a certification trademark) in relation
to goods or services certified by the proprietor; or
(b) that the article or substance was formerly manufactured under
a patent that a period of two years or more after the cesser of
the patent has elapsed and that the said word is the only practicable
name or description of the article or substance, the provisions
of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or clause (b) of the
proviso to sub-section (1) are proved with respect to any words,
then,-
(a) for the purposes of any proceedings under section 57 if the
trademark consists solely of such words, the registration of
the trademark, so far as regards registration in respect of the
article or the services or of any services of the same description,
as the case requires, shall be deemed to be an entry wrongly remaining
on the register; substance in question or of any goods of the
same description, or of
(b) for the purposes of any other legal proceedings relating to
the trademark,-
(i) if the trademark consists solely of such words, all rights
of the proprietor under this Act or any other law to the use of
the trademark; or
(ii) if the trademark contains such words and other matter, all
such right of the proprietor to the use of such words, in relation
to the article or substance or to any goods of the same description,
or to the service or to any services of the same description,
as the case requires, shall be deemed to have ceased on the date
on which the use mentioned in clause (a) of th proviso to sub-section
(1) first became well known and established or at the expiration
of the period of two years mentioned in clause (b) of the said
proviso.
CHAPTER
ASSIGNMENT AND TRANSMISSION
CHAPTER V
ASSIGNMENT AND TRANSMISSION
37. Power of registered proprietor to assign and give receipts.
37. Power of registered proprietor to assign and give receipts.-The
person for the time being entered in the register as proprietor
of a trademark 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 trademark, and to give
effectual receipts for any consideration for such assignment.
38. Assignability and transmissibility of registered trademarks.
38. Assignability and transmissibility of registered trademarks.-Notwithstanding
anything in any other law to the contrary, a registered trademark shall, subject
to the provisions of this Chapter, be assignable
and transmissible, whether with or withou the goodwill of the
business concerned and in respect either of all the goods or services
in respect of which the trademark is registered or of some only
of those goods or services.
39. Assignability and transmissibility of unregistered trademarks.
39. Assignability and transmissibility of unregistered trademarks.-An
unregistered trademark may be assigned or transmitted with or
without the goodwill of the business concerned.
40. Restriction on assignment or transmission where multiple exclusiverights would
be created.
40. Restriction on assignmnt or transmission where multiple exclusive
rights would be created.-(1) Notwithstanding anything in sections
38 and 39, a trademark shall not be assignable or transmissible
in a case in which as a result of the assignment or t ansmission
there would in the circumstances subsist, whether under this Act
or any other law, exclusive rights in more than one of the persons
concerned to the use, in relation to- (a) same goods or services;
(b) same description of goods or services;
(c) goods or services or description of goods or services which
are associated with each other, of trademarks nearly resembling
each other or of identical trademark, if having regard to the
similarity of the goods and services and to the similarity of
the trademarks, the use of the trademarks in exercise of those
rights would be likely to deceide or cause confusion:
Provided that an assignment or transmission shall not be deemed
to be invalid under this sub-section if the exclusive rights subsisting
as a result thereof in the persons concerned respectively are,
having by two or more of those persons in relation to goods to
be sold, or otherwise traded in, within India otherwise than for
export therefrom, or in relation to goods to be exported to the
same market outside India or in relation to servi regard to limitations
imposed thereon, such as n t to be exercisable es for use at any
place in India or any place outside India in relation to services
available for acceptance in India.
(2) The proprietor of a registered trademark 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 trademarks
referred to in the case, the proposed assignment would or would
not be invalid under sub-section (1), and a certificate so issued
shall, subject to appeal and unless it is shown that the c rtificate
was obtained by fraud or misrepresentation, be conclusive as to
the validity or invalidity under sub-section (1) of the assignment
in so far as such validity or invalidity depends upon the facts
set out in the case, but, as regards a certificat in favour of
validity, only if application for the registration under section
45 of the title of the person becoming entitled is made within
six months from the date on which the certificate is issued.
41. Restriction on assignment or transmission when exclusive rights
wouldbe created in different parts of India.
41. Restriction on assignment or transmission when exclusive rights
would be created in different parts of India.-Notwithstanding
anything in sections 38 and 39, a trademark shall not be assignable
or transmissible in a case in which as a result of the ssignment
or transmission there would in the circumstances subsist, whether
under this Act or any other law-
(a) an exclusive right in one of the persons concerned, to the
use of the trademark 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 trademark nearly resembling the first-mentioned
trademark or of an identical trademark 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 trademark who proposes to assign it, or
by a person who claims that a registered trademark has been transmitted
to him or to a predecessor in title of his si ce the commencement
of this Act, the Registrar, if he is satisfied that in all the
circumstances the use of the trademark in exercise of the said
rights would not be contrary to the public interest may approve
the assignment or transmission, and an assi nment or transmission
so approved shall not, unless it is shown that the approval was
obtained by fraud or misrepresentation, be deemed to be invalid
under this section or section 40 if application for the registration
under section 45 of the title of th person becoming entitled is
made within six months from the date on which the approval is
given or, in the case of a transmission, was made before that
date.
42. Conditions for assignment otherwise than in connection with
the goodwill of a business.
42. Conditions for assignment otherwise than in connection with
the goodwill of a business.-Where an assignment of a trademark,
whether registered or unregistered is made otherwise than in connection
with the goodwill of the business in which the mark h s been or
is used, the assignment shall not take effect unless the assignee,
not later than the expiration of six months from the date on which
the assignment is made or within such extended period, if any,
not exceeding three months in the aggregate, as the Registrar
may allow, applies to the Registrar for directions with respect
to the advertisement of the assignment, and advertises it in such
form and manner and within such period as the Registrar may direct.
Explanation.-For the purposes of this section, an assignment of
a trademark 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 trademark in respect only of some of the
goods or services for which the trademark 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 trademark which is used in relation to
goods exported from India or in relation to services for use outside
India if the assignment is accompanied by the transfer of the
goodwill of the export business only.
43. Assignability and transmissibility of certification trademarks.
43. Assignability and transmissibility of certification trademarks.-A certification trademark shall not be assignable or
transmissible otherwise than with the consent of the Registrar,
for which application shall be made in writing in the prescribed ma
ner.
44. Assignability and transmissibility or associated trademarks.
44. Assignability and transmissibility or associated trademarks.-Associated
trademarks shall be assignable and transmissible only as a whole
and not separately, but, subject to the provisions of this Act,
they shall, for all other purposes, be deemed t have been registered
as separate trademarks.
45. Registration of assignments and transmissions.
45. Registration of assignments and transmissions.-(1) Where a
person becomes entitled by assignment or transmission to a registered
trademark, he shall apply in the prescribed manner to the Registrar
to register his title, and the Registrar shall, on r ceipt of
the application and on proof of title to his satisfaction, register
him as the proprietor of the trademark in respect of the goods
or services in respect of which the assignment or transmission
has effect, and shall cause particulars of the ass gnment or transmission
to be entered on the register:
Provided that where the validity of an assignment or transmission
is in dispute between the parties, the Registrar may refuse to
register the assignment or transmission until the rights of the
parties have been determined by a competent court.
(2) Except for the purpose of an application before the Registrar
under sub-section (1) or an appeal from an order thereon, or an
application under section 57 or an appeal from an order thereon,
a document or instrument in respect of which no entry has een
made in the register in accordance with sub-section (1), shall
not be admitted in evidence by the Registrar or the Appellate
Board or any court in proof of title to the trademark by assignment
or transmission unless the Registrar or the Appellate Bo rd or
the court, as the case may be, otherwise directs.
CHAPTER
USE OF TRADE MARKS AND REGISTERED USERS
CHAPTER VI
USE OF TRADE MARKS AND REGISTERED USERS
46.
Proposed use of trademark by company to be formed, etc.
46. Proposed use of trademark by company to be formed, etc.-(1)
No application for the registration of a trademark in respect
of any goods or services shall be refused nor shall permission
for such registration be withheld, on the ground only that it
a pears that the applicant does not use or propose to use the
trademark 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 trademark 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 trademark. (2) The provisions
of section 47 shall have effect, in relation to a trademark registered
under the powers conferred by this sub-section, as if for the
reference, in clause (a) of sub-section (1) of that section, to
the intention on the part of an appl cant for registration that
a trademark should be used by him there were substituted a reference
to the intention on his part that it should be used by the company
or registered user concerned.
(3) The tribunal may, in a case to which sub-section (1) applies,
require the applicant to give security for the costs of any proceedings
relating to any opposition or appeal, and in default of such security
being duly given, may treat the application a abandoned.
(4) Where in a case to which sub-section (1) applies, a trademark in respect of any goods or services is registered in the
name of an applicant who, relies on intention to assign the trademark to a company, then, unless within such period as may be pr
scribed or within such further period not exceeding six months
as the Registrar may, on application being made to him in the
prescribed manner, allow, the company has been registered as the
proprietor of the trademark 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.
47. Removal from register and imposition of limitations on ground
of non-use.
47. Removal from register and imposition of limitations on ground
of non-use.(1) A registered trademark may be taken off the register
in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner o the
Registrar or the Appellate Board by any person aggrieved on the
ground either-
(a) that the trademark was registered without any bona fide intention
on the part of the applicant for registration that it should be
used in relation to those goods or services by him or, in a case
to which the provisions of section 46 apply, by the c mpany concerned
or the registered user, as the case may be, and that there has,
in fact, been no bona fide use of the trademark 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 trademark is actually entered in the register or longer had elapsed
during which the trademark was registered and durin which there
was no bona fide use thereof in relation to those goods or services
by any proprietor thereof for the time being:
Provided that except where the applicant has been permitted under
section 12 to register an identical or nearly resembling trademark in respect of the goods or services in question, or where
the tribunal is trademark, the tribunal may refuse an application
under clause (a) or clause (b) in relation to any goods or services,
if it is shown that there has been, before the relevant date or
during the relevant period, as the case may be, of opinion that
he might properly be permitte so to register such a bona fide
use of the trademark 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 trademark is registered.
(2) Where in relation to any goods or services in respect of which
a trademark 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 trademark 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 trademark in respect of those
goods, under a registration extending to use in relation to goods
to be so sold, or otherwise traded in, or in relation to good
to be so exported, or in relation to services for use or available
for acceptance in that place or for use in that country, or the
tribunal is of opinion that he might properly be permitted so
to register such a trademark, on application by that person in
the prescribed manner to the Appellate Board or to the Registrar,
the tribunal may impose on the registration of the first-mentioned
trademark such limitations as it thinks proper for securing that
that registration shal cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose
of clause (b) of sub-section (1) or for the purposes of sub-section
(2) on any non-use of a trademark which is shown to have been
due to special circumstances in the trade, which includes re trictions
on the use of the trademark in India imposed by any law or regulation
and not to any intention to abandon or not to use the trademark
in relation to the goods or services to which the application
relates.
48. Registered users.
48. Registered users.-(1) Subject to the provisions of section
49, a person other than the registered proprietor of a trademark
may be registered as a registered user thereof in respect of any
or all of the goods or services in respect of which the tra e
mark is registered.
(2) The permitted use of a trademark 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.
49. Registration as registered user.
49. Registration as registered user.-(1) Where it is proposed
that a person should be registered as a registered user of a trademark, the registered proprietor and the proposed registered user
shall jointly apply in writing to the Registrar in the pres ribed
manner, and every such application shall be accompanied by-
(a) the agreement in writing or a duly authenticated copy thereof,
entered into between the registered proprietor and the proposed
registered user with respect to the permitted use of the trademark; 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 trademark, if any.
(4) The Registrar shall, if so requested by the applicant, take
steps for securing that information given for the purposes of
an application under this section (other than matters entered
in the register) is not disclosed to rivals in trade.
50. Power of Registrar for variation or cancellation of registration
asregistered user.
50. Power of Registrar for variation or cancellation of registration
as registered user.-(1) Without prejudice to the provisions of
section 57, the registration of a person as registered user-
(a) may be varied by the Registrar as regards the goods or services
in respect of which it has effect on the application in writing
in the prescribed manner of the registered proprietor of the trademark;
(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 trademark;
(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 trademark otherwise
than in accordance with the agreement under clause (a) of sub-section
(1) of section 49 or in such way as to cause or to be likely to
cause, deception or confusion;
(ii) that the proprietor or the registered user misrepresented,
or failed to disclose, some fact material to the application for
registration which if accurately represented or disclosed would
not have justified the registration of the registered user;
(iii) that the circumstances have changed since the date of registration
in such a way that at the date of such application for cancellation
they would not have justified registration of the registered user;
(iv) that the registration ought not to have been effected having
regard to rights vested in the applicant by virtue of a contract
in the preformance of which he is interested;
(d)
may be cancelled by the Registrar on his own motion or on the
application in writing in the prescribed manner by any person,
on the ground that any stipulation in the agreement between the
registered proprietor and the registered user regarding the uality
of the goods or services in relation to which the trademark 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 trademark 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 trademark.
(3) The procedure for cancelling a registration shall be such
as may be prescribed: Provided that before cancelling of registration,
the registered proprietor shall be given a reasonable opportunity
of being heard.
51. Power of Registrar to call for information relating to agreement
inrespect of registered users.
51. Power of Registrar to call for information relating to agreement
in respect of registered users.-(1) The Registrar may, at any
time during the continuance of the registration of the registered
user, by notice in writing, require the registered propri tor
to confirm to him within one month that the agreement filed under
clause (a) of sub-section (1) of section 49 continues to be in
force.
(2) If the registered proprietor fails to furnish the confirmation
within one month as required under sub-section (1), the registered
user shall cease to be the registered user on the day immediately
after the expiry of the said period and the Registrar hall notify
the same.
52. Right of registered user to take proceedings against infringement.
52. Right of registered user to take proceedings against infringement.-(1)
Subject to any agreement subsisting between the parties, a registered
user may institute proceedings for infringement in his own name
as if he were the registered proprietor, maki g the registered
proprietor a defendant and the rights and obligations of such
registered user in such case being concurrent with those of the
registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered
proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.
53. No right of permitted user to take proceeding against infringement.
53. No right of permitted user to take proceeding against infringement.-A
person referred to in sub-clause (ii) of clause (r) of sub-section
(1) of section 2 shall have no right to institute any proceeding
for any infringement.
54. Registered user not to have right of assignment or transmission.
54. Registered user not to have right of assignment or transmission.-Nothing
in this Act shall confer on a registered user of a trademark
any assignable or transmissible right to the use thereof.
Explanation I.-The right of a registered user of a trademark
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 trademark,
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 trademark, if otherwise in force, only for so
long as any partner of the original firm at the time of its registration
as registered user, continues to be a partner of the reconstituted
firm.
Explanation II.- For the purposes of Explanation I, ''firm'' has
the same meaning as in the Indian Partnership Act, 1932 (9 of
1932).
55.
Use of one of associated or substantially identical trademarksequivalent
to use of another.
55. Use of one of associated or substantially identical trademarks equivalent to use of another.-(1) Where under the provisions
of this Act, use of a registered trademark is required to be
proved for any purpose, the tribunal may, if and, so far as it
hall think right, accept use of a registered associated trademark, or of the trademark 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 trademark shall, for the
purpose of this Act, be deemed to be also use of any trademark
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 trademark in sub-section (2) shall not be conclusive
as to its evidence of distinctiveness for any purpose under this
Act.
56. Use of trademark for export trade and use when form of trade
connection changes.
56. Use of trademark for export trade and use when form of trade
connection changes.-(1) The application in India of trademark
to goods to be exported from India or in relation to services
for use outside India and any other act done in India in relati
n to goods to be so exported or services so rendered outside India
which, if done in relation to goods to be sold or services provided
or otherwise traded in within India would constitute use of a
trademark therein, shall be deemed to constitute use of he trademark 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 trademark 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.
CHAPTER
RECTIFICATION AND CORRECTION OF THE REGISTER
CHAPTER
VII
RECTIFICATION
AND CORRECTION OF THE REGISTER
57.
Power to cancel or vary registration and to rectify the register.
57.
Power to cancel or vary registration and to rectify the register.-(1)
On application made in the prescribed manner to the Appellate
Board or to the Registrar by any person aggrieved, the tribunal
may make such order as it may think fit for cancelling or varying
the registration of a trademark on the ground of any contravention,
or failure to observe a condition entered on the register in relation
thereto.
(2) Any person aggrieved by the absence or omission from the register
of any entry, or by any entry made in the register without sufficient
cause, or by any entry wrongly remaining on the register, or by
any error or defect in any entry in the register, ay apply in
the prescribed manner to the Appellate Board or to the Registrar,
and the tribunal may make such order for making, expunging or
varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide
any question that may be necessary or expedient to decide in connection
with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice
in the prescribed manner to the parties concerned and after giving
them an opportunity of being heard, make any order referred to
in sub-section (1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall
direct that notice of the rectification shall be served upon the
Registrar in the prescribed manner who shall upon receipt of such
notice rectify the register accordingly.
58. Correction of register.
58. Correction of register.-(1) The Registrar may, on application
made in the prescribed manner by the registered proprietor,-
(a) correct any error in the name, address or description of the
registered proprietor of a trademark, or any other entry relating
to the trademark;
(b) enter any change in the name, address or description of the
person who is registered as proprietor of a trademark;
(c)
cancel the entry of a trademark on the register;
(d) strike out any goods or classes of goods or services from
those in respect of which a trademark 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 trademark, and after notice to the
registered proprietor, correct any error, or enter any change,
in the name, address or description of the registered user.
59. Alteration of registered trademarks.
59. Alteration of registered trademarks.-(1) The registered proprietor
of a trademark may apply in the prescribed manner to the Registrar
for leave to add to or alter the trademark in any manner not
substantially affecting the identity thereof, and the Registrar
may refuse leave or may grant it on such terms and subject to
such limitations as he may think fit.
(2) The Registrar may cause an application under this section
to be advertised in the prescribed manner in any case where it
appears to him that it is expedient so to do, and where he does
so, if within the prescribed time from the date of the advertise
ent any person gives notice to the Registrar in the prescribed
manner of opposition to the application, the Registrar shall,
after hearing the parties if so required, decide the matter.
(3) Where leave is granted under this section, the trademark
as altered shall be advertised in the prescribed manner, unless
the application has already been advertised under sub-section
(2).
60. Adaptation of entries in register to amended or substitutedclassification
of goods or services.
60. Adaptation of entries in register to amended or substituted
classification of goods or services.-(1) The Registrar shall not
make any amendment of the register which would have the effect
of adding any goods or classes of goods or services to those n
respect of which a trademark is registered (whether in one or
more classes) immediately before the amendment is to be made or
of antedating the registration of a trademark in respect of any
goods or services: Provided that this sub-section, shall not apply
when the Registrar is satisfied that compliance therewith would
involve undue complexity and that the addition or antedating,
as the case may be, would not affect any substantial quantity
of goods or servi es and would not substantially prejudice the
rights of any person.
(2) A proposal so to amend the register shall be brought to the
notice of the registered proprietor of the trademark affected
and advertised in the prescribed manner, and may be opposed before
the Registrar by any person aggrieved on the ground that t e proposed
amendment contravenes the provisions of sub-section (1).
CHAPTER
COLLECTIVE
MARKS
CHAPTER
VIII
COLLECTIVE MARKS
61. Special provisions for collective marks.
61.
Special provisions for collective marks.-(1) The provisions of
this Act shall apply to collective marks subject to the provisions
contained in this Chapter.
(2) In relation to a collective mark the reference in clause (zb)
of sub-section (1) of section 2 to distinguishing the goods or
services of one person from those of others shall be construed
as a reference to distinguishing the goods or services of memb
rs of an association of persons which is the proprietor of the
mark from those of others.
62.
Collective mark not to be misleading as to character or significance.
62. Collective mark not to be misleading as to character or significance.-A
collective mark shall not be registered if it is likely to deceive
or cause confusion on the part of public in particular if it is
likely to be taken to be something other than collective mark,
and in such case the Registrar may require that a mark in respect
of which application is made for registration comprise some indication
that it is a collective mark.
63. Application to be accompanied by regulations governing use
of collective marks.
63. Application to be accompanied by regulations governing use
of collective marks.-(1) An application for registration of a
collective mark shall be accompanied by the regulations governing
the use of such collective mark. (2) The regulations referred
to in sub-section (1) shall specify the persons authorised to
use the mark, the conditions of membership of the association
and, the conditions of use of the mark, including any sanctions
against misuse and such other matter as may be prescribed.
64.
Acceptance of application and regulations by Registrar.
64. Acceptance of application and regulations by Registrar.-If
it appears to the Registrar that the requirements for registration
are satisfied, he shall accept the application together with the
regulations, either unconditionally or subject to such con itions
including amendments of the said regulations, if any, as he may
deem fit or refuse to accept it and if accepted shall notify the
regulations.
65.
Regulations to be open to inspection.
65.
Regulations to be open to inspection.-The regulations referred
to in sub-section (1) of section 63 shall be open to public inspection
in the same way as the register as provided in section 148.
66. Amendment of regulations.
66. Amendment of regulations.-Any amendment of regulations referred
to in sub-section (1) of section 63 shall not be effective unless
the amended regulations are filed with the Registrar, and accepted
and published by him in accordance with section 64.
67.
Infringement proceedings by registered proprietor of collective
mark.
67. Infringement proceedings by registered proprietor of collective
mark.-In a suit for infringement instituted by the registered
proprietor of a collective mark as plaintiff the court shall take
into account any loss suffered or likely to be suffered b authorised
users and may give such directions as it thinks fit as to the
extent to which the plaintiff shall hold the proceeds of any pecuniary
remedy on behalf of such authorised users.
68. Additional grounds for removal of registration of collective
mark.
68. Additional grounds for removal of registration of collective
mark.-The registration of a collective mark may also be removed
from the register on the ground-
(a) that the manner in which the collective mark has been used
by the proprietor or authorised user has caused it to become liable
to mislead the public as a collective mark; or
(b) that the proprietor has failed to observe, or to secure the
observance of the regulations governing the use of the mark.
Explanation
I.-For the purposes of this Chapter, unless the context otherwise
requires, ''authorised user'' means a member of an association
authorised to use the registered collective mark of the association.
Explanation
II.-For the purposes of this Act, use of a collective mark by
an authorised user referred to in
Explanation
I shall be deemed to be the use by the registered proprietor thereof.
CHAPTER
CERTIFICATION TRADE MARKS
CHAPTER IX
CERTIFICATION TRADE MARKS
69. Certain provisions of this Act not applicable to certification
trademarks.
69. Certain provisions of this Act not applicable to certification
trademarks.-The following provisions of this Act shall not apply
to certification trademarks, that is to say,-
(a) clauses (a) and (c) of sub-section (1) of section 9;
(b) sections 18, 20 and 21, except as expressly applied by this
Chapter;
(c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section
(2) of section 56;
(d) Chapter XII, except section 107.
70. Registration of certification trademarks.
70. Registration of certification trademarks.-A mark shall not
be registrable as a certification trademark in the name of a
person who carries on a trade in goods of the kind certified or
a trade of the provision of services of the kind certified.
71. Applications for registration of certification trademarks.
71. Applications for registration of certification trademarks.-(1)
An application for the registration of a mark as a certification
trademark shall be made to the Registrar in the prescribed manner
by the person proposed to be registered as the proprie or thereof,
and accompanied by a draft of the regulations to be deposited
under section 74.
(2) Subject to the provisions of section 70, the provisions of
sections 18, 19 and 22 shall apply in relation to an application
under this section as they apply in relation to an application
under section 18, subject to the modification that references
therein to acceptance of an application shall be construed as
references to authorisation to proceed with an application.
(3) In dealing under the said provisions with an application under
this section, the tribunal shall have regard to the like considerations,
so far as relevant, as if the application were applications under
section 18 and to any other considerations relev nt to applications
under this section, including the desirability of securing that
a certification trademark shall comprise some indication that
it is a certification trademark.
72. Consideration of application for registration by Registrar.
72. Consideration of application for registration by Registrar.-(1)
The Registrar shall consider the application made under section
71 with regard to the following matters, namely:-
(a) whether the applicant is competent to certify the goods in
respect of which the mark is to be registered;
(b) whether the draft of the regulations to be filed under section
74 is satisfactory;
(c) whether in all the circumstances the registration applied
for would be to the public advantage, and may either-
(i) refuse the application; or
(ii) accept the application and approve the said draft of the
regulations either without modification and unconditionally or
subject to any conditions or limitations, or to any amendments
or modifications of the application or of the regulations, which
h thinks requisite having regard to any of the said matters.
(2) Except in the case of acceptance and approval without modification
and unconditionally, the Registrar shall not decide any matter
under sub-section (1) without giving the applicant an opportunity
of being heard.
73. Opposition to registration of certification trademarks.
73. Opposition to registration of certification trademarks.-When
an application has been accepted, the Registrar shall, as soon
as may be thereafter, cause the application as accepted to be
advertised in the prescribed manner, and the provisions of sect
on 21 shall apply in relation to the registration of the mark
as they apply in relation to an application under section 18.
74. Filing of regulations governing use of a certification trademark.
74. Filing of regulations governing use of a certification trademark.-(1) There shall be filed at the Trademarks Registry in
respect of every mark registered as a certification trademark
regulations for governing the use thereof, which shall include
p ovisions as to the cases in which the proprietor is to certify
goods or services and to authorise the use of the certification
trademark, and may contain any other provisions which the Registrar
may by general or special order, require or permit to be i serted
therein (including provisions conferring a right of appeal to
the Registrar against any refusal of the proprietor to certify
goods or to authorise the use of the certification trademark
in accordance with the regulations); and regulations so file shall
be open to inspection in like manner as the register as provided
in section 148.
(2) The regulations so filed may, on the application of the registered
proprietor, be altered by the Registrar. (3) The Registrar may
cause such application to be advertised in any case where it appears
to him expedient so to do, and where he does so, if within the
time specified in the advertisement any person gives notice of
opposition to the application, the Re istrar shall not decide
the matter without giving the parties an opportunity of being
heard.
75. Infringement of certification trademarks.
75. Infringement of certification trademarks.-The right conferred
by section 78 is infringed by any person who, not being the registered
proprietor of the certification trademark or a person authorised
by him in that behalf under the regulations filed nder section
74, using it in accordance therewith, uses in the course of trade,
a mark, which is identical with, or deceptively similar to the
certification trademark 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 trademark.
76. Acts not constituting infringement of certification trademarks. 76. Acts not constituting infringement of certification
trademarks.-(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 trademark-
(a) where a certification trademark is registered subject to
any conditions or limitations entered on the register, the use
of any such mark in any mode, in relation to goods to be sold
or otherwise traded in any place, or in relation to goods to be
exp rted to any market or in relation to services for use or available
for acceptance in any place, country or territory or in any other
circumstances, to which having regard to any such limitations,
the registration does not extend;
(b) the use of a certification trademark 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 trademark in relation to goods
or services adapted to form part of, or to be accessory to, other
goods in relation to which the mark has been used without infringement
of the right given as aforesaid or might for the time eing be
so used, if the use of the mark is reasonably necessary in order
to indicate that the goods or services are so adapted and neither
the purpose nor the effect of the use of the mark is to indicate
otherwise than in accordance with the fact that th goods or services
are certified by the proprietor.
(2) Clause (b) of sub-section (1) shall not apply to the case
of use consisting of the application of a certification trademark to goods or services, notwithstanding that they are such
goods or services as are mentioned in that clause if such applicati
n is contrary to the regulations referred to in that clause.
(3) Where a certification trademark is one of two or more trademarks registered under this Act, which are identical or nearly
resemble each other, the use of any of those trademarks in exercise
of the right to the use of that trademark given by regis ration,
shall not be deemed to be an infringement of the right so given
to the use of any other of those trademarks.
77. Cancellation or varying of registration of certification trademarks.
77.
Cancellation or varying of registration of certification trademarks.-The Registrar may, on the application in the prescribed
manner of any person aggrieved and after giving the proprietor
an opportunity of opposing the application, make such order a
he thinks fit for expunging or varying any entry in the register
to a certification trademark, or for varying the regulations,
on any of the following grounds, namely:-
(a) that the proprietor is no longer competent, in the case of
any of the goods or services in respect of which the mark is registered,
to certify those goods or services;
(b) that the proprietor has failed to observe any provisions of
the regulations to be observed on his part;
(c) that it is no longer to the public advantage that the mark
should remain registered;
(d) that it is requisite for the public advantage that if the
mark remains registered, the regulations should be varied.
78.
Rights conferred by registration of certification trademarks.
78. Rights conferred by registration of certification trademarks.-(1)
Subject to the provisions of sections 34, 35 and 76, the registration
of a person as a proprietor of certification trademark in respect
of any goods or services shall, if valid, given 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 trademark given
under sub-section (1) shall be subject to any conditions and limitations
to which the registration is subject.
CHAPTER
SPECIAL
PROVISIONS FOR TEXTILE GOODS
CHAPTER X
SPECIAL PROVISIONS FOR TEXTILE GOODS
79.
Textile goods.
79. Textile goods.-The Central Government may prescribe classes
of goods (in this Chapter referred to as textile goods) to the
trademarks 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 trademarks as they apply to trademarks used in relation to other classes of goods.
80. Restriction on registration of textile goods.
80. Restriction on registration of textile goods.-(1) In respect
of textile goods being piece goods- (a) no mark consisting of
a line heading alone shall be registrable as a trademark; (b)
a line heading shall not be deemed to be capable of distinguishing;
(c) the registration of trademark shall not give any exclusive
right to the use of a line heading. (2) In respect of any textile
goods, the registration of letters or numerals, or any combination thereof, shall be subject to such
conditions and restrictions as may be prescribed. 81. Stamping
of piece goods, cotton yarn and thread.
81. Stamping of piece goods, cotton yarn and thread.-(1) Piece
goods, such as are ordinarily sold by length or by the piece,
which have been manufactured, bleached, dyed, printed or finished
in premises which are a factory, as defined in the Factories 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 standar yards,
or in standard yards and a fraction of such a yard, or in standard
metres or in standard metres and a fraction of such a metre, according
to the real length of the piece, and, except when the goods are
sold from the factory for export from India, without being conspicuously
marked on each piece with the name of the manufacturer or of the
occupier of the premises in which the piece was finally processed
or of the wholesale purchaser in India of the piece.
(2) Cotton yarn such as is ordinarily sold in bundles, and cotton
thread, namely, sewing, darning, crochet or handicraft thread,
which have been manufactured, bleached, dyed or finished in any
premises not sale from those premises unless, in accordance with
the said rules in the case of yarn- exempted by the rules made
under section 82 shall not be removed for
(a) the bundles are conspicuously marked with an indication of
the weight of yarn in English or the metric system in each bundles;
and
(b) the count of the yarn contained in the bundles and in the
case of thread each unit is conspicuously marked with the length
or weight of thread in the unit and in such other manner as may
be required by the said rules; and
(c) except where the goods are sold from the premises for export
from India, unless each bundle or unit is conspicuously marked
with the name of the manufacturer or of the wholesale purchaser
in India of the goods:
Provided that the rules made under section 82 shall exempt all
premises where the work is done by members of one family with
or without the assistance of not more than ten other employees,
and all premises controlled by a co-operative society where not
m re than twenty workers are employed in the premises.
82. Determination of character of textile goods by sampling.
82. Determination of character of textile goods by sampling.-(1)
For the purposes of this Act, the Central Government may make
rules- (a) to provide, with respect to any goods which purport
or are alleged to be of uniform number, quantity, measure, guage
or weight, for the number of samples to be selected and tested
and for the selection of the samples;
(b) to provide, for the manner in which for the purposes of section
81 cotton yarn and cotton thread shall be marked with the particulars
required by that section, and for the exemption of certain premises
used for the manufacture, bleaching, dying or funishing of cotton
yarn or cotton thread from the provisions of that section; and
(c) declaring what classes of goods are included in the expression
"piece goods such as are ordinarily sold by length or by
the piece" for the purpose of section 81, of this Act or
clause (n) of sub-section (2) of section 11 of the Customs Act,
1962.
(2) With respect to any goods for the selection and testing of
samples of which provision is not made in any rules for the time
being in force under sub-section (1), the court or officer of
customs, as the case may be, having occasion to ascertain the
n mber, quantity, measure, gauge or weight of the goods, shall,
by order in writing, determine the number of samples to be selected
and tested and the manner in which the samples are to be selected.
(3) The average of the results of the testing in pursuance of
rules under sub-section (1) or of an order under sub-section (2)
shall be prima facie evidence of the number, quantity, measure,
gauge or weight, as the case may be, of the goods.
(4) If a person having any claim to, or in relation to, any goods
of which samples have been selected and tested in pursuance of
rules under sub-section (1), or of an order under sub-section
(2), desires that any further samples of the goods be selected
and tested, such further samples shall, on his written application
and on the payment in advance by him to the court or officer of
customs, as the case may be, of such sums for defraying the cost
of the further selection and testing as the court or offic r may
from time to time require, be selected and tested to such extent
as may be permitted by rules made by the Central Government in
this behalf or as, in the case of goods with respect to which
provision is not made in such rules, the court reasonable, the
samples being selected in the manner prescribed under sub-section
(1), or in sub-section (2), as the case may be. or officer of
customs may determine in the circumstances to be (5) The average
of the results of the testing referred to in sub-section (3) and
of the further testing under sub-section (4) shall be conclusive
proof of the number, quantity, measure, gauge or weight, as the
case may be, of the goods.
CHAPTER
APPELLATE
BOARD
CHAPTER XI
APPELLATE BOARD 83.
Establishment of Appellate Board.
83. Establishment of Appellate Board.-The Central Government shall,
by notification in the Official Gazette, establish an Appellate
Board to be known as the Intellectual Property Appellate Board
to exercise the jurisdiction, powers and authority confer ed on
it by or under this Act.
84.
Composition of Appellate Board.
84. Composition of Appellate Board.-(1) The Appellate Board shall
consist of a Chairman, Vice-Chairman and such number of other
Members, as the Central Government may deem fit and, subject to
the other provisions of this Act, the jurisdiction, powers an
authority of the Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall
consist of one Judicial Member and one Technical Member and shall
sit at such place as the Central Government may, by notification
in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the
Chairman-
(a) may, in addition to discharging the functions of the Judicial
Member or Technical Member of the Bench to which he is appointed,
discharge the functions of the Judicial Member or, as the case
may be, the Technical Member, of any other Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairman, the Judicial Member or the
Technical Member appointed to one Bench to discharge also the
functions of the Judicial Member or the Technical Member, as the
case may be, of another Bench.
(4) Where any Benches are constituted, the Central Government
may, from time to time, by notification, make provisions as to
the distribution of the business of the Appellate Board amongst
the Benches and specify the matters which may be dealt with by
e ch Bench.
(5) If any question arises as to whether any matter falls within
the purview of the business allocated to a Bench, the decison
of the Chairman shall be final.
Explanation.- For the removal of doubts, it is hereby declared
that the expression ''matter'' includes an appeal under section
91.
(6) If the Members of a Bench differ in opinion on any point,
they shall state the point or points on which they differ, and
make a reference to the Chairman who shall either hear the point
or points himself or refer the case for hearing on such point
o points by one or more of the other Members and such point or
points shall be decided according to the opinion of the majority
of the Members who have heard the case, including those who first
heard it.
85. Qualifications for appointment as Chairman, Vice-Chairman,
or otherMembers.
85. Qualifications for appointment as Chairman, Vice-Chairman,
or other Members.-
(1) A person shall not be qualified for appointment as the Chairman
unless he-
(a) is, or has been, a Judge of a High Court; or
(b) has, for at least two years, held the office of a Vice-Chairman.
(2) A person shall not be qualified for appointment as the Vice-Chairman,
unless he-
(a) has, for at least two years, held the office of a Judicial
Member or a Technical Member; or
(b) has been a member of the Indian Legal Service and has held
a post in Grade I of that service or any higher post for at least
five years.
(3) A person shall not be qualified for appointment as a Judicial
Member, unless he-
(a) has been a member of the Indian Legal Service and has held
the post in Grade I of that Service for at least three years;
or (b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical
Member, unless he-
(a) has, for at least ten years, exercised functions of a tribunal
under this Act or under the Trade and Merchandise Marks Act, 1958,
or both, and has held a post not lower than the post of a Joint
Registrar for at least five years; or
(b) has, for at least ten years, been an advocate of a proven
specialised experience in trademark law.
(5) Subject to the provisions of sub-section (6), the Chairman,
Vice-Chairman and every other Member shall be appointed by the
President of India.
(6) No appointment of a person as the Chairman shall be made except
after consultation with the Chief Justice of India. 86. Term of
office of Chairman, Vice-Chairman and other Members.
86. Term of office of Chairman, Vice-Chairman and other Members.-The
Chairman, Vice-Chairman or other Members shall hold office as
such for a term of five years from the date on which he enters
upon his office or until he attains,-
(a) in the case of Chairman and Vice-Chairman, the age of sixty-five
years; and
(b) in the case of a Member, the age of sixty-two years, whichever
is earlier
87. Vice-Chairman or senior-most Member to act as Chairman
or dischargehis functions in certain circumstances.
87. Vice-Chairman or senior-most Member to act as Chairman or
discharge his functions in certain circumstances.-(1) In the event
of or any vacancy in the office of the Chairman by reasons of
his death, resignation or otherwise, the Vice-Chairman and in
h s absence the senior-most Member shall act as Chairman until
the date on which a new Chairman, appointed in accordance with
the provisions of this Act to fill such vacancy, enters upon his
office.
(2) When the Chairman is unable to discharge his functions owing
to his absence, illness or any other cause, the Vice-Chairman
and in his absence the senior-most Member shall discharge the
functions of the Chairman until the date on which the Chairman
r sumes his duty.
88. Salaries, allowances and other terms and conditions of service
ofChairman, Vice-Chairman and other Members.
88. Salaries, allowances
and other terms and conditions of service of Chairman, Vice-Chairman
and other Members.-(1) The salaries and allowances payable to,
and other terms and conditions of service (including pension,
gratuity and other retirement bene its), of the Chairman, Vice-Chairman
and other Members shall be such as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), a person
who, immediately before the date of assuming office as the Chairman,
Vice-Chairman or other Member was in service of Government, shall
be deemed to have retired from service on the date n which he
enters upon office as the Chairman, Vice-Chairman or other Member.
89. Resignation and removal.
89. Resignation and removal.-(1) The Chairman, Vice-Chairman or
any other Member may, by notice in writing under his hand addressed
to the President of India, resign his office: Provided that the
Chairman, Vice-Chairman or any other Member shall, unless he is
permitted by the President of India to relinquish his office sooner,
continue to hold office until the expiry of three months from
the date of receipt of such notice or un il a person duly appointed
as his successor enters upon his office or until the expiry of
his term of office, whichever is earlier.
(2) The Chairman, Vice-Chairman or any other Member shall not
be removed from his office except by an order made by the President
of India on the ground of proved misbehaviour or incapacity after
an inquiry made by a Judge of the Supreme Court in which he Chairman,
Vice-Chairman or other Member had been informed of the charges
against him and given a reasonable opportunity of being heard
in respect of those charges.
(3) The Central Government may, by rules, regulate the procedure
for the investigation of misbehaviour or incapacity of the Chairman,
Vice-Chairman or other Member referred to in sub-section (2).
90. Staff of Appellate Board.
90. Staff of Appellate Board.-(1) The Central Government shall
determine the nature and categories of the officers and other
employees required to assist the Appellate Board in the discharge
of its functions and provide the Appellate Board with such off
cers and other employees as it may think fit.
(2) The salaries and allowances and conditions of service of the
officers and other employees of the Appellate Board shall be such
as may be prescribed.
(3) The officers and other employees of the Appellate Board shall
discharge their functions under the general superintendence of
the Chairman in the manner as may be prescribed.
91. Appeals to Appellate Board.
91. Appeals to Appellate Board.-(1) Any person aggrieved by an
order or decision of the Registrar under this Act, or the rules
made thereunder may prefer an appeal to the Appellate Board within
three months from the date on which the order or decision s ught
to be appealed against is communicated to such person preferring
the appeal.
(2) No appeal shall be admitted if it is preferred after the expiry
of the period specified under sub-section (1): Provided that an
appeal may be admitted after the expiry of the period specified
therefor, if the appellant satisfies the Appellate Board that
he had sufficient cause for not preferring the appeal within the
specified period.
(3) An appeal to the Appellate Board shall be in the prescribed
form and shall be verified in the prescribed manner and shall
be accompanied by a copy of the order or decision appealed against
and by such fees as may be prescribed. 92.
Procedure and powers of Appellate Board. 92.
Procedure and powers of Appellate Board.-(1) The Appellate Board
shall not be bound by the procedure laid down in the Code of Civil
Procedure, 1908 (5 of 1908) but shall be guided by principles
of natural justice and subject to the provisions of thi Act and
the rules made thereunder, the Appellate Board shall have powers
to regulate its own procedure including the fixing of places and
times of its hearing.
(2) The Appellate Board shall have, for the purpose of discharging
its functions under this Act, the same powers as are vested in
a civil court under the Code of Civil Procedure, 1908 (5 of 1908)
while trying a suit in respect of the following matters, amely:-
(a) receiving evidence;
(b) issuing commissions for examination of witnesses; (c) requisitioning
any public record; and
(d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed
to be a judicial proceeding within the meaning of sections 193
and 228, and for the purpose of section 196, of the Indian Penal
Code (45 of 1860), and the Appellate Board shall be deemed to
b a civil court for all the purposes of section 195 and Chapter
XXVI of the Code of Criminal Procedure, 1973 (2 of 1974).
93. Bar of jurisdiction of courts, etc.
93. Bar of jurisdiction of courts, etc.-No court or other authority
shall have or, be entitled to, exercise any jurisdiction, powers
or authority in relation to the matters referred to in sub-section
(1) of section 91.
94. Bar to appear before Appellate Board.
94. Bar to appear before Appellate Board.-On ceasing to hold office,
the Chairman, Vice-Chairman or other Members shall not appear
before the Appellate Board or the Registrar.
95. Conditions as to making of interim orders.
95. Conditions as to making of interim orders.-Notwithstanding
anything contained in any other provisions of this Act or in any
other law for the time being in force, no interim order (whether
by way of injunction or stay or any other manner) shall be m de
on, or in any proceedings relating to, an appeal unless-
(a) copies of such appeal and of all documents in support of the
plea for such interim order are furnished to the party against
whom such appeal is made or proposed to be made; and (b) opportunity
is given to such party to be heard in the matter.
96. Power of Chairman to transfer cases from one Bench to another.
96. Power of Chairman to transfer cases from one Bench to another.-On
the application of any of the parties and after notice to the
parties, and after hearing such of them as he may desire to be
heard, or on his own motion without such notice, the Chair an
may transfer any case pending before one Bench, for disposal,
to any other Bench.
97. Procedure for application for rectification, etc., before
AppellateBoard.
97. Procedure for application for rectification, etc., before
Appellate Board.-(1) An application for rectification of the register
made to the Appellate Board under section 57 shall be in such
form as may be prescribed.
(2) A certified copy of every order
or judgment of the Appellate Board relating to a registered trademark under this Act shall be communicated to the Registrar by
the Board and the Registrar shall amend the entries in, or rectify,
the register in accordance with such order. give effect to the
order of the Board and shall, when s directed,
98. Appearance of Registration in legal proceedings.
98. Appearance of Registrar in legal proceedings.-(1) The Registrar
shall have the right to appear and be heard-
(a) in any legal proceedings before the Appellate Board in which
the relief sought includes alteration or rectification of the
register or in which any question relating to the practice of
the Trademarks Registry is raised;
(b) in any appeal to the Board from an order of the Registrar
on an application for registration of a trademark-
(i) which is not opposed, and the application is either refused
by the Registrar or is accepted by him subject to any amendments,
modifications, conditions or limitations, or
(ii) which has been opposed and the Registrar considers that his
appearance is necessary in the public interest, and the Registrar
shall appear in any case if so directed by the Board.
(2) Unless the Appellate Board otherwise directs, the Registrar
may, in lieu of appearing, submit a statement in writing signed
by him, giving such particulars as he thinks proper of the proceedings
before him relating to the matter in issue or of the g ounds of
any decision given by him affecting it, or of the practice of
the Trademarks Registry in like cases, or of other matters relevant
to the issues and within his knowledge as Registrar, and such
statement shall be evidence in the proceeding.
99. Costs of Registrar in proceedings before Appellate Board.
99. Costs of Registrar in proceedings before Appellate Board.-In
all proceedings under this Act before the Appellate Board the
costs of the Registrar shall be in the discretion of the Board,
but the Registrar shall not be ordered to pay the costs of any
of the parties.
100. Transfer of pending proceedings to Appellate Board.
100. Transfer of pending proceedings to Appellate Board.-All cases
of appeals against any order or decision of the Registrar and
all cases pertaining to rectification of register, pending before
any High Court, shall be transferred to the Appellate Boa d from
the date as notified by the Central Government in the Official
Gazette and the Appellate Board may proceed with the matter either
de novo or from the stage it was so transferred.
CHAPTER
OFFENCES, PENALTIES AND PROCEDURE
CHAPTER XII
OFFENCES, PENALTIES AND PROCEDURE
101. Meaning of applying trademarks and trade descriptions.
101. Meaning of applying trademarks and trade descriptions.-(1)
A person shall be deemed to apply a trademark 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 trademark or mark or trade description has been ap lied;
or
(d) uses a trademark 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 trademark or mark or trade description; or
(e) in relation to the goods or services uses a trademark or
trade description in any sign, advertisement, invoice, catalogue,
business letter, business paper, price list or other commercial
document and goods are delivered or services are rendered to person
in pursuance of a request or order made by reference to the trademark or trade description as so used.
(2) A trademark or mark or trade description shall be deemed
to be applied to goods whether it is woven in, impressed on, or
otherwise worked into, or annexed or affixed to, the goods or
to any package or other thing.
102. Falsifying and falsely applying trademarks.
102. Falsifying and falsely applying trademarks.-(1) A person
shall be deemed to falsify a trademark who, either,-
(a) without the assent of the proprietor of the trademark makes
that trademark or a deceptively similar mark; or
(b) falsifies any genuine trademark, whether by alteration, addition,
effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods or services
a trademark who, without the assent of the proprietor of the
trademark,-
(a) applies such trademark 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 trademark of such proprietor, for
the purpose of packing, filling or wrapping therein any goods
other than the genuine goods of the proprietor of the trademark.
(3) Any trademark 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 trademark.
(4) In any prosecution for falsifying a trademark or falsely
applying a trademark to goods or services, the burden of proving
the assent of the proprietor shall lie on the accused.
103. Penalty for applying false trademarks, trade descriptions,
etc.
103. Penalty for applying false trademarks, trade descriptions,
etc.-Any person who-
(a) falsifies any trademark; or
(b) falsely applies to goods or services any trademark; 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 trademark; or
(d) applies any false trade description to goods or services;
or
(e) applies to any goods to which an indication of the country
or place in which they were made or produced or the name and address
of the manufacturer or person for whom the goods are manufactured
is required to be applied under section 139, a false in ication
of such country, place, name or address; or
(f) tampers with, alters or effaces an indication of origin which
has been applied to any goods to which it is required to be applied
under section 139; or
(g) causes any of the things above-mentioned in this section to
be done, shall, unless he proves that he acted, without intent
to defraud, be punishable with imprisonment for a term which shall
not be less than six months but which may extend to three years
and with fine which shall not be less than fifty thousand rupees
but hich may extend to two lakh rupees:
Provided that the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment
for a term of less than six months or a fine of less than fifty
thousand rupees.
104. Penalty for selling goods or providing services to which
false trademark or false trade description is applied.
104. Penalty for selling goods or providing services to which
false trademark or false trade description is applied.-Any person
who sells, lets for hire or exposes for sale, or hires or has
in his possession for sale, goods or things, or provides or hi
es services, to which any false trademark or false trade description
is applied or which, being required under section 139 to have
applied to them an indication of the country or place in which
they were made or produced or the name and address of the m nufacturer,
or person for whom the goods are manufactured or services provided,
as the case may be, are without the indications so required, shall,
unless he proves,-
(a) that, having taken all reasonable precautions against committing
an offence against this section, he had at the time of commission
of the alleged offence no reason to suspect the genuineness of
the trademark or trade description or that any offence had been
committed in respect of the goods or services; or
(b) that, on demand by or on behalf of the prosecutor, he gave
all the information in his power with respect to the person from
whom he obtained such goods or things or services; or
(c) that otherwise he had acted innocently, be punishable with
imprisonment for a term which shall not be less than six months
but which may extend to three years and with fine which shall
not be less than fifty thousand rupees but which may extend to
two lakh rupees: Provided that the court may, for adequate and
special reasons to be mentioned in the judgment, impose a sentence
of imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees.
105. Enhanced penalty on second or subsequent conviction.
105. Enhanced penalty on second or subsequent conviction.-Whoever
having already been convicted of an offence under section 103
or section 104 is again convicted of any such offence shall be
punishable for the second and for every subsequent offence, wi
h imprisonment for a term which shall not be less than one year
but which may extend to three years and with fine which shall
not be less than one lakh rupees but which may extend to two lakh
rupees: Provided that the court may, for adequate and special
reason to be mentioned in the judgment, impose a sentence of imprisonment
for a term of less than one year or a fine of less than one lakh
rupees:
Provided further that for the purposes of this section, no cognizance
shall be taken of any conviction made before the commencement
of this Act.
106. Penalty for removing piece goods, etc. contrary to section
81.
106. Penalty for removing piece goods, etc., contrary to section
81.-If any person removes or attempts to remove or causes or attempts
to cause to be removed for sale from any premises referred to
in section 81 or sells or exposes for sale or has in his possession
for sale or for any purpose of trade or manufacture piece goods
or cotton yarn or cotton thread which is not marked as required
by that section, every such piece and every such bundle of yarn
and all such thread and everything used for the pac ing thereof
shall be forfeited to Government and such person shall be punishable
with fine which may extend to one thousand rupees.
107. Penalty for falsely representing a trademark as registered.
107. Penalty for falsely representing a trademark as registered.-(1)
No person shall make any representation-
(a) with respect to a mark, not being a registered trademark,
to the effect that it is a registered trademark; or (b) with
respect to a part of a registered trademark, not being a part
separately registered as a trademark, to the effect that it is
separately registered as a trademark; or
(c) to the effect that a registered trademark 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 trademark gives an exclusive
right to the use thereof in any circumstances in which, having
regard to limitation entered on the register, the registration
does not in fact give that right.
(2) If any person contravenes any of the provisions of sub-section
(1), he shall be punishable with imprisonment for a term which
may extend to three years, or with fine, or with both.
(3) For the purposes of this section, the use in India in relation
to a trademark of the word "registered'', or of any other
expression, symbol or sign referring whether expressly or impliedly
to registration, shall be deemed to import a reference to re istration
in the register, except-
(a) where that word or other expression, symbol or sign is used
in direct association with other words delineated in characters
at least as large as those in which that word or other expression,
symbol or sign is delineated and indicating that the refere ce
is to registration as a trademark 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 trademark under the law of a country
outside India and in relation solely to goods to be exported to
that country or in relation to services for use in that country.
108. Penalty for improperly describing a place of business as
connectedwith the Trademarks Office.
108. Penalty for improperly describing a place of business as
connected with the Trademarks Office.-If any person uses on his
place of business, or on any document issued by him, or otherwise,
words which would reasonably lead to the belief that his pla e
of business is, or is officially connected with, the Trademarks
Office, he shall be punishable with imprisonment for a term which
may extend to two years, or with fine, or with both.
109. Penalty for falsification of entries in the register.
109. Penalty for falsification of entries in the register.-If
any person makes, or causes to be made, a false entry in the register,
or a writing falsely purporting to be a copy of an entry in the
register, or produces or tenders or causes to be produced or tendered,
in evidence any such writing, knowing the entry or writing to
be false, he shall be punishable with imprisonment for a term
which may extend to two years, or with fine, or with both.
110. No offence in certain cases.
110. No offence in certain cases.-The provisions of sections 102,
103, 104 and 105 shall, in relation to a registered trademark
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 trademark and
the act or omission is permitted under this Act; and
(b) the alleged offence relates to a registered or an unregistered
trademark and the act or omission is permitted under any other
law for the time being in force.
111. Forfeiture of goods.
111. Forfeiture of goods.-(1) Where a person is convicted of an
offence under section 103 or section 104 or section 105 or is
acquitted of an offence under section 103 or section 104 on proof
that he acted without intent to defraud, or under section 104
n proof of the matters specified in clause (a), clause (b) or
clause (c) of that section, the court convicting or acquitting
him may direct the forfeiture to Government of all goods and things
by means of, or in relation to, which the offence has been co
mitted, or but for such proof as aforesaid would have been committed.
(2) When a forfeiture is directed on a conviction and an appeal
lies against the conviction, an appeal shall lie against the forfeiture
also.
(3) When a forfeiture is directed on acquittal and the goods or
things to which the direction relates are of value exceeding fifty
rupees, an appeal against the forfeiture may be preferred, within
thirty days from the date of the direction, to the court o which
in appealable cases appeals lie from sentences of the court which
directed the forfeiture.
(4) When a forfeiture is directed on a conviction, the court,
before whom the person is convicted, may order any forfeited articles
to be destroyed or otherwise disposed of as the court thinks fit.
112. Exemption of certain persons employed in ordinary course
of business.
112. Exemption of certain persons employed in ordinary course
of business.-Where a person accused of an offence under section
103 proves- (a) that in the ordinary course of his business he
is employed on behalf of other persons to apply trademarks 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 trademarks; 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
trademark 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 trademark or trade description was applied,
he shall be acquitted.
113. Procedure where invalidity of registration is pleaded by
the accused.
113. Procedure where invalidity of registration is pleaded by
the accused.-(1) Where the offence charged under section 103 or
section 104 or section 105 is in relation to a registered trademark and the following procedure shall be followed:- accused pleads
that the registration of the trade m rk is invalid, the
(a) If the court is satisfied that such defence is prima facie
tenable, it shall not proceed with the charge but shall adjourn
the proceeding for three months from the date on which the plea
of the accused is recorded to enable the accused to file an ap
lication before the Appellate Board under this Act, for the rectification
of the register on the ground that the registration is invalid.
(b) If the accused proves to the court that he has made such application
within the time so limited or within such further time as the
court may for sufficient cause allow, the further proceedings
in the prosecution shall stand stayed till the disposal f such
application for rectification.
(c) If within a period of three months or within such extended
time as may be allowed by the court the accused fails to apply
to the Appellate Board for rectification of the register, the
court shall proceed with the case as if the registration were
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 trademark in question on the ground
of invalidity of the registration thereof has already been properly
made to and is pending before the tribunal, the court shall stay
the further proceedings in the prosecution pending the disposal
of the application aforesaid and shall determine the charge against
the accused in conformity with the result o the application for
rectification in so far as the complainant relies upon the registration
of his mark.
114. Offences by companies.
114. Offences by companies.-(1) If the person committing an offence
under this Act is a company, the company as well as every person
in charge of, and responsible to, the company for the conduct
of its business at the time of the commission of the offenc shall
be deemed to be guilty of the offence and shall be liable to be
proceeded against and punished accordingly: Provided that nothing
contained in this sub-section shall render any such person liable
to any punishment if he proves that the offence was committed
without his knowledge or that he exercised all due diligence to
prevent the commission of such offence.
(2) Notwithstanding anything contained in sub-section (1), where
an offence under this Act has been committed by a company and
it is proved that the offence has been committed with the consent
or connivance of, or that the commission of the offence is at
ributable to any neglect on the part of, any director, manager,
secretary or other officer of the company, such director, manager,
secretary or other officer shall also be deemed to be guilty of
that offence and shall be liable to be proceeded against an punished
accordingly.
Explanation.-For the purposes of this section-
(a) "company'' means any body corporate and includes a firm
or other association of individuals; and
(b) "director'', in relation to a firm, means a partner in
the firm.
115. Cognizance of certain offences and the powers of police officer
forsearch and seizure.
115. Cognizance of certain offences and the powers of police officer
for search and seizure.-(1) No court shall take cognizance of
an offence under section 107 or section 108 or section 109 except
on complaint in writing made by the Registrar or any off cer authorised
by him in writing:
Provided that in relation to clause (c) of sub-section (1) of
section 107, a court shall take cognizance of an offence on the
basis of a certificate issued by the Registrar to the effect that
a registered trademark has been represented as registered i respect
of any goods or services in respect of which it is not in fact
registered.
(2) No court inferior to that of a Metropolitan Magistrate or
Judicial Magistrate of the first class shall try an offence under
this Act.
(3) The offences under section 103 or section 104 or section 105
shall be cognizable.
(4) Any police officer not below the rank
of deputy superintendent of police or equivalent, may, if he is
satisfied that any of the offences referred to in sub-section
(3) has been, is being, or is likely to be, committed, search
and seize without warra t the goods, die, block, machine, plate,
other instruments or things involved in committing the offence,
wherever found, and all the articles so seized shall, as soon
as practicable, be produced before a Judicial Magistrate of the
first class or 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 trademark and shall abide by the opinion
so obtained.
(5) Any person having an interest in any article seized under
sub-section (4), may, within fifteen days of such seizure, make
an application to the Judicial Magistrate of the first class or
Metropolitan Magistrate, as the case may be, for such article
b ing restored to him and the Magistrate, after hearing the applicant
and the prosecution, shall make such order on the application
as he may deem fit.
116. Evidence of origin of goods imported by sea.
116. Evidence of origin of goods imported by sea.-In the case
of goods brought into India by sea, evidence of the port of shipment
shall, in a prosecution for an offence under this Act or under
clause (b) of section 112 of the Customs Act, 1962 (52 of 1 62),
relating to confiscation of goods under clause (d) of section
111 and notified by the Central Government under clause (n) of
sub-section (2) of section 11 of the said Act for the protection
of trademarks relating to import of goods, be prima faci evidence
of the place or country in which the goods are made or produced.
117. Costs of defence or prosecution.
117. Costs of defence or prosecution.-In any prosecution under
this Act, the court may order such costs to be paid by the accused
to the complainant, or by the complainant to the accused, as the
court deems reasonable having regard to all the circumstan es
of the case and the conduct of the parties and the costs so awarded
shall be recoverable as if they were a fine.
118. Limitation of prosecution. 118. Limitation of prosecution.-No
prosecution for an offence under this Act or under clause (b)
of section 112 of the Customs Act, 1962, relating to confiscation
of goods under clause (d) of section 111 and notified by the Central
Government under clau e (n) of sub-section (2) of section 11 of
the said Act for the protection of trademarks, relating to import
of goods shall be commenced after expiration of three years next
after the commission of the offence charged, or two years after
the discovery th reof by the prosecutor, whichever expiration
first-happens.
119. Information as to commission of offence.
119. Information as to commission of offence.-An officer of the
Government whose duty it is to take part in the enforcement of
the provisions of this Chapter shall not be compelled in any court
to say whence he got any information as to the commission o any
offence against this Act.
120. Punishment of abetment in India of acts done out of India.
120. Punishment of abetment in India of acts done out of India.-If
any person, being within India, abets the commission, without
India, of any act which, if committed in India, would, under this
Act, be an offence, he may be tried for such abetment in a y place
in India in which he may be found, and be punished therefor with
the punishment to which he would be liable if he had himself committed
in that place the act which he abetted. 121. Instructions of Central
Government as to permissible variation to beobserved by criminal
courts.
121. Instructions of Central Government as to permissible variation
to be observed by criminal courts.-The Central Government may,
by notification in the Official Gazette, issue instructions for
the limits of variation, as regards number, quantity, meas re,
gauge or weight which are to be recognised by criminal courts
as permissible in the case of any goods.
CHAPTER
MISCELLANEOUS
CHAPTER XIII
MISCELLANEOUS
122. Protection of action taken in good faith.
122. Protection of action taken in good faith.-No suit or other
legal prceedings shall lie against any person in respect of anything
which is in good faith done or intended to be done in pursuance
of this Act.
123. Certain persons to be public servants.
123. Certain persons to be public servants.-Every person appointed
under this Act and every Member of the Appellate Board shall be
deemed to be a public servant within the meaning of section 21
of the Indian Penal Code. 124. Stay of proceedings where the validity
of registration of the trademark is questioned, etc.
124. Stay of proceedings where the validity of registration of
the trademark is questioned, etc.-(1) Where in any suit for infringement
of a trademark-
(a) the defendant pleads that registration of the plaintiff's
trademark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section
(2) of section 30 and the plantiff pleads the invalidity of registration
of the defendant's trademark, 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 trademark are pending before
the Registrar or the Appellate Board, stay the suit pending the
final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied
that the plea regarding the invalidity of the registration of
the plantiff's or defendant's trademark is prima facie tenable,
raise an issue regarding the same and adjourn the case for a period
of three months from the date of the framing of the issue in order
to enable the party concerned to apply to the Appellate Board
for rectification of the register.
(2) If the party concerned proves to the court that he has made
any such application as is referred to in clause (b) (ii) of sub-section
(1) within the time specified therein or within such extended
time as the court may for sufficient cause allow, the rial of
the suit shall stand stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been made within the
time so specified or within such extended time as the court may
allow, the issue as to the validity of the registration of the
trademark concerned shall be deemed to have been abandoned nd
the court shall proceed with the suit in regard to the other issues
in the case.
(4) The final order made in any rectification proceedings referred
to in sub-section (1) or sub-section (2) shall be binding upon
the parties and the court shall dispose of the suit conformably
to such order in so far as it relates to the issue as to t e validity
of the registration of the trademark.
(5) The stay of a suit for the infringement of a trademark under
this section shall not preclude the court from making any interlocutory
order (including any order granting an injunction, directing account
to be kept, appointing a receiver or attaching any property),
during the period of the stay of the suit.
125. Application for rectification of register to be made to AppellateBoard
in certain cases.
125. Application for rectification of register to be made to Appellate
Board in certain cases.-(1) Where in a suit for infringement of
a registered trademark the validity of the registration of the
plaintiff's trademark is questioned by the defendant r where
in any such suit the defendant raises a defence under clause (e)
of sub-section (2) of section 30 and the plaintiff questions the
validity of the registration of the defendant's trademark, the
issue as to the validity of the registration of the rade mark
concerned shall be determined only on an application for the rectification
of the register and, notwithstanding anything contained in section
47 or section 57, such application shall be made to the Appellate
Board and not to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application
for rectification of the register is made to the Registrar under
section 47 or section 57, the Registrar may, if he thinks fit,
refer the application at any stage of the proceedings o the Appellate
Board.
126. Implied warranty on sale of marked goods.
126. Implied warranty on sale of marked goods.-Where a mark or
a trademark 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.
127. Powers of Registrar.
127. Powers of Registrar.-In all proceedings under this Act before
the Registrar,-
(a) the Registrar shall have all the powers of a civil court for
the purposes of receiving evidence, administering oaths, enforcing
the attendance of witnesses, compelling the discovery and production
of documents and issuing commissions for the examinat on of witnesses;
(b) the Registrar may, subject to any rules made in this behalf
under section 157, make such orders as to costs as he considers
reasonable, and any such order shall be executable as a decree
of a civil court:
Provided that the Registrar shall have no power to award costs
to or against any party on an appeal to him against a refusal
of the proprietor of a certification trademark to certify goods
or provision of services or to authorise the use of the mark;
(c) the Registrar may, on an application made in the prescribed
manner, review his own decision.
128. Exercise of discretionary power by Registrar.
128. Exercise of discretionary power by Registrar.-Subject to
the provisions of section 131, the Registrar shall not exercise
any discretionary or other power vested in him by this Act or
the rules made thereunder adversely to a person applying for the
e ercise of that power without (if so required by that person
within the prescribed time) giving to the person an opportunity
of being heard.
129. Evidence before Registrar.
129. Evidence before Registrar.-In any proceeding under this Act
before the Registrar, evidence shall be given by affidavit: Provided
that the Registrar may, if he thinks fit, take oral evidence in
lieu of, or in addition to, such evidence by affidavit.
130. Death of party to a proceeding.
130. Death of party to a proceeding.-If a person who is a party
to a proceeding under this Act (not being a proceeding before
the Appellate Board or a court) dies pending the proceeding, the
Registrar may, on request, and on proof to his satisfaction of
he transmission of the interest of the deceased person, substitute
in the proceeding his successor in interest in his place, or,
if the Registrar is of opinion that the interest of the deceased
person is sufficiently represented by the surviving parties, permit
the proceeding to continue without the substitution of his successor
in interest.
131. Extension of time.
131. Extension of time.-(1) If the Registrar is satisfied, on
application made to him in the prescribed manner and accompanied
by the prescribed fee, that there is sufficient cause for extending
the time for doing any act (not being a time expressly prov ded
in this Act), whether the time so specified has expired or not,
he may, subject to such conditions as he may think fit to impose,
extend the time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the
Registrar to hear the parties before disposing of an application
for extension of time, and no appeal shall lie from any order
of the Registrar under this section.
132. Abandonment.
132. Abandonment.-Where, in the opinion of the Registrar, an applicant
is in default in the prosecution of an application filed under
this Act or any Act relating to trademarks in force prior to
the commencement of this Act, the Registrar may, by notice require
the applicant to remedy the default within a time specified and
after giving him, if so, desired, an opportunity of being heard,
treat the application as abandoned, unless the default is remedied
within the time specified in the notice.
133. Preliminary advice by the Registrar as to distinctiveness.
133. Preliminary advice by the Registrar as to distinctiveness.-(1)
The Registrar may, on application made to him in the prescribed
manner by any person who proposes to apply for the registration
of a trademark, give advice as to whether the trademark ppears
to him prima facie to be distinctive.
(2) If, on an application for the registration of a trademark
as to which the Registrar has given advice as aforesaid in the
affirmative made within three months after the advice was given,
the Registrar, after further investigation or consideration, gi
es notice, to the applicant of objection on the ground that the
trademark is not distinctive, the applicant shall be entitled,
on giving notice of withdrawal of the application within the prescribed
period, to have repaid to him any fee paid on the fili g of the
application.
134. Suit for infringement, etc., to be instituted before District
Court.
134. Suit for infringement, etc., to be instituted before District
Court.-(1) No suit-
(a) for the infringement of a registered trademark; or
(b) relating to any right in a registered trademark; or
(c) for passing off arising out of the use by the defendant of
any trademark which is identical with or deceptively similar
to the plaintiff's trademark, whether registered or unregistered,
shall be instituted in any court inferior to a District Court
having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1),
a "District Court having jurisdiction'' shall, notwithstanding
anything contained in the Code of Civil Procedure, 1908 or any
other law for the time being in force, include a District Court
w thin the local limits of whose jurisdiction, at the time of
the institution of the suit or other proceeding, the person instituting
the suit or proceeding, or, where there are more than one such
persons any of them, actually and voluntarily resides or ca ries
on business or personally works for gain.
Explanation.-For the purposes of sub-section (2), "person''
includes the registered proprietor and the registered user.
135. Relief in suits for infringement or for passing off.
135. Relief in suits for infringement or for passing off.-(1)
The relief which a court may grant in any suit for infringement
or for passing off referred to in section 134 includes injunction
(subject to such terms, if any, as the court thinks fit) and a
the option of the plaintiff, either damages or an account of profits,
together with or without any order for the delivery-up of the
infringing labels and marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may include
an ex parte injunction or any interlocutory order for any of the
following matters, namely:- (a) for discovery of documents; (b)
preserving of infringing goods, documents or other evidence which
are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with
his assets in a manner which may adversely affect plaintiff's
ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the
court shall not grant relief by way of damages (other than nominal
damages) or on account of profits in any case-
(a) where in a suit for infringement of a trademark, the infringement
complained of is in relation to a certification trademark 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 trademark complained
of in the suit, he was unaware and had no reasonable ground for
believing that the trademark 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 trademark, he forthwith ceased
to use the trademark 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 trademark complained
of in the suit he was unaware and had no reasonable ground for
believing that the trademark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of
the plaintiff's trademark he forthwith ceased to use the trademark complained of.
136. Registered user to be impleaded in certain proceedings.
136. Registered user to be impleaded in certain proceedings.-(1)
In every proceeding under Chapter VII or under section 91, every
registered user of a trademark using by way of permitted use,
who is not himself an applicant in respect of any proceeding nder
that Chapter or section, shall be made a party to the proceeding.
(2) Notwithstanding anything contained in any other law, a registered
user so made a party to the proceeding shall not be liable for
any costs unless he enters an appearance and takes part in the
proceeding.
137. Evidence of entries in register, etc., and things done by
the registrar.
137. Evidence of entries in register, etc., and things done by
the registrar.-(1) A copy of any entry in the register or of any
document referred to in sub-section (1) of section 148 purporting
to be certified by the Registrar and sealed with the seal of the
Trademarks Registry shall be admitted in evidence in all courts
and in all proceedings without further proof or production of
the original.
(2) A certificate purporting to be under the hand of the Registrar
as to any entry, matter or thing that he is authorised by this
Act or the rules to make or do shall be prima facie evidence of
the entry having been made, and of the contents thereof, or f
the matter or things having been done or not done.
138. Registrar and other officers, not compellable to produce
register,etc.
138. Registrar and other officers, not compellable to produce
register, etc.-The Registrar or any officer of the Trademarks
Registry shall not, in any legal proceedings to which he is not
a party, be compellable to produce the register or any other docu
ent in his custody, the contents of which can be proved by the
production of a certified copy issued under this Act or to appear
as a witness to prove the matters therein recorded unless by order
of the court made for special cause.
139. Power to require goods to show indication of origin.
139. Power to require goods to show indication of origin.-(1)
The Central Government may, by notification in the Official Gazette,
require that goods of any class specified in the notification
which are made or produced beyond the limits of India and imp
rted into India, or, which are made or produced within the limits
of India, shall, from such date as may be appointed by the notification
not being less than three months from its issue, have applied
to them an indication of the country or place in which they were
made or produced, or of the name and address of the manufacturer
or the person for whom the goods were manufactured.
(2) The notification may specify the manner in which such indication
shall be applied that is to say, whether to goods themselves or
in any other manner, and the times or occasions on which the presence
of the indication shall be necessary, that is to sa , whether
on importation only, or also at the time of sale, whether by wholesale
or retail or both.
(3) No notification under this section shall be issued, unless
application is made for its issue by persons or associations substantially
representing the interests of dealers in, or manufacturers, producers,
or users of, the goods concerned, or unless t e Central Government
is otherwise convinced that it is necessary in the public interest
to issue the notification, with or without such inquiry, as the
Central Government may consider necessary.
(4) The provisions of section 23 of the General Clauses Act, 1897
shall apply to the issue of a notification under this section
as they apply to the making of a rule or bye-law the making of
which is subject to the condition of previous publication.
(5) A notification under this section shall not apply to goods
made or produced beyond the limits of India and imported into
India, if in respect of those goods, the Commissioner of Customs
is satisfied at the time of importation that they are intended
f r exportation whether after transhipment in or transit through
India or otherwise.
140. Power to require information of imported goods bearing false
trademarks.
140. Power to require information of imported goods bearing false
trademarks.-(1) The proprietor or a licensee of a registered
trademark may give notice in writing to the Collector of Customs
to prohibit the importation of any goods if the import of th said
goods constitute infringement under clause (c) of sub-section
(6) of section 29. (2) Where goods, which are prohibited to be imported into
India by notification of the Central Government under clause (n)
of sub-section
(2) of section 11 of the Customs Act, 1962, for the protection
of trademarks, and are liable to confiscation on imp rtation
under that Act, are imported into India, the Commissioner of Customs
if, upon representation made to him, he has reason to believe
that the trademark complained of is used as a false trademark,
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 da, within
fourteen days, comply with the requirement as aforesaid, and if
he fails to do so, he shall be punishable with fine which may
extend to five hundred rupees.
(4) Any information obtained from the importer of the goods or
his agent under this section may be communicated by the Commissioner
of Customs to the registered proprietor or registered user of
the trademark which is alleged to have been used as a fals trademark.
141. Certificate of validity.
141. Certificate of validity.-If in any legal proceeding for rectification
of the register before the Appellate Board a decision is on contest
given in favour of the registered proprietor of the trademark
on the issue as to the validity of the registrat on of the trademark, the Appellate Board may grant a certificate to that effect,
and if such a certificate is granted, then, in any subsequent
legal proceeding in which the said validity comes into question
the said proprietor on obtaining a final order or judgment in
his favour affirming validity of the registration of the trademark shall, unless the said final order or judgment for sufficient
reason directs otherwise, be entitled to his full cost charges
and expenses as between legal practitioner and client.
142. Groundless threats of legal proceedings.
142. Groundless threats of legal proceedings.-(1) Where a person,
by means of circulars, advertisements or otherwise, threatens
a person with an action or proceeding for infringement of a trademark which is registered, or alleged by the first-mentioned erson
to be registered, or with some other like proceeding, a person
aggrieved may, whether the person making the threats is or is
not the registered proprietor or the registered user of the trademark, bring a suit against the first-mentioned person and may
obtain a declaration to the effect that the threats are unjustifiable,
and an injunction against the continuance of the threats and may
recover such damages (if any) as he has sustained, unless the
first-mentioned person satisfies the court that the rade mark
is registered and that the acts in respect of which the proceedings
were threatened, constitute, or, if done, would constitute, an
infringement of the trademark.
(2) The last preceding sub-section does not apply if the registered
proprietor of the trademark, or a registered user acting in pursuance
of sub-section (1) of section 52 with due diligence commences
and the trademark. prosecutes an action against the person threatene
for infringement of
(3) Nothing in this section shall render a legal practitioner
or a registered trademarks agent liable to an action under this
section in respect of an act done by him in his professional capacity
on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any
court inferior to a District Court. 143. Address for service.
143. Address for service.-An address for service stated in an
application or notice of opposition shall for the purposes of
the application or notice of opposition be deemed to be the address
of the applicant or opponent, as the case may be, and all docu
ents in relation to the application or notice of opposition may
be served by leaving them at or sending them by post to the address
for service of the applicant or opponent, as the case may be.
144. Trade usages, etc., to be taken into conseration.
144. Trade usages, etc., to be taken into conseration.-In any
proceeding relating to a trademark, the tribunal shall admit
evidence of the usages of the trade concerned and of any relevant
trademark or trade name or get up legitimately used by other
pe sons.
145. Agents.
145. Agents.-Where, by or under this Act,
any act, other than the making of an affidavit, is required to
be done before the Registrar by any person, the act may, subject
to the rules made in this behalf, be done instead of by that person
himself, by a pe son duly authorised in the prescribed manner,
who is-
(a) a legal practitioner, or
(b) a person registered in
the prescribed manner as a trademarks agent, or
(c) a person
in the sole and regular employment of the principal.
146. Marks registered by an agent or representative without authority.
146. Marks registered by an agent or representative without authority.-If
an agent or a representative of the proprietor of a registered
trademark, without authority uses or attempts to register or
registers the mark in his own name, the proprietor shal be entitled
to oppose the registration applied for or secure its cancellation
or rectification of the register so as to bring him as the registered
proprietor of the said mark by assignment in his favour: Provided
that such action shall be taken within three years of the registered
proprietor of the trademark becoming aware of the conduct of
the agent or representative.
147. Indexes.
147. Indexes.-There shall be kept under the direction and supervision
of the Registrar-
(a) an index of registered trademarks;
(b)
an index of trademarks in respect of which applications for registration
are pending;
(c) an index of the names of the proprietors of registered
trademarks; and
(d) an index of the names of registered users.
148. Documents open to public inspection.
148. Documents open to public inspection.-(1) Save as otherwise
provided in sub-section (4) of section 49,- (a) the register and
any document upon which any entry in the register is based;
(b) every notice of opposition to the registration of a trademark 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 Trademarks Registry: Provided that when such register is maintained
wholly or partly on computer, the inspection of such register
under this section shall be made by inspecting the computer print-
out of the relevant entry in the register so maintained on computer.
(2) Any person may, on an application to the Registrar and on
payment of such fees as may be prescribed, obtain a certified
copy of any entry in the register or any document referred to
in sub-section (1).
149. Reports of Registrar to be placed before Parliament.
149. Reports of Registrar to be placed before Parliament.-The
Central Government shall cause to be placed before both Houses
of Parliament once a year a report respecting the execution by
or under the Registrar of this Act. 150. Fees and surcharge.
150. Fees and surcharge.-(1) There shall be paid in respect of
applications and registration and other matters under this Act
such fees and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by
the Registrar, the Registrar shall not do that act until the fee
has been paid.
(3) Where a fee is payable in respect of the filing of a document
at the Trademarks Registry, the document shall be deemed not
to have been filed at the registry until the fee has been paid.
151. Savings in respect of certain matters in Chapter XII.
151. Savings in respect of certain matters in Chapter XII.-Nothing
in Chapter XII shall-
(a) exempt any person from any suit or other proceeding which
might, but for anything in that Chapter, be brought against him;
or
(b) entitle any person to refuse to make a complete discovery,
or to answer any question or interrogatory in any suit or other
proceeding, but such discovery or answer shall not be admissible
in evidence against such person in any such prosecution for a
offence under that Chapter or against clause (h) of section 112
of the Customs Act, 1962 (52 of 1962) relating to confiscation
of goods under clause (d) of section 111 of that Act and notified
by the Central Government under clause (n) of sub-section (2 of
section 11 thereof for the protection of trademarks relating
to import of goods; or
(c) be construed so as to render liable to any prosecution or
punishment any servant of a master resident in India who in good
faith acts in obedience to the instructions of such master, and,
on demand made by or on behalf of the prosecutor, has given fu
l information as to his master and as to the instructions which
he has received from his master.
152. Declaration as to ownership of trademark not registrable
under theRegistration Act, 1908.
152. Declaration as to ownership of trademark not registrable
under the Registration Act, 1908.-Notwithstanding anything contained
in the Registration Act, 1908 (16 of 1908), no document declaring
or purporting to declare the ownership or title of a p rson to
a trademark other than a registered trademark shall be registered
under that Act.
153. Government to be bound.
153. Government to be bound.-The provisions of this Act shall
be binding on the Government.
154. Special provisions relating to applications for registration
from citizens of convention countries.
154. Special provisions relating to applications for registration
from citizens of convention countries.-(1) With a view to the
fulfilment of a treaty, convention or arrangement with any country
or country which is a member of a group of countries or u ion
of countries or Inter-Governmental Organisation outside India
which affords to citizens of India similar privileges as granted
to its own citizens, the Central Government may, by notification
in the Official Gazette, declare such country or group of countries
or union of countries or Inter-Governmental Organisation to be
a convention country or group of countries or union of countries
or Inter-Governmental Organisations, as the case may be, for the
purposes of this Act.
(2) Where a person has made an application for the registration
of a trademark in a convention country or country which is a
member of a group of countries or union of countries or Inter-Governmental
Organisation and that person, or his legal represent tive or assignee,
makes an application for the registration of the trademark 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 trademark shall, if registered under this
Act, be registered as of the date on which the application was
made in the convention country or country which is a member of
a group of countries or union of countries o Inter-Governmental
Organisation and that date shall be deemed for the purposes of
this Act to be the date of registration.
(3) Where applications have been made for the registration of
a trademark in two or more convention countries or country which
are members of group of countries or union of countries or Inter-Governmental
Organisation, the period of six months referred o in the last
preceding sub-section shall be reckoned from the date on which
the earlier or earliest of those applications was made.
(4) Nothing in this Act shall entitle the proprietor of a trademark to recover damages for infringement which took place prior
to the date of application for registration under this Act. 155.
Provision as to reciprocity.
155. Provision as to reciprocity.-Where any country or country
which is a member of a group of countries or union of countries
or Inter-Governmental Organisation specified by the Central Government
in this behalf by notification in the Official Gazette oes not
accord to citizens of India the same rights in respect of the
registration and protection of trademarks 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 trademark;
(b) to be registered as the assignee of the proprietor of a registered
trademark; or
(c) to apply for registration or be registered as a registered
user of a trademark under section 49.
156. Power of Central Government to remove difficulties.
156. Power of Central Government to remove difficulties.-(1) If
any difficulty arises in giving effect to the provisions of this
Act, the Central Government may, by order published in the Official
Gazette, make such provisions not inconsistent with the p ovisions
of this Act as may appear to be necessary for removing the difficulty:
Provided that no order shall be made under this section after
the expiry of five years from the commencement of this Act.
(2) Every order made under this section shall, as soon as may
be after it is made, be laid before each House of Parliament.
157. Power to make rules.
157. Power to make rules.-(1) The Central
Government may, by notification in the Official Gazette and subject
to the conditions of previous publication, make rules to carry
out the provisions of this Act.
(2) In particular, and without prejudice to the generality of
the foregoing power, such rules may provide for all or any of
the following matters, namely:- (i) the matters to be included
in the Register of Trademarks 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
trademark under sub-section (1) of section 18;
(vi) the manner of advertising of an application for registration
under sub-section (1), and the manner of notifying corrections
or amendments under sub-section (2), of section 20;
(vii) the manner of making an application and the fee payable
for such application giving notice under sub-section (1) and sending
counter-statements under sub-section (2) and submission of evidence
and the time therefor under sub-section (4) of section 21;
(viii)
the form of certificate of registration under sub-section (2),
and the manner of giving notice to the applicant under sub-section
(3) of section 23;
(ix) the forms of application for renewal and restoration the
time within which such application is to be made and fee and surcharge
if any payable with each application, under section 25 and the
time within which the Registrar shall send a notice and t e manner
of such notice under sub-section (3) of that section;
(x) the manner of submitting statement of cases under sub-section
(2) of section 40;
(xi) the manner of making an application by the proprietor of
a trademark under section 41;
(xii) the manner of making an application for assignment or transmission
of a certification trademark under section 43;
(xiii) the manner of making an application to the Registrar to
register title under sub-section (1) of section 45;
(xiv) the manner in which and the period within which an application
is to be made under sub-section (4) of section 46;
(xv) the manner of marking an application under sub-section (2)
of section 47;
(xvi) the manner of making an application, documents and other
evidence to accompany such application under sub-section (1) and
the manner in which notice is to be issued under sub-section (3)
of section 49;
(xvii) the manner of making an application under sub-section (1),
the manner of issuing a notice under sub-section (2) and the procedure
for cancelling a registration under sub-section (3) of section
50;
(xviii) the manner of making applications under sub-sections (1)
and (2), the manner of giving notice under sub-section (4) and
the manner of service of notice of rectification under sub-section
(5) of section 57;
(xix) the manner of making an application under section 58;
(xx) the manner of making an application under sub-section (1),
the manner of advertising an application, time and manner of notice
by which application may be opposed under sub-sections (2) and
(3) of section 59;
(xxi) the manner of advertisement under sub-secion (2) of section
60;
(xxii) the other matters to be specified in the regulations under
sub-section (2) of section 63;
(xxiii) the manner of making an application under sub-section
(1) of section 71;
(xxiv) the manner of advertising an application under section
73;
(xxv) the manner of making an application under section 77;
(xxvi) the classes of goods under section 79;
(xxvii) the conditions and restrictions under sub-section (2)
of section 80;
(xxviii) determination of character of textile goods by sampling
under section 82;
(xxix) the salaries and allowances payable to, and the other terms
and conditions of service of, the Chairman, Vice-Chairman and
other Members under sub-section (1) of section 88;
(xxx) the procedure for investigation of misbehaviour or incapacity
of the Chairman, Vice-Chairman and other Members under sub-section
(3) of section 89;
(xxxi) the salaries and allowances and other conditions of service
of the officers and other employees of the Appellate Board under
sub-section (2), and the manner in which the officers and other
sub-section (3), of section 90; employees of the Appellate Board
shall discharge their fun tions under
(xxxii) the form of making an appeal, the manner of verification
and the fee payable under sub-section (3) of section 91;
(xxxiii) the form in which and the particulars to be included
in the application to the Appellate Board under sub-section (1)
of section 97;
(xxxiv) the manner of making an application for review under clause
(c) of section 127;
(xxxv) the time within which an application is to be made to the
Registrar for exercising his discretionary power under section
128;
(xxxvi) the manner of making an application and the fee payable
therefor under sub-section (1) of section 131;
(xxxvii) the manner of making an application under sub-section
(1) and the period for withdrawal of such application under sub-section
(2) of section 133;
(xxxviii) the manner of authorising any person to act and the
manner of registration as a trademark agent under section 145;
(xxxix) the conditions for inspection of documents under sub-section
(1) and the fee payable for obtaining a certified copy of any
entry in the register under sub-section (2) of section 148;
(xl) the fees and surcharge payable for making applications and
registration and other matters under section 150;
(xli) any other matter which is required to be or may be prescribed.
(3) The power to make rules conferred by this section shall include
the power to give retrospective effect in respect of the matters
referred to in clauses (xxix) and (xxxi) of sub-section (2) from
a date not earlier than the date of commencement of this Act,
but no retrospective effect shall be given to any such rule so
as to prejudicially affect the interests of any person to whom
sub-rule may be applicable.
(4) Every rule made by the Central Government under this Act shall
be laid, as soon as may be after it is made, before each House
of Parliament, while it is in session for a total period of thirty
days which may be comprised in one session or in two or m re successive
sessions, and if, before the expiry of the session immediately
following the session or the successive sessions aforesaid, both
Houses agree in making any modification in the rule or both Houses
agree that the rule should not be made, the r le shall thereafter
have effect only in such modified form or be of no effect, as
the case may be; so, however, that any such modification or annulment
shall be without prejudice to the validity of any-thing previously
done under that rule.
158. Amendments.
158. Amendments.-The enactment specified in the Schedule shall
be amended in the manner specified therein.
159. Repeal and savings.
159. Repeal and savings.-(1) The Trade and Merchandise Marks Act,
1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General
Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification,
rule, order, requirement, registration, certificate, notice, decision,
determination, direction, approval, author sation, consent, application,
request or thing made, issued, given or done under the Trade and
Merchandise Marks Act, 1958 (43 of 1958) shall, if in force at
the commencement of this Act, continue to be in force and have
effect as if made, issued, given r done under the corresponding
provisions of this Act.
(3) The provisions of this Act shall apply to any application
for registration of a trademark 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 trademark is not an infringement of a trademark registered before the commencement of this Act, then, the
continued use of that mark shall not be an infringemen under this
Act.
(6) Notwithstanding anything contained in sub-section (2), the
date of expiration of registration of a trademark 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 trademark
referred to in section 47 of the Trade and Merchandise Marks Act,
1958 (43 of 1958) shall cease to have effect on the date immediately
after the expiry of five years of such commencement or after he
expiry of the period for which it was registered or renewed, whichever
is earlier.
