THE TRADE MARKS ACT, 1999
_________
ARRANGEMENT OF SECTIONS
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ACT NO. 47 OF 1999
[30thDecember, 1999]
An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.
BE it enacted by Parliament in the Fiftieth Year of the Republic of India as follows:-
CHAPTER I
PRELIMINARY
SECTIONS
1. Short title,
extent and commencement.
2. Definitions
and interpretation.
1. Short title, extent and commencement.—(1) This Act may be called the Trade Marks Act,
1999.
(2) It extends to the whole of
India.
(3) It shall come into force on
such date1 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.—(1) In this Act, unless the context otherwise
requires,—
(a) “Appellate
Board” means the Appellate Board established
under section 83;
(b) “assignment” means an assignment in writing by act of the parties
concerned;
(c) “associated
trade marks” means trade marks
deemed to be, or required to be, registered as associated trade marks under
this Act;
(d) “Bench” means a Bench of the Appellate Board;
(e) “certification
trade mark” means a mark capable of
distinguishing the goods or services in connection with which it is used in the
course of trade which are certified by the proprietor of the mark in respect of
origin, material, mode of manufacture of goods or performance of services,
quality, accuracy or other characteristics from goods or services not so
certified and registrable as such under Chapter IX in respect of those goods or
services in the name, as proprietor of the certification trade mark, of that
person;
(f) “Chairman” means the Chairman of the Appellate Board;
(g) “collective
mark” means a trade mark distinguishing the
goods or services of members of an association of persons (not being a partnership
within the meaning of the Indian Partnership Act, 1932 (9 of 1932) which is the
proprietor of the mark from 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 contained, as regards the goods to which it
is applied, more yards or metres than there are contained therein standard
yards or standard metres; or
(IV) any marks or arrangement or
combination thereof when applied—
(a) to goods in such a manner as to
be likely to lead persons to believe that the goods are the manufacture or
merchandise of some person other than the person whose merchandise or
manufacture they really are;
(b) in relation to services in such
a manner as to be likely to lead persons to believe that the services are
provided or rendered by some person other than the person whose services they
really are; or
(V) any false name or initials of a
person applied to goods or services in such manner as if such name or initials
were a trade description in any case where the name or initials—
(a) is or are not a trade mark or
part of a trade mark; and
(b) is or are identical with or
deceptively similar to the name or initials of a person carrying on business in
connection with goods or services of the same description or both and who has
not authorised the use of such name or initials; and
(c) is or are either the name or
initials of a fictitious person or some person not bona fide carrying on
business in connection with such goods or services,
and the fact that a trade description is a
trade mark or part of a trade mark shall not prevent such trade description
being a false trade description within the meaning of this Act;
(j) “goods” means anything which is the subject of trade or
manufacture;
(k) “Judicial
Member” means a Member of the Appellate
Board appointed as such under this Act, and includes the Chairman and the
Vice-Chairman;
(l) “limitations” (with its grammatical variations) means any
limitation of the exclusive right to the use of a trade mark given by the
registration of a person as proprietor thereof, including limitations of that
right as to mode or area of use within 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, reel, frame,
capsule, cap, lid, stopper and cork;
(r) “permitted
use”, in relation to a registered trade mark,
means the use of trade mark—
(i) by a registered user of the
trade mark in relation to goods or services—
(a) with which he is connected in
the course of trade; and
(b) in respect of which the trade
mark remains registered for the time being; and
(c) for which he is registered as
registered user; and
(d) which complies with any
conditions or limitations to which the registration of registered user is
subject; or
(ii) by a person other than the
registered proprietor and registered user in relation to goods or services—
(a) with which he is connected in
the course of trade; and 8
(b) in respect of which the trade
mark remains registered for the time being; and
(c) by consent of such registered
proprietor in a written agreement; and
(d) which complies with any
conditions or limitations to which such user is subject and to which the
registration of the trade mark is subject;
(s) “prescribed” means prescribed by rules made under this Act;
(t) “register” means the Register of Trade Marks referred to in
sub-section (1) of section 6;
(u) “registered” (with its grammatical variations) means registered
under this Act;
(v) “registered
proprietor”, in relation to a trade mark,
means the person for the time being entered in the register as proprietor of
the trade mark;
(w) “registered
trade mark” means a trade mark which is
actually on the register and remaining in force;
(x) “registered
user” means a person who is for the time being
registered as such under section 49;
(y) “Registrar” means the Registrar of Trade Marks referred to in
section 3;
(z) “Service” means service of any description which is made
available to potential users and includes the provision of services in
connection with business of any industrial or commercial matters such as
banking, communication, education, financing, 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, gauge or weight of any goods; or
(ii) as to the standard of quality
of any goods or services according to a classification commonly used or
recognised in the trade; or
(iii) as to fitness for the
purpose, strength, performance or behaviour of any goods, being “drug” as defined in the
Drugs and Cosmetics Act, 1940 (23 of 1940), or “food” as defined in the Prevention of Food Adulteration
Act, 1954 (37 of 1954); or
(iv) as to the place or country in
which or the time at which any goods or services were made, produced or
provided, as the case may be; or
(v) as to the name and address or
other indication of the identity of the manufacturer or of the person providing
the services or of the person for whom the goods are manufactured or services
are provided; or
(vi) as to the mode of manufacture
or producing any goods or providing services; or
(vii) as to the material of which
any goods are composed; or
(viii) as to any goods being the
subject of an existing patent, privilege or copyright,
and includes—
(a) any description as to the use
of any mark which according to the custom of the trade is commonly taken to be
an indication of any of the above matters;
(b) the description as to any
imported goods contained in any bill of entry or shipping bill;
(c) any other description which is
likely to be misunderstood or mistaken for all or any of the said matters;
(zb) “trade
mark” means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and
combination of colours; and—
(i) in relation to Chapter XII
(other than section 107), a registered trade mark or a mark used in relation to
goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case
may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other
provisions of this Act, a mark used or proposed to be used in relation to goods
or services for the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services, as the case may be, and some
person having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective mark;
(zc) “transmission” means transmission by operation of law, devolution on
the personal representative of a deceased person and any other mode of
transfer, not being assignment;
(zd) “Technical
Member” means a Member who is not a
Judicial Member;
(ze) “tribunal” means the Registrar or, as the case may be, the
Appellate Board, before which the proceeding concerned is pending;
(zf) “Vice-Chairman” means a Vice-Chairman of the Appellate Board;
(zg) “well
known trade mark”, in relation to
any goods or services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that the
use of such mark in relation to other goods or services would be likely to be
taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services.
(2) In this Act, unless the context
otherwise requires, any reference—
(a) to “trade mark” shall include
reference to “collective mark” or “certification
trade mark”;
(b) to the use of a mark shall be
construed as a reference to the use of printed or other visual representation
of the mark;
(c) to the use of a mark,—
(i) in relation to goods, shall be
construed as a reference to the use of the mark upon, or in any physical or in
any other relation whatsoever, to such goods;
(ii) in relation to services, shall
be construed as a reference to the use of the mark as or as part of any
statement about the availability, provision or performance of such services;
(d) to the Registrar shall be
construed as including a reference to any officer when discharging the
functions of the Registrar in pursuance of sub-section (2) of section 3;
(e) to the Trade Marks Registry shall
be construed as including a reference to any office of the Trade Marks
Registry.
(3) For the purposes of this Act,
goods and services are associated with each other if it is likely that those
goods might be sold or otherwise traded in and those services might be provided
by the same business and so with descriptions of goods and descriptions of
services.
(4) For the purposes of this Act, “existing registered trade mark” means a trade mark registered under the Trade and
Merchandise Marks Act, 1958 (43 of 1958) immediately before the commencement of
this Act.
CHAPTER II
THE REGISTER AND CONDITIONS FOR
REGISTRATION
3.
Appointment of Registrar and other officers.
4.
Power of Registrar to withdraw or transfer cases, etc.
5.
Trade Marks Registry and offices thereof.
6.
The Register of Trade Marks.
7.
Classification of goods and services.
8.
Publication of alphabetical index.
9.
Absolute grounds for refusal of registration.
10.
Limitation as to color.
11.
Relative grounds for refusal of registration.
12.
Registration in the case of honest concurrent use, etc.
13.
Prohibition of registration of names of chemical elements or international
non-proprietary names.
14.
Use of names and representations of living persons or persons recently dead.
15.
Registration of parts of trade marks and of trade marks as a series.
16.
Registration of trade marks as associated trade marks.
17. Effect of registration of
parts of a mark.
3. Appointment of Registrar
and other officers.—(1) The
Central Government may, by notification in the Official Gazette, appoint a
person to be known as the Controller-General of Patents, Designs and Trade
Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.
10
(2) The Central
Government may appoint such other officers with such designations as it thinks
fit for the purpose of discharging, under the superintendence and direction of
the Registrar, such functions of the Registrar under this Act as he may from
time to time authorise them to discharge.
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 before an officer appointed under
the said sub-section (2) and deal with such matter himself either de
novo or from the stage it was so withdrawn or transfer the same to another
officer so appointed who may, subject to special directions in the order of
transfer, proceed with the matter either de novo or from the stage it
was so transferred.
5. Trade Marks Registry and
offices thereof.—(1) For
the purposes of this Act, there shall be a trade marks registry and the Trade
Marks Registry established under the Trade and Merchandise Marks Act, 1958 (43
of 1958) shall be the Trade Marks Registry under this Act.
(2) The head office of
the Trade Marks Registry shall be at such place as the Central Government may
specify, and for the purpose of facilitating the registration of trade marks, there may be established at such places as the
Central Government may think fit branch offices of the Trade Marks Registry.
(3) The Central
Government may, by notification in the Official Gazette, define the territorial
limits within which an office of the Trade Marks Registry may exercise its
functions.
(4) There shall be a
seal of the Trade Marks Registry.
6. The Register of Trade
Marks.—(1) For
the purposes of this Act, a record called the Register of Trade Marks shall be
kept at the head office of the Trade Marks Registry, wherein shall be entered
all registered trade marks with the names, addresses
and description of the proprietors, notifications of assignment and
transmissions, the names, addresses and descriptions of registered users,
conditions, limitations and such other matter relating to registered trade marks as may be prescribed.
(2) Notwithstanding
anything contained in sub-section (1), it shall be lawful for the
Registrar to keep the records wholly or partly in computer floppies diskettes
or in any other electronic form subject to such safeguards as may be
prescribed.
(3) Where such register
is maintained wholly or partly on computer under sub-section (2) any
reference in this Act to entry in the Register shall be construed as the
reference to any entry as maintained on computer or in any other electronic
form.
(4) No notice of any
trust, express or implied or constructive, shall be entered in the register and
no such notice shall be receivable by the Registrar.
(5) The register shall
be kept under the control and management of the Registrar.
(6) There shall be kept
at each branch office of the Trade Marks Registry a copy of the register and
such of the other documents mentioned in section 148 as the Central Government
may, by notification in the Official Gazette, direct. (7) The Register
of Trade Marks, both Part A and Part B, existing at the commencement of this
Act, shall be incorporated in and form part of the register under this Act.
7. Classification of goods
and services.—(1) The
Registrar shall classify goods and services, as far as may be, in accordance
with the International classification of goods and services for the purposes of
registration of trade marks.
(2) Any question arising
as to the class within which any goods or services falls shall be determined by
the Registrar whose decision shall be final.
8. Publication of alphabetical
index.—(1) The
Registrar may publish in the prescribed manner an alphabetical index of
classification of goods and services referred to in section 7.
(2) Where any goods or
services are not specified in the alphabetical index of goods and services
published under sub-section (1), the classification of goods or services
shall be determined by the Registrar in accordance with sub-section (2)
of section 7. 11
9. Absolute grounds for
refusal of registration.—(1) The trade marks—
(a) which
are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another
person;
(b) which consist
exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of the service or other
characteristics of the goods or service;
(c) which
consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the
trade,
shall not be registered:
Provided that a trade mark
shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark.
(2) A mark shall not be
registered as a trade mark if—
(a) it is of such nature
as to deceive the public or cause confusion;
(b) it contains or
comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;
(c) it comprises or
contains scandalous or obscene matter;
(d) its use is
prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
(12 of 1950).
(3) A mark shall not be
registered as a trade mark if it consists exclusively of—
(a) the shape of goods
which results from the nature of the goods themselves; or
(b) the shape of goods
which is necessary to obtain a technical result; or
(c) the shape which
gives substantial value to the goods.
Explanation.—For the purposes of this section, the nature of goods
or services in relation to which the trade mark is used or proposed to be used
shall not be a ground for refusal of registration.
10. Limitation as to colour.—(1) A
trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into
consideration by the tribunal having to decide on the distinctive character of
the trade mark.
(2) So far as a trade
mark is registered without limitation of colour, it
shall be deemed to be registered for all colours.
11. Relative grounds for
refusal of registration.—(1) Save
as provided in section 12, a trade mark shall not be registered if, because of—
(a) its identity with an
earlier trade mark and similarity of goods or services covered by the trade
mark; or
(b) its similarity to an
earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark,
there exists a likelihood of
confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
(2) A trade mark which—
(a) is identical with or
similar to an earlier trade mark; and
(b) is to be registered
for goods or services which are not similar to those for which the earlier
trade mark is registered in the name of a different proprietor, 12
shall not be registered if or
to the extent the earlier trade mark is a well-known trade mark in India and
the use of the later mark without due cause would take unfair advantage of or
be detrimental to the distinctive character or repute of the earlier trade
mark.
(3) A trade mark shall
not be registered if, or to the extent that, its use in India is liable to be
prevented—
(a) by virtue of any law
in particular the law of passing off protecting an unregistered trade mark used
in the course of trade; or
(b) by virtue of law of
copyright.
(4) Nothing in this
section shall prevent the registration of a trade mark where the proprietor of
the earlier trade mark or other earlier right consents to the registration, and
in such case the Registrar may register the mark under special circumstances
under section 12.
Explanation.—For the purposes of this section, earlier trade mark
means—
1[(a) a registered trade mark or an application
under section 18 bearing an earlier date of filing or an international
registration referred to in section 36E or convention application referred to
in section 154 which has a date of application earlier than that of the trade
mark in question, taking account, where appropriate, of the priorities claimed
in respect of the trade marks;]
(b) a trade mark which, on the date of
the application for registration of the trade mark in question, or where
appropriate, of the priority claimed in respect of the application, was
entitled to protection as a well-known trade mark.
(5) A trade mark shall
not be refused registration on the grounds specified in sub-sections (2)
and (3), unless objection on any one or more of those grounds is raised
in opposition proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall,
while determining whether a trade mark is a well-known trade mark, take into
account any fact which he considers relevant for determining a trade mark as a
well-known trade mark including—
(i)
the knowledge or recognition of that trade mark in the relevant section of the
public including knowledge in India obtained as a result of promotion of the
trade mark;
(ii) the duration,
extent and geographical area of any use of that trade mark;
(iii) the duration,
extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods
or services to which the trade mark applies;
(iv) the duration and
geographical area of any registration of or any application for registration of
that trade mark under this Act to the extent that they reflect the use or
recognition of the trade mark;
(v) the record of
successful enforcement of the rights in that trade mark, in particular the
extent to which the trade mark has been recognised as
a well-known trade mark by any court or Registrar under that record.
(7) The Registrar shall,
while determining as to whether a trade mark is known or recognised
in a relevant section of the public for the purposes of sub-section (6),
take into account—
(i)
the number of actual or potential consumers of the goods or services;
(ii) the number of
persons involved in the channels of distribution of the goods or services;
(iii) the business
circles dealing with the goods or services,
to which that trade mark
applies.
(8) Where a trade mark
has been determined to be well known in at least one relevant section of the
public in India by any court or Registrar, the Registrar shall consider that
trade mark as a well-known trade mark for registration under this Act. 13
(9) The Registrar shall
not require as a condition, for determining whether a trade mark is a
well-known trade mark, any of the following, namely:—
(i)
that the trade mark has been used in India;
(ii) that the trade mark
has been registered;
(iii) that the
application for registration of the trade mark has been filed in India;
(iv) that the trade mark—
(a) is well-known in; or
(b) has been registered
in; or
(c) in respect of which
an application for registration has been filed in,
any jurisdiction other than
India, or
(v) that the trade mark
is well-known to the public at large in India.
(10) While considering
an application for registration of a trade mark and opposition filed in respect
thereof, the Registrar shall—
(i)
protect a well-known trade mark against the identical or similar trade marks;
(ii) take into
consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.
(11) Where a trade mark
has been registered in good faith disclosing the material informations
to the Registrar or where right to a trade mark has been acquired through use
in good faith before the commencement of this Act, then, nothing in this Act
shall prejudice the validity of the registration of that trade mark or right to
use that trade mark on the ground that such trade mark is identical with or
similar to a well-known trade mark.
12. Registration in the case
of honest concurrent use, etc.—In the case of
honest concurrent use or of other special circumstances which in the opinion of
the Registrar, make it proper so to do, he may permit the registration by more
than one proprietor of the trade marks which are identical or similar (whether
any such trade mark is already registered or not) in respect of the same or
similar goods or services, subject to such conditions and limitations, if any,
as the Registrar may think fit to impose.
13. Prohibition of
registration of names of chemical elements or international non-proprietary
names.—No word—
(a) which is the
commonly used and accepted name of any single chemical element or any single
chemical compound (as distinguished from a mixture) in respect of a chemical
substance or preparation, or
(b) which is declared by
the World Health Organisation and notified in the
prescribed manner by the Registrar from time to time, as an international
non-proprietary name or which is deceptively similar to such name,
shall be registered as a trade
mark and any such registration shall be deemed for the purpose of section 57 to
be an entry made in the register without sufficient cause or an entry wrongly
remaining on the register, as the circumstances may require.
14. Use of names and
representations of living persons or persons recently dead.—Where an application is made for the registration of a
trade mark which falsely suggests a connection with any living person, or a
person whose death took place within twenty years prior to the date of
application for registration of the trade mark, the Registrar may, before he
proceeds with the application, require the applicant to furnish him with the
consent in writing of such living person or, as the case may be, of the legal
representative of the deceased person to the connection appearing on the trade
mark, and may refuse to proceed with the application unless the applicant
furnishes the Registrar with such consent.
15. Registration of parts of
trade marks and of trade marks
as a series.—(1)
Where the proprietor of a trade mark claims to be entitled to the exclusive use
of any part thereof separately, he may apply to register the whole and the part
as separate trade marks. 14
(2) Each such separate
trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.
(3) Where a person
claiming to be the proprietor of several trade marks in respect of the same or
similar goods or services or description of goods or description of services,
which, while resembling each other in the material particulars thereof, yet
differ in respect of—
(a) statement of the
goods or services in relation to which they are respectively used or proposed
to be used; or
(b) statement of number,
price, quality or names of places; or
(c) other matter of a
non-distinctive character which does not substantially affect the identity of
the trade mark; or
(d) colour,
seeks to register those trade marks, they may be registered as a series in one
registration.
16. Registration of trade marks as associated trade marks.—(1) Where a trade mark which is registered, or
is the subject of an application for registration, in respect of any goods or
services is identical with another trade mark which is registered, or is the
subject of an application for registration, in the name of the same proprietor
in respect of the same goods or description of goods or same services or
description of services or so nearly resembles it as to be likely to deceive or
cause confusion if used by a person other than the proprietor, the Registrar
may, at any time, require that the trade marks shall be entered on the register
as associated trade marks.
(2) Where there is an
identity or near resemblance of marks that are registered, or are the subject
of applications for registration in the name of the same proprietor, in respect
of goods and services which are associated with those goods or services, or
goods or services of that description, sub-section (1) shall apply as it
applies as where there is an identity or near resemblance of marks that are
registered, or are the subject of applications for registration, in the name of
the same proprietor in respect of the same goods or description of goods or
same services or description of services.
(3) Where a trade mark
and any part thereof are, in accordance with the provisions of sub-section (1)
of section 15, registered as separate trade marks in the name of the same
proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of
sub-section (3) of section 15 as a series in one registration shall be
deemed to be, and shall be registered as, associated trade
marks.
(5) On application made
in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade
marks, the Registrar may dissolve the association as respects any of
them if he is satisfied that there would be no likelihood of deception or
confusion being caused if that trade mark were used by any other person in
relation to any of the goods or services or both in respect of which it is
registered, and may amend the register accordingly.
17. Effect of registration
of parts of a mark.—(1) When
a trade mark consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding
anything contained in sub-section (1), when a trade mark—
(a) contains any part—
(i)
which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not
separately registered by the proprietor as a trade mark; or
(b) contains any matter
which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall
not confer any exclusive right in the matter forming only a part of the whole
of the trade mark so registered.
1. Subs. by Act 40 of 2010, s. 2,
for clause (a) (w.e.f. 8-7-2013).
CHAPTER III
PROCEDURE FOR AND DURATION OF REGISTRATION
18. Application for
registration.
19. Withdrawal of
acceptance.
20. Advertisement of
application.
21. Opposition to
registration.
22. Correction and
amendment.
23. Registration.
24. Jointly owned trade marks.
25. Duration,
renewal, removal and restoration of registration.
26. Effect of removal from
register for failure to pay fee for renewal.
18.
Application for registration.—(1)
Any person claiming to be the proprietor of a trade mark used or proposed to be
used by him, who is desirous of registering it, shall apply in writing to the
Registrar in the prescribed manner for the registration of his trade mark.
(2)
A single application may be made for registration of a trade mark for different
classes of goods and services and fee payable there for shall be in respect of
each such class of goods or services.
(3)
Every application under sub-section (1) shall be filed in the office of
the Trade Marks Registry within whose territorial limits the principal place of
business in India of the applicant or in the case of joint applicants the
principal place of business in India of the applicant whose name is first
mentioned in the application as having a place of business in India, is
situate:
Provided
that where the applicant or any of the joint applicants does not carry on
business in India, the application shall be filed in the office of the Trade
Marks Registry within whose territorial limits the place mentioned in the
address for service in India as disclosed in the application, is situate.
(4)
Subject to the provisions of this Act, the Registrar may refuse the application
or may accept it absolutely or subject to such amendments, modifications,
conditions or limitations, if any, as he may think fit.
(5)
In the case of a refusal or conditional acceptance of an application, the
Registrar shall record in writing the grounds for such refusal or conditional
acceptance and the materials used by him in arriving at his decision.
19.
Withdrawal of acceptance.—Where, after the acceptance of an application for
registration of a trade mark but before its registration, the Registrar is
satisfied—
(a)
that the application has been accepted in error; or
(b)
that in the circumstances of the case the trade mark should not be registered
or should be registered subject to conditions or limitations or to conditions
additional to or different from the conditions or limitations subject to which
the application has been accepted,
the
Registrar may, after hearing the applicant if he so desires, withdraw the
acceptance and proceed as if the application had not been accepted.
20.
Advertisement of application.—(1)
When an application for registration of a trade mark has been accepted, whether
absolutely or subject to conditions or limitations, the Registrar shall, as
soon as may be after acceptance, cause the application as accepted together
with the conditions or limitations, if any, subject to which it has been
accepted, to be advertised in the prescribed manner:
Provided
that the Registrar may cause the application to be advertised before acceptance
if it relates to a trade mark to which sub-section (1) of section 9 and
sub-sections (1) and (2) of section 11 apply, or in any other
case where it appears to him that it is expedient by reason of any exceptional
circumstances so to do.
(2)
Where—
(a)
an application has been advertised before acceptance
under sub-section (1); or
(b)
after advertisement of an application,—
(i) an error in the
application has been corrected; or
(ii)
the application has been permitted to be amended under
section 22,
the
Registrar may in his discretion cause the application to be advertised again or
in any case falling under clause (b) may, instead of causing the
application to be advertised again, notify in the prescribed manner the
correction or amendment made in the application. 16
21.
Opposition to registration.—1[(1)
Any person may, within four months from the date of the advertisement or
re-advertisement of an application for registration, give notice in writing in
the prescribed manner and on payment of such fee as may be prescribed, to the
Registrar, of opposition to the registration.]
(2) The Registrar shall serve a copy of
the notice on the applicant for registration and, within two months from the
receipt by the applicant of such copy of the notice of opposition, the
applicant shall send to the Registrar in the prescribed manner a
counterstatement of the grounds on which he relies for his application, and if
he does not do so he shall be deemed to have abandoned his application.
(3)
If the applicant sends such counter-statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.
(4)
Any evidence upon which the opponent and the applicant may rely shall be
submitted in the prescribed manner and within the prescribed time to the
Registrar, and the Registrar shall give an opportunity to them to be heard, if
they so desire.
(5)
The Registrar shall, after hearing the parties, if so required, and considering
the evidence, decide whether and subject to what conditions or limitations, if
any, the registration is to be permitted, and may take into account a ground of
objection whether relied upon by the opponent or not.
(6)
Where a person giving notice of opposition or an applicant sending a
counter-statement after receipt of a copy of such notice neither resides nor
carries on business in India, the Registrar may require him to give security
for the costs of proceedings before him, and in default of such security being
duly given, may treat the opposition or application, as the case may be, as
abandoned.
(7)
The Registrar may, on request, permit correction of any error in, or any
amendment of, a notice of opposition or a counter-statement on such terms as he
thinks just.
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 application 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 initial application shall be
deemed to be the date of making of the divided applications so divided.
23.
Registration.—(1) Subject to
the provisions of section 19, when an application for registration of a trade
mark has been accepted and either—
(a)
the application has not been opposed and the time for
notice of opposition has expired; or
(b)
the application has been opposed and the opposition
has been decided in favour of the applicant,
the
Registrar shall, unless the Central Government otherwise directs, register the
said trade mark 2[within eighteen months of the filing of the
application] and the trade mark when registered shall be registered as of the
date of the making of the said application and that date shall, subject to the
provisions of section 154, be deemed to be the date of registration.
(2)
On the registration of a trade mark, the Registrar shall issue to the applicant
a certificate in the prescribed form of the registration thereof, sealed with
the seal of the Trade Marks Registry.
(3)
Where registration of a trade mark is not completed within twelve months from
the date of the application by reason of default on the part of the applicant,
the Registrar may, after giving notice to the applicant in the prescribed
manner, treat the application as abandoned unless it is completed within the
time specified in that behalf in the notice.
(4)
The Registrar may amend the register or a certificate of registration for the
purpose of correcting a clerical error or an obvious mistake. 17
24.
Jointly owned trade marks.—(1) Save as provided in sub-section (2),
nothing in this Act shall authorise the registration
of two or more persons who use a trade mark independently, or propose so as to
use it, as joint proprietors thereof.
(2)
Where the relations between two or more persons interested in a trade mark are
such that no one of them is entitled as between himself and the other or others
of them to use it except—
(a) on behalf of both or all of them; or\
(b)
in relation to an article or service with which both
or all of them are connected in the course of trade,
those
persons may be registered as joint proprietors of the trade mark, and this Act
shall have effect in relation to any rights to the use of the trade mark vested
in those persons as if those rights had been vested in a single person.
25.
Duration, renewal, removal and restoration of registration.—(1) The registration of a trade mark, after
the commencement of this Act, shall be for a period of ten years, but may be
renewed from time to time in accordance with the provisions of this section.
(2)
The Registrar shall, on application made by the registered proprietor of a
trade mark in the prescribed manner and within the prescribed period and
subject to payment of the prescribed fee, renew the registration of the trade
mark for a period of ten years from the date of expiration of the original
registration or of the last renewal of registration, as the case may be (which
date is in this section referred to as the expiration of the last
registration).
(3)
At the prescribed time before the expiration of the last registration of a
trade mark the Registrar shall send notice in the prescribed manner to the
registered proprietor of the date of expiration and the conditions as to
payment of fees and otherwise upon which a renewal of registration may be
obtained, and, if at the expiration of the time prescribed in that behalf those
conditions have not been duly complied with the Registrar may remove the trade
mark from the register:
Provided
that the Registrar shall not remove the trade mark from the register if an
application is made in the prescribed form and the prescribed fee and surcharge
is paid within six months from the expiration of the last registration of the
trade mark and shall renew the registration of the trade mark for a period of
ten years under sub-section (2).
(4)
Where a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall, after six months and within one year from
the expiration of the last registration of the trade mark, on receipt of an
application in the prescribed form and on payment of the prescribed fee, if
satisfied that it is just so to do, restore the trade mark to the register and
renew the registration of the trade mark either generally or subject to such
conditions or limitations as he thinks fit 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.—Where a trade mark has been removed from the register
for failure to pay the fee for renewal, it shall nevertheless, for the purpose
of any application for the registration of another trade mark during one year,
next after the date of the removal, be deemed to be a trade mark already on the
register, unless the tribunal is satisfied either—
(a)
that there has been no bona fide trade use of the trade mark which has
been removed during the two years immediately preceding its removal; or
(b) that no
deception or confusion would be likely to arise from the use of the trade mark
which is the subject of the application for registration by reason of any
previous use of the trade mark which has been removed.
1. Subs. by Act 40 of 2010, s. 3,
for sub-section (1) (w.e.f. 8-7-2013).
2. Ins. by s. 4, ibid. (w.e.f. 8-7-2013).
CHAPTER IV
EFFECT OF REGISTRATION
27. No action for infringement of unregistered trade mark.
28. Rights conferred by registration.
29. Infringement of registered trade marks.
30. Limits on effect of registered trade mark.
31. Registration to be prima facie evidence of validity.
32. Protection of registration on ground of distinctiveness in certain
cases.
33. Effect of acquiescence.
SECTIONS
34. Saving for vested rights.
35. Saving for use of name, address or description of goods or
services.
36. Saving for words used as name or description of an article or
substance or service.
CHAPTER
IVA
SPECIAL
PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL
REGISTRATION UNDER THE MADRID PROTOCOL
36A. Application of Act in case of
international registration under Madrid Protocol.
36B. Definitions.
36C. Trade Marks
Registry to deal with international applications.
36D. International
application originating from India.
36E. International
registrations where India has been designated.
36F. Effects of international
registration.
36G. Duration and
renewal of international registration.
27.
No action for infringement of unregistered trade mark.—(1) No person shall be entitled to institute
any proceeding to prevent, or to recover damages for, the infringement of an
unregistered trade mark. 18
(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.—(1)
Subject to the other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this
Act.
(2)
The exclusive right to the use of a trade mark given under sub-section (1)
shall be subject to any conditions and limitations to which the registration is
subject.
(3)
Where two or more persons are registered proprietors of trade
marks, which are identical with or nearly resemble each other, the
exclusive right to the use of any of those trade marks
shall not (except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to have been
acquired by any one of those persons as against any other of those persons
merely by registration of the trade marks but each of those persons has
otherwise the same rights as against other persons (not being registered users
using by way of permitted use) as he would have if he were the sole registered
proprietor.
29.
Infringement of registered trade marks.—(1) A registered trade mark is infringed by a
person who, not being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation to goods or services in
respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark.
(2)
A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which because of—
(a)
its identity with the registered trade mark and the
similarity of the goods or services covered by such registered trade mark; or
(b)
its similarity to the registered trade mark and the
identity or similarity of the goods or services covered by such registered
trade mark; or
(c)
its identity with the registered trade mark and the
identity of the goods or services covered by such registered trade mark, is
likely to cause confusion on the part of the public, or which is likely to have
an association with the registered trade mark.
(3)
In any case falling under clause (c) of sub-section (2), the
court shall presume that it is likely to cause confusion on the part of the
public.
(4)
A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which—
(a) is identical with or similar to the registered
trade mark; and
(b)
is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c)
the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered trade
mark.
(5)
A registered trade mark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his trade name, or name of his
business concern or part of the name, of his business concern dealing in goods
or services in respect of which the trade mark is registered.
(6)
For the purposes of this section, a person uses a registered mark, if, in
particular, he—
(a)
affixes it to goods or the packaging thereof; 19
(b)
offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the registered trade mark, or
offers or supplies services under the registered trade mark;
(c)
imports or exports goods under the mark; or
(d)
uses the registered trade mark on business papers or
in advertising.
(7)
A registered trade mark is infringed by a person who applies such registered
trade mark to a material intended to be used for labeling or packaging goods,
as a business paper, or for advertising goods or services, provided such
person, when he applied the mark, knew or had reason to believe that the application
of the mark was not duly authorised by the proprietor
or a licensee.
(8)
A registered trade mark is infringed by any advertising of that trade mark if
such advertising—
(a)
takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c)
is against the reputation of the trade mark.
(9)
Where the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words as well
as by their visual representation and reference in this section to the use of a
mark shall be construed accordingly.
30.
Limits on effect of registered trade mark.—(1) Nothing in section 29 shall be construed as
preventing the use of a registered trade mark by any person for the purposes of
identifying goods or services as those of the proprietor provided the use—
(a)
is in accordance with honest practices in industrial
or commercial matters, and
(b)
is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the trade mark.
(2)
A registered trade mark is not infringed where—
(a)
the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods
or of rendering of services or other characteristics of goods or services;
(b)
a trade mark is registered subject to any conditions or limitations, the use of
the trade mark in any manner in relation to goods to be sold or otherwise
traded in, in any place, or in relation to goods to be exported to any market
or in relation to services for use or available for acceptance in any place or
country outside India or in any other circumstances, to which, having regard to
those conditions or limitations, the registration does not extend;
(c)
the use by a person of a trade mark—
(i) in relation to goods connected in the course of
trade with the proprietor or a registered user of the trade mark if, as to
those goods or a bulk of which they form part, the registered proprietor or the
registered user conforming to the permitted use has applied the trade mark and
has not subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark; or
(ii)
in relation to services to which the proprietor of such mark or of a registered
user conforming to the permitted use has applied the mark, where the purpose
and effect of the use of the mark is to indicate, in accordance with the fact,
that those services have been performed by the proprietor or a registered user
of the mark;
(d)
the use of a trade mark by a person in relation to goods adapted to form part
of, or to be accessory to, other goods or services in relation to which the
trade mark has been used without infringement of the right given by
registration under this Act or might for the time being be so used, if the use
of the trade mark is reasonably necessary in order to indicate that the goods
or services are so adapted, and neither the purpose nor the effect of the use
of the trade mark is to indicate, otherwise 20
than in
accordance with the fact, a connection in the course of trade between any
person and the goods or services, as the case may be;
(e)
the use of a registered trade mark, being one of two
or more trade marks registered under this Act which
are identical or nearly resemble each other, in exercise of the right to the
use of that trade mark given by registration under this Act.
(3)
Where the goods bearing a registered trade mark are lawfully acquired by a
person, the sale of the goods in the market or otherwise dealing in those goods
by that person or by a person claiming under or through him is not infringement
of a trade mark by reason only of—
(a)
the registered trade mark having been assigned by the
registered proprietor to some other person, after the acquisition of those
goods; or
(b)
the goods having been put on the market under the
registered trade mark by the proprietor or with his consent.
(4)
Sub-section (3) shall not apply where there exists
legitimate reasons for the proprietor to oppose further dealings in the
goods in particular, where the condition of the goods, has been changed or
impaired after they have been put on the market.
31.
Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a
trade mark registered under this Act (including applications under section 57),
the original registration of the trade mark and of all subsequent assignments
and transmissions of the trade mark shall be prima facie evidence of the
validity thereof.
(2)
In all legal proceedings as aforesaid a registered trade mark shall not be held
to be invalid on the ground that it was not a registrable
trade mark under section 9 except upon evidence of distinctiveness and that
such evidence was not submitted to the Registrar before registration, if it is
proved that the trade mark had been so used by the registered proprietor or his
predecessor in title as to have become distinctive at the date of registration.
32.
Protection of registration on ground of distinctiveness in certain cases.—Where a trade mark is registered in breach of
sub-section (1) of section 9, it shall not be declared invalid if, in
consequence of the use which has been made of it, it has after registration and
before commencement of any legal proceedings challenging the validity of such
registration, acquired a distinctive character in relation to the goods or
services for which it is registered.
33.
Effect of acquiescence.—(1)
Where the proprietor of an earlier trade mark has acquiesced for a continuous
period of five years in the use of a registered trade mark, being aware of that
use, he shall no longer be entitled on the basis of that earlier trade mark—
(a)
to apply for a declaration that the registration of
the later trade mark is invalid, or
(b)
to oppose the use of the later trade mark in relation
to the goods or services in relation to which it has been so used,
unless
the registration of the later trade mark was not applied in good faith.
(2)
Where sub-section (1) applies, the proprietor of the later trade mark is
not entitled to oppose the use of the earlier trade mark, or as the case may
be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade
mark.
34.
Saving for vested rights.—Nothing in this
Act shall entitle the proprietor or a registered user of registered trade mark
to interfere with or restrain the use by any person of a trade mark identical
with or nearly resembling it in relation to goods or services in relation to
which that person or a predecessor in title of his has continuously used that
trade mark from a date prior—
(a)
to the use of the first-mentioned trade mark in
relation to those goods or services by the proprietor or a predecessor in title
of his; or
(b)
to the date of registration of the first-mentioned trade mark in respect of
those goods or services in the name of the proprietor of a predecessor in title
of his; 21
whichever
is the earlier, and the Registrar shall not refuse (on such use being proved)
to register the second mentioned trade mark by reason only of the registration
of the first-mentioned trade mark.
35.
Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a
registered user of a registered trade mark to interfere with any bona fide use
by a person of his own name or that of his place of business, or of the name,
or of the name of the place of business, of any of his predecessors in
business, or the use by any person of any bona fide description of the
character or quality of his goods or services.
36.
Saving for words used as name or description of an article or substance or
service.—(1) The
registration of a trade mark shall not be deemed to have become invalid by
reason only of any use after the date of the registration of any word or words
which the trade mark contains or of which it consists as the name or
description of an article or substance or service:
Provided
that, if it is proved either—
(a)
that there is a well known and established use of the said word as the name or
description of the article or substance or service by a person or persons
carrying on trade therein, not being use in relation to goods or services
connected in the course of trade with the proprietor or a registered user of
the trade mark or (in the case of a certification trade mark) in relation to goods
or services certified by the proprietor; or
(b)
that the article or substance was formerly manufactured under a patent that a
period of two years or more after the cesser of the
patent has elapsed and that the said word is the only practicable name or
description of the article or substance,
the
provisions of sub-section (2) shall apply.
(2)
Where the facts mentioned in clause (a) or clause (b) of the
proviso to sub-section (1) are proved with respect to any words, then,—
(a)
for the purposes of any proceedings under section 57 if the trade mark consists
solely of such words, the registration of the trade mark, so far as regards
registration in respect of the article or substance in question or of any goods
of the same description, or of the services or of any services of the same
description, as the case requires, shall be deemed to be an entry wrongly
remaining on the register;
(b)
for the purposes of any other legal proceedings
relating to the trade mark,—
(i) if the trade mark
consists solely of such words, all rights of the proprietor under this Act or
any other law to the use of the trade mark; or
(ii)
if the trade mark contains such words and other
matter, all such right of the proprietor to the use of such words,
in
relation to the article or substance or to any goods of the same description,
or to the service or to any services of the same description, as the case
requires, shall be deemed to have ceased on the date on which the use mentioned
in clause (a) of the proviso to 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.
1[CHAPTER
IV A
SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH
INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL
36A.
Application of Act in case of international registration under Madrid Protocol.—The provisions of this
Chapter shall apply to international applications and international
registrations under the Madrid Protocol.
36B.
Definitions.—In
this Chapter, unless the context otherwise requires,—
(a)
“application”, in relation to a Contracting State or a
Contracting Organization, means an application made by a person who is a
citizen of, or is domiciled in, or has a real and effective industrial or
commercial establishment in, that Contracting State or a State which is a
member of that Contracting Organization, as the case may be.
Explanation.—For the purposes of this clause, “real and effective
industrial or commercial establishment” means and includes any establishment
where some bona fide industrial or commercial activity takes place and
need not necessarily be the principal place of business;
(b)
“basic application” means an application for the registration of a trade mark
filed under section 18 and which is used as a basis for applying for an
international registration;
(c)
“basic registration” means the registration of a trade mark under section 23
and which is used as a basis for applying for an international registration;
(d)
“Common Regulations” means the Regulations concerning
the implementation of the Madrid Protocol;
(e)
“Contracting Organisation” means a Contracting Party
that is an intergovernmental organisation;
(f)
“Contracting Party” means a Contracting State or Contracting Organisation party to the Madrid Protocol;
(g)
“Contracting State” means a country party to the Madrid Protocol;
(h)
“international application” means an application for
international registration or for extension of the protection resulting from an
international registration to any Contracting Party made under the Madrid
Protocol;
(i) “International Bureau” means the International
Bureau of the World Intellectual Property Organisation;
(j)
“international registration” means the registration of
a trade mark in the register of the International Bureau effected under the
Madrid Protocol;
(k)
“Madrid Agreement” means the Madrid Agreement Concerning the International
Registration of Marks adopted at Madrid on the 14th day of April, 1891, as
subsequently revised and amended;
(l)
“Madrid Protocol” means the Protocol relating to the Madrid Agreement Concerning
the International Registration of Marks adopted at Madrid on the 27th day of
June, 1989, as amended from time to time.
36C.
Trade Marks Registry to deal with international applications.—Notwithstanding anything contained in sub-section (3)
of section 5, an international application shall be dealt with by the head
office of the Trade Marks Registry or such branch office of the Registry, as
the Central Government may, by notification in the Official Gazette, specify.
36D.
International application originating from India.—(1) Where an application for the registration
of a trade mark has been made under section 18 or a trade mark has been
registered under section 23, the applicant or the registered proprietor may
make an international application on the form prescribed by the Common
Regulations for international registration of that trade mark.
(2)
A person holding an international registration may make an international
application on the form prescribed by the Common Regulations for extension of
the protection resulting from such registration to any other Contracting Party.
(3)
An international application under sub-section (1) or sub-section (2)
shall designate the Contracting Parties where the protection resulting from the
international registration is required.
(4)
The Registrar shall certify in the prescribed manner that the particulars
appearing in the international application correspond to the particulars
appearing, at the time of the certification, in the application under section
18 or the registration under section 23, and shall indicate the date and number
of that application or the date and number of that registration as well as the
date and number of the application from which that registration resulted, as
the case may be, and shall within the prescribed period, forward the
international application to the International Bureau for registration, also
indicating the date of the international application.
(5)
Where at any time before the expiry of a period of five years of an
international registration, whether such registration has been transferred to
another person or not, the application under section 18 or the registration
under section 23, as the case may be, has been withdrawn or cancelled or has
expired or has been finally refused in respect of all or some of the goods or
services listed in the international registration, the protection resulting
from such international registration shall cease to have effect:
Provided
that where an appeal is made against the decision of registration and an action
requesting for withdrawal of application or an opposition to the application
has been initiated before the expiry of the period of five years of an
international registration, any final decision resulting into withdrawal,
cancellation, expiration or refusal shall be deemed to have taken place before
the expiry of five years of the international registration.
(6)
The Registrar shall, during the period of five years beginning with the date of
international registration, transmit to the International Bureau every information referred to in sub-section (5).
(7)
The Registrar shall notify the International Bureau the cancellation to be
effected to an international registration keeping in view the current status of
the basic application or the basic registration, as the case may be.
36E.
International registrations where India has been designated.—(1) The Registrar shall, after receipt of an
advice from the International Bureau about any international registration where
India has been designated, keep a record of the particulars of that
international registration in the prescribed manner.
(2)
Where, after recording the particulars of any international registration
referred to in sub-section (1), the Registrar is satisfied that in the
circumstances of the case the protection of trade mark in India should not be
granted or such protection should be granted subject to conditions or
limitations or to conditions additional to or different from the conditions or
limitations subject to which the international registration has been accepted,
he may, after hearing the applicant if he so desires, refuse grant of
protection and inform the International Bureau in the prescribed manner within
eighteen months from the date on which the advice referred to in sub-section (1)
was received.
(3)
Where the Registrar finds nothing in the particulars of an international
registration to refuse grant of protection under sub-section (2), he
shall within the prescribed period cause such international registration to be
advertised in the prescribed manner.
(4)
The provisions of sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis
mutandis in relation to an international registration as if such
international registration was an application for registration of a trade mark
under section 18.
(5)
When the protection of an international registration has not been opposed and
the time for notice of opposition has expired, the Registrar shall within a
period of eighteen months of the receipt of advice under sub-section (1)
notify the International Bureau its acceptance of extension of protection of
the trade mark under such international registration and, in case the Registrar
fails to notify the International Bureau, it shall be deemed that the
protection has been extended to the trade mark.
(6)
Where a registered proprietor of a trade mark makes an international
registration of that trade mark and designates India, the international
registration from the date of the registration shall be deemed to replace the
registration held in India without prejudice to any right acquired under such
previously held registration and the Registrar shall, upon request by the
applicant, make necessary entry in the register referred to in sub-section (1)
of section 6.
(7)
A holder of international registration of a trade mark who designates India and
who has not been extended protection in India shall have the same remedy which
is available to any person making an application for the registration of a
trade mark under section 18 and which has not resulted in registration under
section 23.
(8)
Where at any time before the expiry of a period of five years of an
international registration, whether such registration has been transferred to
another person or not, the related basic application or, as the case may be,
the basic registration in a Contracting Party other than India has been
withdrawn or cancelled or has expired or has been finally refused in respect of
all or some of the goods or services listed in the international registration,
the protection resulting from such international registration in India shall
cease to have effect.
36F.
Effects of international registration.—(1)
From the date of the international registration of a trade mark where India has
been designated or the date of the recording in the register of the
International Bureau about the extension of the protection resulting from an
international registration of a trade mark to India, the protection of the
trade mark in India shall be the same as if the trade mark had been registered
in India.
(2)
The indication of classes of goods and services given by the applicant shall
not bind the Registrar with regard to the determination of the scope of the
protection of the trade mark.
36G.
Duration and renewal of international registration.—(1) The international registration of a trade
mark at the International Bureau shall be for a period of ten years and may be
renewed for a period of ten years from the expiry of the preceding period.
(2) Subject to payment of
a surcharge prescribed by the rules, a grace period of six months shall be
allowed for renewal of the international registration.]
1. Ins. by Act 40 of 2010, s. 5
(w.e.f. 8-7-2013).
CHAPTER V
ASSIGNMENT AND TRANSMISSION
37. Power of registered proprietor to assign and give
receipts.
38. Assignability and
transmissibility of registered trade marks.
39. Assignability and
transmissibility of unregistered trade marks.
40. Restriction on assignment or transmission where
multiple exclusive rights would be created.
41. Restriction on assignment or transmission when
exclusive rights would be created in different parts of India.
42. Conditions for assignment otherwise than in
connection with the goodwill of a business.
43. Assignability and
transmissibility of certification trade marks.
44. Assignability and
transmissibility of associated trade marks.
45.
Registration of assignments and transmissions.
37.
Power of registered proprietor to assign and give receipts.—The person for the time being entered in the register
as proprietor of a trade mark shall, subject to the provisions of this Act and
to any rights appearing from the register to be vested in any other person, have
power to assign the trade mark, and to give effectual receipts for any
consideration for such assignment.
38.
Assignability and transmissibility of registered trade marks.—Notwithstanding
anything in any other law to the contrary, a registered trade mark shall,
subject to the provisions of this Chapter, be assignable and transmissible,
whether with or without the goodwill of the business concerned and in respect
either of all the goods or services in respect of which the trade mark is
registered or of some only of those goods or services.
39.
Assignability and transmissibility of unregistered trade marks.—An unregistered trade mark may be assigned or
transmitted with or without the goodwill of the business concerned.
40.
Restriction on assignment or transmission where multiple exclusive rights would
be created.—(1)
Notwithstanding anything in sections 38 and 39, a trade mark shall not be
assignable or transmissible in a case in which as a result of the assignment or
transmission there would in the circumstances subsist, whether under this Act
or any other law, exclusive rights in more than one of the persons concerned to
the use, in relation to—
(a)
same goods or services;
(b)
same description of goods or services;
(c)
goods or services or description of goods or services
which are associated with each other,
of trade marks nearly resembling each other or of identical
trade mark, if having regard to the similarity of the goods and services and to
the similarity of the trade marks, the use of the trade marks in exercise of
those rights would be likely to deceive or cause confusion:
Provided
that an assignment or transmission shall not be deemed to be invalid under this
sub-section if the exclusive rights subsisting as a result thereof in the
persons concerned respectively are, having regard to limitations imposed
thereon, such as not to be exercisable by two or more of those persons in
relation to goods to be sold, or otherwise traded in, within India otherwise
than for export therefrom, or in relation to goods to
be exported to the same market outside India or in relation to services for use
at any place in India or any place outside India in relation to services
available for acceptance in India.
(2)
The proprietor of a registered trade mark who proposes to assign it may submit
to the Registrar in the prescribed manner a statement of case setting out the
circumstances and the Registrar may issue to him a certificate stating whether,
having regard to the similarity of the goods or services and of the trade marks
referred to in the case, the proposed assignment would or would not be invalid
under sub-section (1), and a certificate so issued shall, subject to
appeal and unless it is shown that the certificate was obtained by fraud or
misrepresentation, be conclusive as to the validity or
invalidity under sub-section (1) of the assignment in so far as such
validity or invalidity depends upon the facts set out in the case, but, as
regards a certificate in favour of validity, only if
application for the registration under section 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 would be
created in different parts of India.—Notwithstanding anything in sections 38 and 39, a trade mark shall
not be assignable or transmissible in a case in which as a result of the
assignment or transmission there would in the circumstances subsist, whether
under this Act or any other law—
(a)
an exclusive right in one of the persons concerned, to the use of the trade
mark limited to use in relation to goods to be sold or otherwise traded in, in
any place in India, or in relation to services for use, or services available
for acceptance in any place in India; and
(b)
an exclusive right in another of these persons
concerned, to the use of a trade mark nearly resembling the first-mentioned
trade mark or of an identical trade mark in relation to—
(i) the same goods or
services; or
(ii)
the same description of goods or services; or
(iii)
services which are associated with those goods or
goods of that description or goods which are associated with those services or
services of that description,
limited
to use in relation to goods to be sold or otherwise traded in, or services for
use, or available for acceptance, in any other place in India:
Provided
that in any such case, on application in the prescribed manner by the
proprietor of a trade mark who proposes to assign it, or by a person who claims
that a registered trade mark has been transmitted to him or to a predecessor in
title of his since the commencement of this Act, the Registrar, if he is
satisfied that in all the circumstances the use of the trade mark in exercise
of the said rights would not be contrary to the public interest may approve the
assignment or transmission, and an assignment or transmission so approved shall
not, unless it is shown that the approval was obtained by fraud or
misrepresentation, be deemed to be invalid under this section or section 40 if
application for the registration under section 45 of the title of the person
becoming entitled is made within six months from the date on which the approval
is given or, in the case of a transmission, was made before that date.
42.
Conditions for assignment otherwise than in connection with the goodwill of a
business.—Where an
assignment of a trade mark, whether registered or unregistered is made
otherwise than in connection with the goodwill of the business in which the
mark has been or is used, the assignment shall not take effect unless the
assignee, not later than the expiration of six months from the date on which
the assignment is made or within such extended period, if any, not exceeding
three months in the aggregate, as the Registrar may allow, applies to the
Registrar for directions with respect to the advertisement of the assignment,
and advertises it in such form and manner and within such period as the
Registrar may direct.
Explanation.—For the purposes of this section, an assignment of a
trade mark of the following description shall not be deemed to be an assignment
made otherwise than in connection with the goodwill of the business in which
the mark is used, namely:—
(a)
an assignment of a trade mark in respect only of some of the goods or services
for which the trade mark is registered accompanied by the transfer of the
goodwill of the business concerned in those goods or services only; or
(b)
an assignment of a trade mark which is used in
relation to goods exported from India or in relation to services for use
outside India if the assignment is accompanied by the transfer of the goodwill
of the export business only.
43.
Assignability and transmissibility of certification trade marks.—A certification trade mark shall not be assignable or
transmissible otherwise than with the consent of the Registrar, for which
application shall be made in writing in the prescribed manner.
44.
Assignability and transmissibility of associated trade marks.—Associated trade marks shall be assignable
and transmissible only as a whole and not separately, but, subject to the
provisions of this Act, they shall, for all other purposes, be deemed to have
been registered as separate trade mark.
1[45. Registration of assignments and transmissions.—(1) Where a person becomes entitled by
assignment or transmission to a registered trade mark, he shall apply in the
prescribed manner to the Registrar to register his title, and the Registrar
shall, on receipt of the application, register him as the proprietor of the
trade mark in respect of the goods or services in respect of which the
assignment or transmission has effect, and shall cause particulars of such
assignment or transmission to be entered on the register.
(2)
The Registrar may require the applicant to furnish evidence or further evidence
in proof of title only where there is a reasonable doubt about the veracity of
any statement or any document furnished.
(3)
Where the validity of an assignment or transmission is in dispute between the
parties, the Registrar may refuse to register the assignment or transmission
until the rights of the parties have been determined by a competent court and
in all other cases the Registrar shall dispose of the application within the
prescribed period.
(4)
Until an application under sub-section (1) has been filed, the
assignment or transmission shall be ineffective against a person acquiring a
conflicting interest in or under the registered trade mark without the
knowledge of assignment or transmission.
1. Subs. by Act 40 of 2010, s. 6,
for section 45 (w.e.f. 8-7-2013).
CHAPTER VI
USE OF TRADE MARKS AND REGISTERED USERS
46. Proposed use of trade mark by company to be
formed, etc.
47. Removal from register and imposition of
limitations on ground of non-use.
48. Registered users.
49. Registration as registered user.
50. Power of Registrar for variation or cancellation
of registration as registered user.
51. Power of Registrar to call for information
relating to agreement in respect of registered users.
52. Right of registered user to take proceedings
against infringement.
53. No right of permitted user to take proceeding
against infringement.
54. Registered user not to have right of assignment or
transmission.
55. Use of one of associated or substantially
identical trade marks equivalent to use of another.
56.
Use of trade mark for export trade and use when form of trade connection
changes.
46.
Proposed use of trade mark by company to be formed, etc.—(1) No application for the registration of a
trade mark in respect of any goods or services shall be refused nor shall
permission for such registration be withheld, on the ground only that it
appears that the applicant does not use or propose to use the trade mark if the
Registrar is satisfied that—
(a)
a company is about to be formed and registered under the Companies Act, 1956 (1
of 1956) and that the applicant intends to assign the trade mark to that
company with a view to the use thereof in relation to those goods or services
by the company, or
(b)
the proprietor intends it to be used by a person, as a
registered user after the registration of the trade mark.
(2)
The provisions of section 47 shall have effect, in relation to a trade mark
registered under the powers conferred by this sub-section, as if for the
reference, in clause (a) of sub-section (1) of that section, to
the intention on the part of an applicant for registration that a trade mark
should be used by him there were substituted a reference to the intention on
his part that it should be used by the company or registered user concerned.
(3)
The 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 as abandoned.
(4)
Where in a case to which sub-section (1) applies, a trade mark in
respect of any goods or services is registered in the name of an applicant who,
relies on intention to assign the trade mark to a company, then, unless within
such period as may be prescribed or within such further period not exceeding
six months as the Registrar may, on application being made to him in the
prescribed manner, allow, the company has been registered as the proprietor of
the trade mark in respect of those goods or services, the registration shall
cease to have effect in respect thereof at the expiration of that period and
the Registrar shall amend the register accordingly.
47.
Removal from register and imposition of limitations on ground of non-use.—(1) A registered trade mark may be taken off
the register in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner to the Registrar or the
Appellate Board by any person aggrieved on the ground either—
(a)
that the trade mark was registered without any bona fide intention on
the part of the applicant for registration that it should be used in relation
to those goods or services by him or, in a case to which the provisions of
section 46 apply, by the company concerned or the registered user, as the case
may be, and that there has, in fact, been no bona fide use of the trade
mark in relation to those goods or services by any proprietor thereof for the
time being up to a date three months before the date of the application; or
(b)
that up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually entered
in the register or longer had elapsed during which the trade mark was
registered and during which there was no bona fide use thereof in
relation to those goods or services by any proprietor thereof for the time
being:
Provided
that except where the applicant has been permitted under section 12 to register
an identical or nearly resembling trade mark in respect of the goods or
services in question, or where the tribunal is of opinion that he might
properly be permitted so to register such a trade mark, the tribunal may refuse
an application under clause (a) or clause (b) in relation to any
goods or services, if it is shown that there has been, before the relevant date
or during the relevant period, as the case may be, bona fide use of the
trade mark by any proprietor thereof for the time being in relation to—
(i) goods or services of the
same description; or
(ii)
goods or services associated with those goods or
services of that description being goods or services, as the case may be, in
respect of which the trade mark is registered.
(2)
Where in relation to any goods or services in respect of which a trade mark is
registered—
(a)
the circumstances referred to in clause (b) of sub-section (1)
are shown to exist so far as regards non-use of the trade mark in relation to
goods to be sold, or otherwise traded in a particular place in India (otherwise
than for export from India), or in relation to goods to be exported to a
particular market outside India; or in relation to services for use or
available for acceptance in a particular place in India or for use in a
particular market outside India; and
(b)
a person has been permitted under section 12 to register an identical or nearly
resembling trade mark in respect of those goods, under a registration extending
to use in relation to goods to be so sold, or otherwise traded in, or in
relation to goods to be so exported, or in relation to services for use or
available for acceptance in that place or for use in that country, or the
tribunal is of opinion that he might properly be permitted so to register such
a trade mark, on application by that person in the prescribed manner to the
Appellate Board or to the Registrar, the tribunal may impose on the
registration of the first-mentioned trade mark such limitations as it thinks
proper for securing that that registration shall cease to extend to such use.
(3)
An applicant shall not be entitled to rely for the purpose of clause (b)
of sub-section (1) or for the purposes of sub-section (2) on any
non-use of a trade mark which is shown to have been due to special
circumstances in the trade, which includes restrictions on the use of the trade
mark in India imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to the goods or services to
which the application relates.
48.
Registered users.—(1)
Subject to the provisions of section 49, a person other than the registered
proprietor of a trade mark may be registered as a registered user thereof in
respect of any or all of the goods or services in respect of which the trade
mark is registered.
(2)
The permitted use of a trade mark shall be deemed to be used by the proprietor
thereof, and shall be deemed not to be used by a person other than the
proprietor, for the purposes of section 47 or for any other purpose for which
such use is material under this Act or any other law.
49.
Registration as registered user.—(1)
Where it is proposed that a person should be registered as a registered user of
a trade mark, the registered proprietor and the proposed registered user shall
jointly apply in writing to the Registrar in the prescribed manner, and every
such application shall be accompanied by—
(a)
the agreement in writing or a duly authenticated copy thereof, entered into
between the registered proprietor and the proposed registered user with respect
to the permitted use of the trade mark; and
(b)
an affidavit made by the registered proprietor or by
some person authorised to the satisfication
of the Registrar to act on his behalf,—
(i) giving particulars of the relationship, existing
or proposed, between the registered proprietor and the proposed registered
user, including particulars showing the degree of control by the proprietor
over the permitted use which their relationship will confer and whether it is a
term of their relationship that the proposed registered user shall be the sole
registered user or that there shall be any other restriction as to persons for
whose registration as registered users application may be made;
(ii)
stating the goods or services in respect of which
registration is proposed;
(iii)
stating the conditions or restrictions, if any, proposed with respect to the
characteristics of the goods or services, to the mode or place of permitted
use, or to any other matter;
(iv)
stating whether the permitted use is to be for a
period or without limit of period, and, if for a period, the duration thereof;
and
(c)
such further documents or other evidence as may be
required by the Registrar or as may be prescribed.
(2)
When the requirements of sub-section (1) have been complied with, the
Registrar shall register the proposed registered user in respect of the goods
or services as to which he is so satisfied.
(3)
The Registrar shall issue notice in the prescribed manner of the registration
of a person as a registered user, to other registered users of the trade mark,
if any.
(4)
The Registrar shall, if so requested by the applicant, take steps for securing
that information given for the purposes of an application under this section
(other than matters entered in the register) is not disclosed to rivals in
trade.
50.
Power of Registrar for variation or cancellation of registration as registered
user.—(1) Without prejudice to the provisions of section 57, the
registration of a person as registered user—
(a)
may be varied by the Registrar as regards the goods or
services in respect of which it has effect on the application in writing in the
prescribed manner of the registered proprietor of the trade mark;
(b)
may be cancelled by the Registrar on the application
in writing in the prescribed manner of the registered proprietor or of the
registered user or of any other registered user of the trade mark;
(c)
may be cancelled by the Registrar on the application
in writing in the prescribed manner of any person on any of the following
grounds, namely:—
(i) that the registered user has used the trade mark
otherwise than in accordance with the agreement under clause (a) of
sub-section (1) of section 49 or in such way as to cause or to be likely
to cause, deception or confusion;
(ii)
that the proprietor or the registered user misrepresented, or failed to
disclose, some fact material to the application for registration which if
accurately represented or disclosed would not have justified the registration
of the registered user;
(iii)
that the circumstances have changed since the date of
registration in such a way that at the date of such application for
cancellation they would not have justified registration of the registered user;
(iv)
that the registration ought not to have been effected
having regard to rights vested in the applicant by virtue of a contract in the
performance of which he is interested;
(d)
may be cancelled by the Registrar on his own motion or on the application in
writing in the prescribed manner by any person, on the ground that any
stipulation in the agreement between the registered proprietor and the
registered user regarding the quality of the goods or services in relation to
which the trade mark is to be used is either not being enforced or is not being
complied with;
(e)
may be cancelled by the Registrar in respect of any
goods or services in relation to which the trade mark is no longer registered.
(2)
The Registrar shall issue notice in the prescribed manner in respect of every
application under this section to the registered proprietor and each registered
user (not being the applicant) of the trade mark.
(3)
The procedure for 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 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 proprietor 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 shall notify the same.
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, making the registered
proprietor a defendant and the rights and obligations of such registered user
in such case being concurrent with those of the registered proprietor.
(2)
Notwithstanding anything contained in any other law, a registered proprietor so
added as defendant shall not be liable for any costs unless he enters an
appearance and takes part in the proceedings.
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.—Nothing in this Act shall confer on a registered user
of a trade mark any assignable or transmissible right to the use thereof.
Explanation
I.—The right of a
registered user of a trade mark shall not be deemed to have been assigned or
transmitted within the meaning of this section in the following cases, namely:—
(a)
where the registered user being an individual enters into a partnership with
any other person for carrying on the business concerned; but in any such case
the firm may use the trade mark, if otherwise in force, only for so long as the
registered user is a member of the firm;
(b)
where the registered user being a firm subsequently undergoes a change in its
constitution; but in any such case the reconstituted firm may use the trade
mark, if otherwise in force, only for so long as any partner of the original
firm at the time of its registration as registered user, continues to be a
partner of the reconstituted firm.
Explanation
II.—For the purposes of Explanation I,
―firm‖ has the same meaning as in the Indian Partnership Act, 1932
(9 of 1932).
55.
Use of one of associated or substantially identical trade
marks equivalent to use of another.—(1) Where under the provisions of this Act, use
of a registered trade mark is required to be proved for any purpose, the
tribunal may, if and, so far as it shall think right,
accept use of a registered associated trade mark, or of the trade mark with
additions or alterations not substantially affecting its identity, as an
equivalent for the use required to be proved.
(2)
The use of the whole of a registered trade mark shall, for the purpose of this
Act, be deemed to be also use of any trade mark being a part thereof and
registered in accordance with sub-section (1) of section 15 in the name
of the same proprietor.
(3)
Notwithstanding anything in section 32, the use of part of the registered trade
mark in sub-section (2) shall not be conclusive as to its evidence of
distinctiveness for any purpose under this Act.
56.
Use of trade mark for export trade and use when form of trade connection
changes.—(1) The
application in India of trade mark to goods to be exported from India or in
relation to services for use outside India and any other act done in India in
relation to goods to be so exported or services so rendered outside India
which, if done in relation to goods to be sold or services provided or
otherwise traded in within India would constitute use of a trade mark therein,
shall be deemed to constitute use of the trade mark in relation to those goods
or services for any purpose for which such use is material under this Act or
any other law.
(2) The use of a
registered trade mark in relation to goods or services between which and the
person using the mark any form of connection in the course of trade subsists
shall not be deemed to be likely to cause deception or confusion on the ground
only that the mark has been or is used in relation to goods or services between
which and the said person or a predecessor in title of that person a different
form of connection in the course of trade subsisted or subsists.
CHAPTER VII
RECTIFICATION AND CORRECTION OF THE REGISTER
57.
Power to cancel or vary registration and to rectify the register.
58.
Correction of register.
59.
Alteration of registered trade marks.
60. Adaptation of entries in
register to amended or substituted classification of goods or services.
57. Power to cancel or vary
registration and to rectify the register.—(1) On application made in the prescribed
manner to the Appellate Board or to the Registrar by any person aggrieved, the
tribunal may make such order as it may think fit for cancelling or varying the
registration of a trade mark on the ground of any contravention, or failure to
observe a condition entered on the register in relation thereto.
(2) Any person aggrieved
by the absence or omission from the register of any entry, or by any entry made
in the register without sufficient cause, or by any entry wrongly remaining on
the register, or by any error or defect in any entry in the register, may 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.—(1) The Registrar may, on application made in
the prescribed manner by the registered proprietor,—
(a) correct
any error in the name, address or description of the registered proprietor of a
trade mark, or any other entry relating to the trade mark;
(b) enter
any change in the name, address or description of the person who is registered
as proprietor of a trade mark;
(c) cancel
the entry of a trade mark on the register;
(d)
strike out any goods or classes of goods or services from those in respect of
which a trade mark is registered,
and may make any consequential amendment or alteration in
the certificate of registration, and for that purpose, may require the
certificate of registration to be produced to him.
(2) The Registrar may,
on application made in the prescribed manner by a registered user of a trade
mark, and after notice to the registered proprietor, correct any error, or
enter any change, in the name, address or description of the registered user.
59. Alteration of registered
trade marks.—(1) The
registered proprietor of a trade mark may apply in the prescribed manner to the
Registrar for leave to add to or alter the trade mark in any manner not
substantially affecting the identity thereof, and the Registrar may refuse
leave or may grant it on such terms and subject to such limitations as he may
think fit.
(2) The Registrar may
cause an application under this section to be advertised in the prescribed
manner in any case where it appears to him that it is expedient so to do, and
where he does so, if within the prescribed time from the date of the
advertisement any person gives notice to the Registrar in the prescribed manner
of opposition to the application, the Registrar shall, after hearing the
parties if so required, decide the matter.
(3) Where leave is
granted under this section, the trade mark as altered shall be advertised in
the prescribed manner, unless the application has already been advertised under
sub-section (2).
60. Adaptation of entries in
register to amended or 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 in respect of which a trade mark is registered
(whether in one or more classes) immediately before the amendment is to be made
or of antedating the registration of a trade mark in respect of any goods or
services:
Provided that this sub-section,
shall not apply when the Registrar is satisfied that compliance therewith would
involve undue complexity and that the addition or antedating, as the case may
be, would not affect any substantial quantity of goods or services and would
not substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be
brought to the notice of the registered proprietor of the trade mark affected
and advertised in the prescribed manner, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed amendment
contravenes the provisions of sub-section (1).
CHAPTER VIII
COLLECTIVE MARKS
SECTIONS
61.
Special provisions for collective marks.
62.
Collective mark not to be misleading as to character or significance.
63.
Application to be accompanied by regulations governing use of collective marks.
64.
Acceptance of application and regulations by Registrar.
65.
Regulations to be open to inspection.
66.
Amendment of regulations.
67.
Infringement proceedings by registered proprietor of collective mark.
68. Additional grounds for
removal of registration of collective mark.
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 members 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.—A collective mark shall not be registered if it is
likely to deceive or cause confusion on the part of public in particular if it
is likely to be taken to be something other than a collective mark, and in such
case the Registrar may require that a mark in respect of which application is
made for registration comprise some indication that it is a collective mark.
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 matters as may be prescribed.
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 conditions including
amendments of the said regulations, if any, as he may deem fit or refuse to
accept it and if accepted shall notify the regulations.
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.—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.—In a suit for infringement instituted by the
registered proprietor of a collective mark as plaintiff the court shall take
into account any loss suffered or likely to be suffered by authorised
users and may give such directions as it thinks fit as to the extent to which the
plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such authorised users.
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 XI
APPELLATE BOARD
83. Establishment of Appellate Board.
84. Composition of Appellate Board.
85. Qualifications for appointment as Chairman,
Vice-Chairman, or other Members.
86. Term of office of Chairman, Vice-Chairman and
other Members.
87. Vice-Chairman or senior-most Member to act as
Chairman or discharge his functions in certain circumstances.
88. Salaries, allowances and other terms and
conditions of service of Chairman, Vice-Chairman and other Members.
89. Resignation and removal.
90. Staff of Appellate Board.
91. Appeals to Appellate Board.
92. Procedure and powers of Appellate Board.
93. Bar of jurisdiction of courts, etc.
94. Bar to appear before
Appellate Board.
95. Conditions as to making of
interim orders.
96. Power of Chairman to transfer
cases from one Bench to another.
97. Procedure for application for
rectification, etc., before Appellate Board.
98. Appearance of Registrar in
legal proceedings.
99. Costs of Registrar in
proceedings before Appellate Board.
100. Transfer of pending
proceedings to 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 conferred on it by or under
this Act.
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 and authority of the Appellate Board may be
exercised by Benches thereof. (2) Subject to the other provisions of
this Act, a Bench shall consist of one Judicial Member and one Technical Member
and shall sit at such place as the Central Government may, by notification in
the Official Gazette, specify. (3) Notwithstanding anything contained in
sub-section (2), the 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 each Bench. (5) If
any question arises as to whether any matter falls within the purview of the
business allocated to a Bench, the decision of the 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 or points by one or more of the other
Members and such point or points shall be decided according to the opinion of
the majority of the Members who have heard the case, including those who first
heard it. 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 (43 of 1958), or both, and has held a post not lower than the post of
a Joint Registrar for at least five years; or (b) has, for at least ten
years, been an advocate of a proven specialised
experience in trade mark law.
(5) Subject to the
provisions of sub-section (6), the 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.—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 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 his 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
resumes his duty.
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 benefits), 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 on which he enters upon office as the Chairman, Vice-Chairman or other
Member.
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
until a person duly appointed as his successor enters upon his office or until
the expiry of his term of office, whichever is earlier.
(2) The 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 the 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.—(1) The Central Government shall determine the
nature and categories of the officers and other employees required to assist
the Appellate Board in the discharge of its functions and provide the Appellate
Board with such officers and other employees as it may think fit.
(2) The salaries and
allowances and conditions of service of the officers and other employees of the
Appellate Board shall be such as may be prescribed.
(3) The officers and
other employees of the Appellate Board shall discharge their functions under
the general superintendence of the Chairman in the manner as may be prescribed.
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 sought
to be appealed against is communicated to such person preferring the appeal.
(2) No appeal shall be
admitted if it is preferred after the expiry of the period specified under
sub-section (1):
Provided that an appeal may be
admitted after the expiry of the period specified 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.—(1) The
Appellate Board shall not be bound by the procedure laid down in the Code of
Civil Procedure, 1908 (5 of 1908) but shall be guided by principles of natural
justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to
regulate its own procedure including the fixing of places and times of its
hearing.
(2) The Appellate Board
shall have, for the purpose of discharging its functions under this Act, the
same powers as are vested in a civil court under the Code of Civil Procedure,
1908 (5 of 1908), while trying a suit in respect of the following matters,
namely:—
(a) receiving
evidence;
(b) issuing
commissions for examination of witnesses;
(c) requisitioning
any public record; and
(d) any
other matter which may be prescribed.
(3) Any proceeding
before the Appellate Board shall be deemed to be a judicial proceeding within
the meaning of sections 193 and 228, and for the purpose of section 196, of the
Indian Penal Code (45 of 1860), and the Appellate Board shall be deemed to be a
civil court for all the purposes of section 195 and Chapter XXVI of the Code of
Criminal Procedure, 1973 (2 of 1974).
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.—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.—Notwithstanding
anything contained in any other provisions of this Act or in any other law for
the time being in force, no interim order (whether by way of injunction or stay
or any other manner) shall be made on, or in any proceedings relating to, an
appeal unless—
(a) copies of such
appeal and of all documents in support of the plea for such interim order are
furnished to the party against whom such appeal is made or proposed to be made;
and
(b) opportunity
is given to such party to be heard in the matter.
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 Chairman may transfer any case pending
before one Bench, for disposal, to any other Bench.
97. Procedure for
application for rectification, etc., before Appellate Board.—(1) An application for
rectification of the register made to the Appellate Board under section 57
shall be in such form as may be prescribed.
(2) A certified copy of
every order or judgment of the Appellate Board relating to a registered trade
mark under this Act shall be communicated to the Registrar by the Board and the
Registrar shall give effect to the order of the Board and shall, when so
directed, amend the entries in, or rectify, the register in accordance with such
order.
98. Appearance of Registrar
in legal proceedings.—(1) The
Registrar shall have the right to appear and be heard—
(a) in
any legal proceedings before the Appellate Board in which the relief sought
includes alteration or rectification of the register or in which any question
relating to the practice of the Trade Marks Registry is raised;
(b) in
any appeal to the Board from an order of the Registrar on an application for
registration of a trade mark—
(i)
which is not opposed, and the application is either
refused by the Registrar or is accepted by him subject to any amendments,
modifications, conditions or limitations, or
(ii) which
has been opposed and the Registrar considers that his appearance is necessary
in the public interest,
and the Registrar shall appear in any case if so directed
by the Board.
(2) Unless the Appellate
Board otherwise directs, the Registrar may, in lieu of appearing, submit a
statement in writing signed by him, giving such particulars as he thinks proper
of the proceedings before him relating to the matter in issue or of the grounds
of any decision given by him affecting it, or of the practice of the Trade
Marks Registry in like cases, or of other matters relevant to the issues and
within his knowledge as Registrar, and such statement shall be evidence in the
proceeding.
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.—All cases
of appeals against any order or decision of the Registrar and all cases
pertaining to rectification of register, pending before any High Court, shall
be transferred to the Appellate Board from the date as notified by the Central
Government in the Official Gazette and the Appellate Board may proceed with the
matter either de novo or from the stage it was so transferred.
(d) uses a trade mark or mark or trade
description in any manner reasonably likely to lead to the belief that the
goods or services in connection with which it is used are designated or
described by that trade mark or mark or trade description; or
(e) in relation to the
goods or services uses a trade mark or trade description in any sign,
advertisement, invoice, catalogue, business letter, business paper, price list
or other commercial document and goods are delivered or services are rendered
to a person in pursuance of a request or order made by reference to the trade
mark or trade description as so used.
[CHAPTER
X.
SPECIAL
PROVISIONS FOR TEXTILE GOODS.]
79. [Omitted.]
80. [Omitted.]
81. [Omitted.]
82. [Omitted.]
Omitted
by the Trade Marks (Amendment)
Act, 2010 (40 of 2010), s. 7 (w.e.f.
8-7-2013).
[79.
Textile goods.] Omitted by s. 7, ibid. (w.e.f.
8-7-2013).
[80.
Restriction on registration of textile goods.] Omitted by s. 7,
ibid. (w.e.f. 8-7-2013).
[81. Stamping of piece
goods, cotton yarn and thread.] Omitted by s. 7,
ibid. (w.e.f. 8-7-2013).
[82. Determination of character of
textile goods by sampling.] Omitted by
s. 7, ibid. (w.e.f. 8-7-2013).
CHAPTER IX
CERTIFICATION TRADE MARKS
69.
Certain provisions of this Act not applicable to certification trade marks.
70.
Registration of certification trade marks.
71.
Applications for registration of certification trade marks.
72.
Consideration of application for registration by Registrar.
73.
Opposition to registration of certification trade marks.
74.
Filing of regulations governing use of a certification trade mark.
75.
Infringement of certification trade marks.
76.
Acts not constituting infringement of certification trade
marks.
77.
Cancellation or varying of registration of certification trade
marks.
78. Rights conferred by
registration of certification trade marks.
69. Certain provisions of
this Act not applicable to certification trade marks.—The following provisions of this Act shall not apply
to certification trade marks, that is to say,—
(a)
clauses (a)
and (c) of sub-section (1) of section 9;
(b)
Sections 18,
20 and 21, except as expressly applied by this Chapter;
(c)
Sections 28,
29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section
56;
(d)
Chapter XII,
except section 107.
70. Registration of
certification trade marks.—A mark shall not be registrable
as a certification trade mark in the name of a person who carries on a trade in
goods of the kind certified or a trade of the provision of services of the kind
certified.
71. Applications for
registration of certification trade marks.—(1) An application for the registration of a
mark as a certification trade mark shall be made to the Registrar in the
prescribed manner by the person proposed to be registered as the proprietor
thereof, and accompanied by a draft for 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 relevant to
applications under this section, including the desirability of securing that a
certification trade mark shall comprise some indication that it is a
certification trade mark.
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 he thinks requisite having regard to any of the said matters.
(2) Except in the case
of acceptance and approval without modification and unconditionally, the
Registrar shall not decide any matter under sub-section (1) without
giving the applicant an opportunity of being heard.
73. Opposition to
registration of certification trade marks.—When an application has been accepted, the Registrar
shall, as soon as may be thereafter, cause the application as accepted to be
advertised in the prescribed manner, and the provisions of section 21 shall
apply in relation to the registration of the mark as they apply in relation to
an application under section 18.
74. Filing of regulations
governing use of a certification trade mark.—(1) There shall be filed at the Trade Marks
Registry in respect of every mark registered as a certification trade mark
regulations for governing the use thereof, which shall include provisions as to
the cases in which the proprietor is to certify goods or services and to authorise the use of the certification trade mark, and may
contain any other provisions which the Registrar may by general or special
order, require or permit to be inserted therein (including provisions
conferring a right of appeal to the Registrar against any refusal of the
proprietor to certify goods or to authorise the use
of the certification trade mark in accordance with the regulations); and
regulations so filed shall be open to inspection in like manner as the register
as provided in section 148.
(2) The regulations so
filed may, on the application of the registered proprietor, be altered by the
Registrar.
(3) The Registrar may
cause such application to be advertised in any case where it appears to him
expedient so to do, and where he does so, if within the time specified in the
advertisement any person gives notice of opposition to the application, the
Registrar shall not decide the matter without giving the parties an opportunity
of being heard.
75. Infringement of
certification trade marks.—The right conferred by section 78 is infringed by any
person who, not being the registered proprietor of the certification trade mark
or a person authorised by him in that behalf under
the regulations filed under section 74, using it in accordance therewith, uses
in the course of trade, a mark, which is identical with, or deceptively similar
to the certification trade mark in relation to any goods or services in respect
of which it is registered, and in such manner as to render the use of the mark
likely to be taken as being a use as a trade mark.
76. Acts not constituting
infringement of certification trade marks.—(1) Notwithstanding
anything contained in this Act, the following acts do not constitute an
infringement of the right to the use of a registered certification trade mark—
(a)
where a
certification trade mark is registered subject to any conditions or limitations
entered on the register, the use of any such mark in any mode, in relation to
goods to be sold or otherwise traded in any place, or in relation to goods to
be exported to any market or in relation to services for use or available for
acceptance in any place, country or territory or in any other circumstances, to
which having regard to any such limitations, the registration does not extend;
(b)
the use of a
certification trade mark in relation to goods or services certified by the
proprietor of the mark if, as to those goods or services or a bulk of which
they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied
the mark and has not subsequently removed or obliterated it, or the proprietor
has at any time expressly or impliedly consented to the use of the mark;
(c)
the use of a
certification trade mark in relation to goods or services adapted to form part
of, or to be accessory to, other goods in relation to which the mark has been
used without infringement of the right given as aforesaid or might for the time
being be so used, if the use of the mark is reasonably necessary in order to
indicate that the goods or services 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 the goods or services are certified by the proprietor.
(2) Clause (b) of
sub-section (1) shall not apply to the case of use consisting of the
application of a certification trade mark to goods or services, notwithstanding
that they are such goods or services as are mentioned in that clause if such
application is contrary to the regulations referred to in that clause.
(3) Where a
certification trade mark is one of two or more trade marks
registered under this Act, which are identical or nearly resemble each other,
the use of any of those trade marks in exercise of the right to the use of that
trade mark given by registration, shall not be deemed to be an infringement of
the right so given to the use of any other of those trade
marks.
77. Cancellation or varying
of registration of certification trade marks.—The Registrar may, on the application in the prescribed
manner of any person aggrieved and after giving the proprietor an opportunity
of opposing the application, make such order as he thinks fit for expunging or
varying any entry in the register to a certification trade mark, or for varying
the regulations, on any of the following grounds, namely:—
(a)
that the
proprietor is no longer competent, in the case of any of the goods or services
in respect of which the mark is registered, to certify those goods or services;
(b)
that the
proprietor has failed to observe any provisions of the regulations to be
observed on his part;
(c)
that it is no
longer to the public advantage that the mark should remain registered;
(d)
that it is requisite for
the public advantage that if the mark remains registered, the regulations
should be varied.
78. Rights conferred by
registration of certification trade marks.—(1) Subject to the provisions of sections 34,
35 and 76, the registration of a person as a proprietor of certification trade
mark in respect of any goods or services shall, if valid, give to that person
the exclusive right to the use of the mark in relation to those goods or
services.
(2) The exclusive right
to the use of a certification trade mark given under sub-section (1)
shall be subject to any conditions and limitations to which the registration is
subject.
CHAPTER XII
OFFENCES, PENALTIES AND PROCEDURE
101. Meaning of applying trade marks and
trade descriptions.
102. Falsifying and falsely applying trade marks.
103. Penalty for applying false trade marks,
trade descriptions, etc.
104. Penalty for selling goods or providing services to which false
trade mark or false trade
description is applied.
105. Enhanced penalty on second or subsequent conviction.
106. Penalty for removing piece goods, etc., contrary to section 81.
107. Penalty for falsely representing a trade mark as registered.
108. Penalty for improperly describing a place of business as connected
with the Trade Marks Office.
109. Penalty for falsification of entries in the register.
110. No offence in certain cases.
111. Forfeiture of goods.
112. Exemption of certain persons employed in ordinary course of
business.
113. Procedure where invalidity of registration is pleaded
by the accused.
114. Offences by companies.
115. Cognizance of certain offences and the powers of police officer
for search and seizure.
116. Evidence of origin of goods imported by sea.
117. Costs of defence or prosecution.
118. Limitation of prosecution.
119. Information as to commission of offence.
120. Punishment of abetment in India of acts done out of India.
121. Instructions of Central Government as to permissible variation to
be observed by criminal
courts.
101. Meaning of applying trade marks and trade descriptions.—(1) A person shall be deemed to apply a trade
mark or mark or trade description to goods or services who—
(a)
applies it to
the goods themselves or uses it in relation to services; or
(b)
applies it to
any package in or with which the goods are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture; or
(c) places, encloses or annexes
any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or
manufacture, in or with any package or other thing to which a trade mark or
mark or trade description has been applied; or
(d)
uses a trade mark or mark or trade description in any manner reasonably likely
to lead to the belief that the goods or services in connection with which it is
used are designated or described by that trade mark or mark or trade
description; or
(e)
in relation to the goods or services uses a trade mark or trade description in
any sign advertisement, invoice, catalogue, business letter, business paper,
price list or other commercial document and goods are delivered or services are
rendered to a person in pursuance of a request or order made by reference to
the trade mark or trade description as so used.
(2) A trade mark or mark
or trade description shall be deemed to be applied to goods whether it is woven
in, impressed on, or otherwise worked into, or annexed or affixed to, the goods
or to any package or other thing.
102. Falsifying and falsely
applying trade marks.—(1) A person shall be deemed to falsify a trade
mark who, either,—
(a)
without the
assent of the proprietor of the trade mark makes that trade mark or a
deceptively similar mark; or
(b)
falsifies any genuine
trade mark, whether by alteration, addition, effacement or otherwise.
(2) A person shall be
deemed to falsely apply to goods or services a trade mark who, without the
assent of the proprietor of the trade mark,—
(a)
applies such
trade mark or a deceptively similar mark to goods or services or any package
containing goods;
(b)
uses any package bearing a
mark which is identical with or deceptively similar to the trade mark of such
proprietor, for the purpose of packing, filling or wrapping therein any goods
other than the genuine goods of the proprietor of the trade mark.
(3) Any trade mark
falsified as mentioned in sub-section (1) or falsely applied as
mentioned in sub-section (2), is in this Act
referred to as a false trade mark.
(4) In any prosecution
for falsifying a trade mark or falsely applying a trade mark to goods or
services, the burden of proving the assent of the proprietor shall lie on the
accused.
103. Penalty for applying
false trade marks, trade descriptions, etc.—Any person who—
(a) falsifies
any trade mark; or
(b) falsely
applies to goods or services any trade mark; or
(c)
makes,
disposes of, or has in his possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a
trade mark; or
(d)
applies any
false trade description to goods or services; or
(e)
applies to
any goods to which an indication of the country or place in which they were
made or produced or the name and address of the manufacturer or person for whom
the goods are manufactured is required to be applied under section 139, a false
indication of such country, place, name or address; or
(f)
tampers with,
alters or effaces an indication of origin which has been applied to any goods
to which it is required to be applied under section 139; or
(g)
causes any of
the things above mentioned in this section to be done
shall, unless he proves that he acted, without intent to
defraud, be punishable with imprisonment for a term which shall not be less
than six months but which may extend to three years and with fine which shall
not be less than fifty thousand rupees but which may extend to two lakh rupees:
Provided that the court may,
for adequate and special reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than six months or a fine of less
than fifty thousand rupees.
104. Penalty for selling
goods or providing services to which false trade mark or false trade
description is applied.—Any person who
sells, lets for hire or exposes for sale, or hires or has in his possession for
sale, goods or things, or provides or hires services, to which any false trade
mark or false trade description is applied or which, being required under
section 139 to have applied to them an indication of the country or place in
which they were made or produced or the name and address of the manufacturer, or
person for whom the goods are manufactured or services provided, as the case
may be, are without the indications so required, shall, unless he proves,—
(a)
that, having
taken all reasonable precautions against committing an offence against this
section, he had at the time of commission of the alleged offence no reason to
suspect the genuineness
of the
trade mark or trade description or that any offence had been committed in
respect of the goods or services; or
(b)
that, on
demand by or on behalf of the prosecutor, he gave all the information in his
power with respect to the person from whom he obtained such goods or things or
services; or
(c)
that
otherwise he had acted innocently,
be punishable with imprisonment for a term which shall
not be less than six months but which may extend to three years and with fine
which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:
Provided that the court may,
for adequate and special reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than six months or a fine of less
than fifty thousand rupees.
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, with imprisonment for a term which shall not be less than
one year but which may extend to three years and with fine which shall not be
less than one lakh rupees but which may extend to two
lakh rupees:
Provided that the court may, for
adequate and special reason to be mentioned in the judgement,
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.—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 packing
thereof shall be forfeited to Government and such person shall be punishable
with fine which may extend to one thousand rupees.
107. Penalty for falsely
representing a trade mark as registered.—(1) No person shall make any representation—
(a)
with respect
to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark; or
(b)
with respect
to a part of a registered trade mark, not being a part separately registered as
a trade mark, to the effect that it is separately registered as a trade mark;
or
(c)
to the effect
that a registered trade mark is registered in respect of any goods or services
in respect of which it is not in fact registered; or
(d)
to the effect that
registration of a trade mark gives an exclusive right to the use thereof in any
circumstances in which, having regard to limitation entered on the register,
the registration does not in fact give that right.
(2) If any person
contravenes any of the provisions of sub-section (1), he shall be
punishable with imprisonment for a term which may extend to three years, or
with fine, or with both.
(3) For the purposes of
this section, the use in India in relation to a trade mark of the word “registered” or of any other expression,
symbol or sign referring whether expressly or impliedly to registration, shall
be deemed to import a reference to registration in the register, except—
(a)
where that
word or other expression, symbol or sign is used in direct association with
other words delineated in characters at least as large as those in which that
word or other expression, symbol or sign is delineated and indicating that the
reference is to registration as a trade mark under
the
law of a country outside India being a country under the law of which the
registration referred to is in fact in force; or
(b)
where that
other expression, symbol or sign is of itself such as to indicate that the
reference is to such registration as is mentioned in clause (a); or
(c)
where that
word is used in relation to a mark registered as a trade mark under the law of
a country outside India and in relation solely to goods to be exported to that
country or in relation to services for use in that country.
108. Penalty for improperly
describing a place of business as connected with the Trade Marks Office.—If any person uses on his place of business, or on any
document issued by him, or otherwise, words which would reasonably lead to the
belief that his place of business is, or is officially connected with, the
Trade Marks Office, he shall be punishable with imprisonment for a term which
may extend to two years, or with fine, or with both.
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.—The provisions
of sections 102, 103, 104 and 105 shall, in relation to a registered trade mark
or proprietor of such mark, be subject to the rights created or recognised by this Act and no act or omission shall be
deemed to be an offence under the aforesaid sections if,—
(a)
the alleged
offence relates to a registered trade mark and the act or omission is permitted
under this Act; and
(b)
the alleged offence
relates to a registered or an unregistered trade mark and the act or omission
is permitted under any other law for the time being in force.
111. Forfeiture of goods.—(1) Where a person is convicted of an offence
under section 103 or section 104 or section 105 or is acquitted of an offence
under section 103 or section 104 on proof that he acted without intent to
defraud, or under section 104 on proof of the matters specified in clause (a),
clause (b) or clause (c) of that section, the court convicting or
acquitting him may direct the forfeiture to Government of all goods and things
by means of, or in relation to, which the offence has been committed, or but
for such proof as aforesaid would have been committed.
(2) When a forfeiture is directed on a conviction and an appeal lies
against the conviction, an appeal shall lie against the forfeiture also.
(3) When a forfeiture is directed on acquittal and the goods or
things to which the direction relates are of value exceeding fifty rupees, an
appeal against the forfeiture may be preferred, within thirty days from the
date of the direction, to the court to which in appealable cases appeals lie
from sentences of the court which directed the forfeiture.
(4) When a forfeiture is directed on a conviction, the court, before
whom the person is convicted, may order any forfeited articles to be destroyed
or otherwise disposed of as the court thinks fit.
112. Exemption of certain
persons employed in ordinary course of business.—Where a person accused of an offence under section 103
proves—
(a)that in the ordinary course of his business he is
employed on behalf of other persons to apply trade marks
or trade descriptions, or as the case may be, to make dies, blocks, machines,
plates, or other instruments for making, or being used in making, trade marks; and
(b)that
in the case which is the subject of the charge he was so employed, and was not
interested in the goods or other thing by way of profit or commission dependent
on the sale of such goods or providing of services, as the case may be; and
( c) having taken all reasonable precautions
against committing the offence charged, he had, at the time of the commission
of the alleged offence, no reason to suspect the genuineness of the trade mark
or trade description; and
( d)
that, on demand made by or on behalf of the prosecutor, he gave all the
information in his power with respect to the persons on whose behalf the trade
mark or trade description was applied,
he shall be acquitted.
113. Procedure where
invalidity of registration is pleaded by the accused.—(1) Where the offence charged under section 103
or section 104 or section 105 is in relation to a registered trade mark and the
accused pleads that the registration of the trade mark is invalid, the
following procedure shall be followed:—
(a)
If the court
is satisfied that such defence is prima facie tenable,
it shall not proceed with the charge but shall adjourn the proceeding for three
months from the date on which the plea of the accused is recorded to enable the
accused to file an application before the 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 of such application for rectification.
(c)
If within a
period of three months or within such extended time as may be allowed by the
court the accused fails to apply to the 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 trade mark
in question on the ground of invalidity of the registration thereof has already
been properly made to and is pending before the tribunal, the court shall stay
the further proceedings in the prosecution pending the disposal of the
application aforesaid and shall determine the charge against the accused in
conformity with the result of the application for rectification in so far as
the complainant relies upon the registration of his mark.
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 offence shall be deemed to be guilty of the offence and shall
be liable to be proceeded against and punished accordingly:
Provided that nothing contained
in this sub-section shall render any such person liable to any punishment if he
proves that the offence was committed without his knowledge or that he
exercised all due diligence to prevent the commission of such offence.
(2) Notwithstanding
anything contained in sub-section (1), where an offence under this Act
has been committed by a company and it is proved that the offence has been
committed with the consent or connivance of, or that the commission of the
offence is attributable to any neglect on the part of, any director, manager,
secretary or other officer of the company, such director, manager, secretary or
other officer shall also be deemed to be guilty of that offence and shall be
liable to be proceeded against and punished accordingly.
Explanation.—For the purposes of this section—
(a)
“company”
means any body corporate and includes a firm or other
association of individuals; and
(b)
“director”, in relation to a firm, means a partner in the
firm.
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 officer authorised
by him in writing:
Provided that in relation to
clause (c) of sub-section (1) of section 107, a court shall take
cognizance of an offence on the basis of a certificate issued by the Registrar
to the effect that a registered trade mark has been represented as registered
in respect of any goods or services in respect of which it is not in fact
registered.
(2) No court inferior to
that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall
try an offence under this Act.
(3) The offences under
section 103 or section 104 or section 105 shall be cognizable.
(4) Any police officer
not below the rank of deputy superintendent of police or equivalent, may, if he
is satisfied that any of the offences referred to in sub-section (3) has
been, is being, or is likely to be, committed, search and seize without warrant
the goods, die, block, machine, plate, other instruments or things involved in
committing the offence, wherever found, and all the articles so seized shall,
as soon as practicable, be produced before a Judicial Magistrate of the first
class or Metropolitan Magistrate, as the case may be:
Provided that the police
officer, before making any search and seizure, shall obtain the opinion of the
Registrar on facts involved in the offence relating to trade mark and shall
abide by the opinion so obtained.
(5) Any person having an
interest in any article seized under sub-section (4), may, within
fifteen days of such seizure, make an application to the Judicial Magistrate of
the first class or Metropolitan Magistrate, as the case may be, for such
article being restored to him and the Magistrate, after hearing the applicant
and the prosecution, shall make such order on the application as he may deem
fit.
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 1962) relating to confiscation of goods
under clause (d) of section 111 and notified by the Central Government
under clause (n) of sub-section (2) of section 11 of the said Act
for the protection of trade marks relating to import
of goods, be prima facie evidence of the place or country in which the
goods were made or produced.
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
circumstances 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.—No prosecution
for an offence under this Act or under clause (b) of section 112 of the
Customs Act,1962 (52 of 1962), relating to confiscation of goods under clause (d)
of section 111 and notified by the Central Government under clause (n)
of sub-section (2) of section 11 of the said Act for the protection of trade marks, relating to import of goods shall be commenced
after expiration of three years next after the commission of the offence
charged, or two years after the discovery thereof by the prosecutor, whichever
expiration first-happens.
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 of any offence against this Act.
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 any 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 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, measure,
gauge or weight which are to be recognised by
criminal courts as permissible in the case of any goods.
CHAPTER XIII
MISCELLANEOUS
122. Protection of action taken in good faith.
123. Certain persons to be public servants.
124. Stay of proceedings where the validity of
registration of the trade mark is questioned, etc.
125. Application for rectification of register to be
made to Appellate Board in certain cases.
126. Implied warranty on sale of marked goods.
127. Powers of Registrar.
128. Exercise of discretionary power by Registrar.
129. Evidence before Registrar.
130. Death of party to a proceeding.
131. Extension of time.
132. Abandonment.
133. Preliminary advice by the Registrar as to
distinctiveness.
134. Suit for infringement, etc., to be instituted
before District Court.
135. Relief in suits for infringement or for passing
off.
136.
Registered user to be impleaded in certain
proceedings.
SECTIONS
137. Evidence of entries in register, etc., and things
done by the Registrar.
138. Registrar and other officers not compellable to
produce register, etc.
139. Power to require goods to show indication of
origin.
140. Power to require information of imported goods
bearing false trade marks.
141. Certificate of validity.
142. Groundless threats of legal proceedings.
143. Address for service.
144. Trade usages, etc., to be taken into
consideration.
145. Agents.
146. Marks registered by an agent or representative
without authority.
147. Indexes.
148. Documents open to public inspection.
149. Reports of Registrar to be placed before Parliament.
150. Fees and surcharge.
151. Savings in respect of certain matters in Chapter
XII.
152. Declaration as to ownership of trade mark not registrable under the Registration Act, 1908.
153. Government to be bound.
154. Special provisions relating to applications for
registration from citizens of convention countries.
155. Provision as to reciprocity.
156. Power of Central Government to remove
difficulties.
157. Power to make rules.
158. Amendments.
159.
Repeal and savings.
122.
Protection of action taken in good faith.—No suit or other legal proceedings shall lie against
any person in respect of anything which is in good faith done or intended to be
done in pursuance of this Act.
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 (45 of 1860).
124.
Stay of proceedings where the validity of registration of the trade mark is questioned,
etc.—(1) Where in any suit for infringement of a trade mark—
(a)
the defendant pleads that registration of the
plaintiff’s trade mark is invalid; or
(b)
the defendant raises a defence
under clause (e) of sub-section (2) of section 30 and the
plaintiff pleads the invalidity of registration of the defendant’s trade mark,
the court
trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for
rectification of the register in relation to the plaintiff’s or defendant’s
trade mark are pending before the Registrar or the Appellate Board, stay the
suit pending the final disposal of such proceedings;
(ii)
if no such proceedings are pending and the court is satisfied that the plea
regarding the invalidity of the registration of the plaintiff’s or defendant’s
trade mark is prima facie tenable, raise an issue regarding the same and
adjourn the case for a period of three months from the date of the framing of
the issue in order to enable the party concerned to apply to the 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 trial of the suit shall stand stayed until the
final disposal of the rectification proceedings.
(3)
If no such application as aforesaid has been made within the time so specified
or within such extended time as the court may allow, the issue as to the
validity of the registration of the trade mark concerned shall be deemed to
have been abandoned and 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 the validity of the registration of the
trade mark.
(5)
The stay of a suit for the infringement of a trade mark under this section
shall not preclude the court from making any interlocutory order (including any
order granting an injunction, directing account to be kept, appointing a
receiver or attaching any property), during the period of the stay of the suit.
125.
Application for rectification of register to be made to Appellate Board in
certain cases.—(1)
Where in a suit for infringement of a registered trade mark the validity of the
registration of the plaintiff’s trade mark is questioned by the defendant or
where in any such suit the defendant raises a defence
under clause (e) of sub-section (2) of section 30 and the
plaintiff questions the validity of the registration of the defendant’s trade
mark, the issue as to the validity of the registration of the trade mark
concerned shall be determined only on an application for the rectification of
the register and, notwithstanding anything contained in section 47 or section
57, such application shall be made to the Appellate Board and not the
Registrar.
(2)
Subject to the provisions of sub-section (1), where an application for
rectification of the register is made to the Registrar under section 47 or
section 57, the Registrar may, if he thinks fit, refer the application at any
stage of the proceedings to the Appellate Board.
126.
Implied warranty on sale of marked goods.—Where a mark or a trade mark or trade description has
been applied to the goods on sale or in the contract for sale of any goods or
in relation to any service, the seller shall be deemed to warrant that the mark
is a genuine mark and not falsely applied, or that the trade description is not
a false trade description within the meaning of this Act unless the contrary is
expressed in writing signed by or on behalf of the seller and delivered at the
time of the sale of goods or providing of services on contract to and accepted
by the buyer.
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 examination of witnesses;
(b)
the Registrar may, subject to any rules made in this
behalf under section 157, make such orders as to costs as he considers
reasonable, and any such order shall be executable as a decree of a civil
court:
Provided
that the Registrar shall have no power to award costs to or against any party
on an appeal to him against a refusal of the proprietor of a certification
trade mark to certify goods or provision of services or to authorise
the use of the mark;
(c)
the Registrar may, on an application made in the prescribed
manner, review his own decision.
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 to him by
this Act or the rules made thereunder adversely to a
person applying for the exercise of that power without (if so required by that
person within the prescribed time) giving to the person an opportunity of being
heard.
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.—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 the transmission of the interest
of the deceased person, substitute in the proceeding his successor in interest
in his place, or, if the Registrar is of opinion that the interest of the
deceased person is sufficiently represented by the surviving parties, permit
the proceeding to continue without the substitution of his successor in
interest.
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 provided in
this Act), whether the time so specified has expired or not, he may, subject to
such conditions as he may think fit to impose, extend the time and inform the
parties accordingly.
(2)
Nothing in sub-section (1) shall be deemed to require the Registrar to
hear the parties before disposing of an application for extension of time, and
no appeal shall lie from any order of the Registrar under this section.
132.
Abandonment.—Where, in the
opinion of the Registrar, an applicant is in default in the prosecution of an
application filed under this Act or any Act relating to trade marks in force
prior to the commencement of this Act, the Registrar may, by notice require the
applicant to remedy the default within a time specified and after giving him,
if so, desired, an opportunity of being heard, treat the application as
abandoned, unless the default is remedied within the time specified in the
notice.
133.
Preliminary advice by the Registrar as to distinctiveness.—(1) The Registrar may, on application made to
him in the prescribed manner by any person who proposes to apply for the
registration of a trade mark, give advice as to whether the trade mark appears
to him prima facie to be distinctive.
(2)
If, on an application for the registration of a trade mark as to which the
Registrar has given advice as aforesaid in the affirmative made within three
months after the advice was given, the Registrar, after further investigation
or consideration, gives notice, to the applicant of objection on the ground
that the trade mark is not distinctive, the applicant shall be entitled, on
giving notice of withdrawal of the application within the prescribed period, to
have repaid to him any fee paid on the filing of the application.
134.
Suit for infringement, etc., to be instituted before District Court.—(1) No suit—
(a)
for the infringement of a registered trade mark; or
(b)
relating to any right in a registered trade mark; or
(c)
for passing off arising out of the use by the defendant of any trade mark which
is identical with or deceptively similar to the plaintiff’s trade mark, whether
registered or unregistered, shall be instituted in any court inferior to a
District Court having jurisdiction to try the suit.
(2)
For the purpose of clauses (a) and (b) of sub-section (1),
a ―District Court having jurisdiction‖ shall, notwithstanding
anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any
other law for the time being in force, include a District Court within the
local limits of whose jurisdiction, at the time of the institution of the suit
or other proceeding, the person instituting the suit or proceeding, or, where
there are more than one such persons any of them, actually and voluntarily
resides or carries on business or personally works for gain.
Explanation.—For the purposes of sub-section (2),
―person‖ includes the registered proprietor and the registered
user.
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 at the
option of the plaintiff, either damages or an account of profits, together with
or without any order for the delivery-up of the infringing labels and marks for
destruction or erasure.
(2)
The order of injunction under sub-section (1) may include an ex parte
injunction or any interlocutory order for any of the following matters,
namely:—
(a)
for discovery of documents;
(b)
preserving of infringing goods, documents or other
evidence which are related to the subject-matter of the suit;
(c)
restraining the defendant from disposing of or dealing
with his assets in a manner which may adversely affect plaintiff’s ability to
recover damages, costs or other pecuniary remedies which may be finally awarded
to the plaintiff.
(3)
Notwithstanding anything contained in sub-section (1), the court shall not
grant relief by way of damages (other than nominal damages) or on account of
profits in any case—
(a)
where in a suit for infringement of a trade mark, the infringement complained
of is in relation to a certification trade mark or collective mark; or
(b)
where in a suit for infringement the defendant
satisfies the court—
(i) that at the time he commenced to use the trade
mark complained of in the suit, he was unaware and had no reasonable ground for
believing that the trade mark of the plaintiff was on the register or that the
plaintiff was a registered user using by way of permitted use; and
(ii)
that when he became aware of the existence and nature of the plaintiff’s right
in the trade mark, he forthwith ceased to use the trade mark in relation to
goods or services in respect of which it was registered; or
(c)
where in a suit for passing off, the defendant
satisfies the court—
(i) that at the time he commenced to use the trade
mark complained of in the suit, he was unaware and had no reasonable ground for
believing that the trade mark for the plaintiff was in use; and
(ii)
that when he became aware of the existence and nature
of the plaintiff’s trade mark he forthwith ceased to use the trade mark
complained of.
136.
Registered user to be impleaded in certain
proceedings.—(1) In
every proceeding under chapter VII or under section 91, every registered user
of a trade mark using by way of permitted use, who is not himself an applicant
in respect of any proceeding under that Chapter or section, shall be made a
party to the proceeding.
(2)
Notwithstanding anything contained in any other law, a registered user so made
a party to the proceeding shall not be liable for any costs unless he enters an
appearance and takes part in the proceeding.
137.
Evidence of entries in register, etc., and things done by the Registrar.—(1) A copy of any entry in the register or of
any document referred to in sub-section (1) of section 148 purporting to
be certified by the Registrar and sealed with the seal of the Trade Marks
Registry shall be admitted in evidence in all courts and in all proceedings
without further proof or production of the original.
(2)
A certificate purporting to be under the hand of the Registrar as to any entry,
matter or thing that he is authorised by this Act or
the rules to make or do shall be prima facie evidence of the entry
having been made, and of the contents thereof, or of the matter or things
having been done or not done.
138.
Registrar and other officers not compellable to produce register, etc.—The Registrar or any officer of the Trade Marks
Registry shall not, in any legal proceedings to which he is not a party, be
compellable to produce the register or any other document in his custody, the
contents of which can be proved by the production of a certified copy issued
under this Act or to appear as a witness to prove the matters therein recorded
unless by order of the court made for special cause.
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 imported
into India, or, which are made or produced within the limits of India, shall,
from such date as may be appointed by the notification not being less than
three months from its issue, have applied to them an indication of the country
or place in which they were made or produced, or of the name and address of the
manufacturer or the person for whom the goods were manufactured.
(2)
The notification may specify the manner in which such indication shall be
applied that is to say, whether to goods themselves or in any other manner, and
the times or occasions on which the presence of the indication shall be
necessary, that is to say, whether on importation only, or also at the time of
sale, whether by wholesale or retail or both.
(3)
No notification under this section shall be issued, unless application is made
for its issue by persons or associations substantially representing the interests
of dealers in, or manufacturers, producers, or users of, the goods concerned,
or unless the Central Government is otherwise convinced that it is necessary in
the public interest to issue the notification, with or without such inquiry, as
the Central Government may consider necessary.
(4)
The provisions of section 23 of the General Clauses Act, 1897 (10 of 1897)
shall apply to the issue of a notification under this section as they apply to
the making of a rule or bye-law the making of which is subject to the condition
of previous publication.
(5)
A notification under this section shall not apply to goods made or produced
beyond the limits of India and imported into India, if in respect of those
goods, the Commissioner of Customs is satisfied at the time of importation that
they are intended for exportation whether after transshipment in or transit
through India or otherwise.
140.
Power to require information of imported goods bearing false trade marks.—(1) The
proprietor or a licensee of a registered trade mark may give notice in writing
to the Collector of Customs to prohibit the importation of any goods if the
import of the said goods constitute infringement under clause (c) of
sub-section (6) of section 29.
(2)
Where goods, which are prohibited to be imported into India by notification of
the Central Government under clause (n) of sub-section (2) of
section 11 of the Customs Act, 1962 (52 of 1962), for the protection of trade marks, and are liable to confiscation on importation
under that Act, are imported into India, the Commissioner of Customs if, upon
representation made to him, he has reason to believe that the trade mark
complained of is used as a false trade mark, may require the importer of the
goods, or his agent, to produce any documents in his possession relating to the
goods and to furnish information as to the name and address of the person by
whom the goods were consigned to India and the name and address of the person to
whom the goods were sent in India.
(3)
The importer or his agent shall, within fourteen days, comply with the
requirement as aforesaid, and if he fails to do so, he shall be punishable with
fine which may extend to five hundred rupees.
(4)
Any information obtained from the importer of the goods or his agent under this
section may be communicated by the Commissioner of Customs to the registered
proprietor or registered user of the trade mark which is alleged to have been
used as a false trade mark.
141.
Certificate of validity.—If in any legal
proceeding for rectification of the register before the Appellate Board a
decision is on contest given in favour of the
registered proprietor of the trade mark on the issue as to the validity of the
registration of the trade mark, the Appellate Board may grant a certificate to
that effect, and if such a certificate is granted, then, in any subsequent
legal proceeding in which the said validity comes into question the said
proprietor on obtaining a final order or judgment in his favour
affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason
directs otherwise, be entitled to his full cost charges and expenses as between
legal practitioner and client.
142.
Groundless threats of legal proceedings.—(1) Where a person, by means of circulars,
advertisements or otherwise, threatens a person with an action or proceeding
for infringement of a trade mark which is registered, or alleged by the
first-mentioned person to be registered, or with some other like proceeding, a
person aggrieved may, whether the person making the threats is or is not the
registered proprietor or the registered user of the trade mark, bring a suit
against the first-mentioned person and may obtain a declaration to the effect
that the threats are unjustifiable, and an injunction against the continuance
of the threats and may recover such damages (if any) as he has sustained,
unless the first-mentioned person satisfies the court that the trade mark is
registered and that the acts in respect of which the proceedings were
threatened, constitute, or, if done, would constitute, an infringement of the
trade mark.
(2)
The last preceding sub-section does not apply if the registered proprietor of
the trade mark, or a registered user acting in pursuance of sub-section (1)
of section 52 with due diligence commences and prosecutes an action against the
person threatened for infringement of the trade mark.
(3)
Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in
respect of an act done by him in his professional capacity on behalf of a
client.
(4)
A suit under sub-section (1) shall not be instituted in any court
inferior to a District Court.
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 documents in relation to the
application or notice of opposition may be served by leaving them at or sending
them by post to the address for service of the applicant or opponent, as the
case may be.
144.
Trade usages, etc., to be taken into consideration.—In any proceeding relating to a trade mark, the tribunal
shall admit evidence of the usages of the trade concerned and of any relevant
trade mark or trade name or get up legitimately used by other persons.
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 person
duly authorised in the prescribed manner, who is—
(a)
a legal practitioner, or
(b)
a person registered in the prescribed manner as a
trade marks agent, or
(c)
a person in the sole and regular employment of the
principal.
146.
Marks registered by an agent or representative without authority.—If an agent or a representative of the proprietor of a
registered trade mark, without authority uses or attempts to register or
registers the mark in his own name, the proprietor shall be entitled to oppose
the registration applied for or secure its cancellation or rectification of the
register so as to bring him as the registered proprietor of the said mark by
assignment in his favour:
Provided
that such action shall be taken within three years of the registered proprietor
of the trade mark becoming aware of the conduct of the agent or representative.
147.
Indexes.—There shall be
kept under the direction and supervision of the Registrar—
(a)
an index of registered trade marks;
(b)
an index of trade marks in respect of which
applications for registration are pending;
(c)
an index of the names of the proprietors of registered
trade marks; and
(d)
an index of the names of registered users.
148.
Documents open to public inspection.—(1) Save
as otherwise provided in sub-section (4) of section 49,—
(a)
the register and any document upon which any entry in
the register is based;
(b)
every notice of opposition to the registration of a
trade mark application for rectification before the Registrar,
counter-statement thereto, and any affidavit or document filed by the parties
in any proceedings before the Registrar;
(c)
all regulations deposited under section 63 or section
74, and all applications under section 66 or section 77 for varying such
regulations;
(d)
the indexes mentioned in section 147; and
(e)
such other documents as the Central Government may, by
notification in the Official Gazette, specify,
shall,
subject to such conditions as may be prescribed, be open to public inspection
at the Trade Marks Registry:
Provided
that when such register is maintained wholly or partly on computer, the
inspection of such register under this section shall be made by inspecting the
computer printout 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.—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.—(1)
There shall be paid in respect of 1[applications, international
applications] and registration and other matters under this Act such fees and
surcharge as may be prescribed by the Central Government.
(2)
Where a fee is payable in respect of the doing of an act by the Registrar, the
Registrar shall not do that act until the fee has been paid.
(3)
Where a fee is payable in respect of the filing of a document at the Trade
Marks Registry, the document shall be deemed not to have been filed at the
Registry until the fee has been paid.
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 an offence under that Chapter or against clause (h) of
section 112 of the Customs Act, 1962 (52 of 1962) relating to confiscation of
goods under clause (d) of section 111 of that Act and notified by the
Central Government under clause (n) of sub-section (2) of section
11 thereof for the protection of trade marks relating
to import of goods; or
(c)
be construed so as to render liable to any prosecution or punishment any
servant of a master resident in India who in good faith acts in obedience to
the instructions of such master, and, on demand made by or on behalf of the
prosecutor, has given full information as to his master and as to the
instructions which he has received from his master.
152.
Declaration as to ownership of trade mark not registrable
under the Registration Act, 1908.—Notwithstanding
anything contained in the Registration Act, 1908 (16 of 1908), no document
declaring or purporting to declare the ownership or title of a person to a
trade mark other than a registered trade mark shall be registered under that
Act.
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.—(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 union of countries or Inter-Governmental Organisation
outside India which affords to citizens of India similar privileges as granted
to its own citizens, the Central Government may, by notification in the
Official Gazette, declare such country or group of countries or union of
countries or Inter-Governmental Organisation to be a
convention country or group of countries or union of countries or Inter-Governmental
Organisation, as the case may be, for the purposes of
this Act.
(2)
Where a person has made an application for the registration of a trade mark in
a convention country or country which is a member of a group of countries or
union of countries or Inter-Governmental Organisation
and that person, or his legal representative or assignee, makes an application
for the registration of the trade mark in India within six months after the
date on which the application was made in the convention country or country
which is a member of a group of countries or union of countries or Inter-Governmental
Organisations, the trade mark shall, if registered
under this Act, be registered as of the date on which the application was made
in the convention country or country which is a member of a group of countries
or union of countries or Inter-Governmental Organisation
and that date shall be deemed for the purposes of this Act to be the date of
registration.
(3)
Where applications have been made for the registration of a trade mark in two
or more convention countries or country which are members of group of countries
or union of countries or Inter-Governmental Organisation,
the period of six months referred to in the last preceding sub-section shall be
reckoned from the date on which the earlier or earliest of those applications
was made.
(4)
Nothing in this Act shall entitle the proprietor of a trade mark to recover
damages for infringement which took place prior to the date of application for
registration under this Act.
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 does not accord to citizens of India the same rights in
respect of the registration and protection of trade marks
as it accords to its own nationals, no national of such country or country
which is a member of a group of countries or union of countries or
Inter-Governmental Organisation, as the case may be,
shall be entitled, either solely or jointly with any other person,—
(a)
to apply for the registration of, or be registered as
the proprietor of, a trade mark;
(b)
to be registered as the assignee of the proprietor of
a registered trade mark; or
(c)
to apply for registration or be registered as a
registered user of a trade mark under section 49.
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
provisions of this Act as may appear to be necessary for removing the
difficulty:
Provided that no order shall be made under this
section after the expiry of five years from the commencement of this Act.
(2)
Every order made under this section shall, as soon as may be after it is made,
be laid before each House of Parliament.
157.
Power to make rules.—(1) The
Central Government may, by notification in the Official Gazette and subject to
the conditions of previous publication, make rules to carry out the provisions
of this Act.
(2)
In particular, and without prejudice to the generality of the foregoing power,
such rules may provide for all or any of the following matters, namely:—
(i) the matters to be
included in the Register of Trade Marks under sub-section (1) of section
6, and the safeguards to be observed in the maintenance of records on computer
floppies or diskettes or in any other electronic form under sub-section (2)
of that section;
(ii)
the manner of publication of alphabetical index of
classification of goods and services under sub-section (1) of section 8;
(iii)
the manner in which the Registrar may notify a word as
an international non-proprietary name under section 13;
(iv)
the manner of making an application for dissolution of
an association under sub-section (5) of section 16;
(v)
the manner of making an application for registration
of a trade mark under sub-section (1) of section 18;
(vi)
the manner of advertising of an application for registration under sub-section
(1), and the manner of notifying corrections or amendments under
sub-section (2), of section 20;
1[(vii) the manner of giving a notice of
opposition and the fee payable for such notice under sub-section (1) and
sending counter-statement under sub-section (2) and submission of
evidence and the time 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 the manner of such notice under sub-section (3) of
that section;
2[(ixa) the time
within which the international application is to be forwarded to the
International Bureau and the manner of certifying the particulars by the
Registrar under sub-section (4) of section 36D;
(ixb) the manner of keeping
a record of particulars of an international registration under sub-section (1)
of section 36E;
(ixc) the manner of
informing the International Bureau under sub-section (2) of section 36E;
(ixd) the manner of
advertising the international registration and the time within which the
international registration shall be advertised under sub-section (3) of
section 39E;]
(x)
the manner of submitting statement of cases under
sub-section (2) of section 40;
(xi)
the manner of making an application by the proprietor
of a trade mark under section 41;
(xii)
the manner of making an application for assignment or
transmission of a certification trade mark under section 43;
(xiii)
the manner of making an application to the Registrar
to register title under sub-section (1) of section 45;
2[(xiiia) the period
within which the Registrar shall dispose of an application under sub-section (3)
of section 45;]
(xiv)
the manner in which and the period within which an
application is to be made under sub-section (4) of section 46;
(xv)
the manner of making an application under sub-section
(2) of section 47;
(xvi)
the manner of making an application, documents and other evidence to accompany
such application under sub-section (1) and the manner in which notice is
to be issued under sub-section (3) of section 49;
(xvii)
the manner of making an application under sub-section (1), the manner of
issuing a notice under sub-section (2) and the procedure for cancelling
a registration under sub-section (3) of section 50;
(xviii)
the manner of making applications under sub-sections (1) and (2),
the manner of giving notice under sub-section (4) and the manner of
service of notice of rectification under sub-section (5) of section 57;
(xix)
the manner of making an application under section 58;
(xx)
the manner of making an application under sub-section (1), the manner of
advertising an application, time and manner of notice by which application may
be opposed under sub-sections (2) and (3) of section 59;
(xxi)
the manner of advertisement under sub-section (2)
of section 60;
(xxii)
the other matters to be specified in the regulations
under sub-section (2) of section 63;
(xxiii)
the manner of making an application under sub-section
(1) of section 71;
(xxiv)
the manner of advertising an application under section
73;
(xxv)
the manner of making an application under section 77;
(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 misbehavior 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 employees of the Appellate Board shall
discharge their functions under sub-section (3) of section 90;
(xxxii)
the form of making an appeal, the manner of
verification and the fee payable under sub-section (3) of section 91;
(xxxiii)
the form in which and the particulars to be included in
the application to the Appellate Board under sub-section (1) of section
97;
(xxxiv)
the manner of making an application for review under
clause (c) of section 127;
(xxxv)
the time within which an application is to be made to
the Registrar for exercising his discretionary power under section 128;
(xxxvi)
the manner of making an application and the fee
payable therefor under sub-section (1) of
section 131;
(xxxvii)
the manner of making an application under sub-section
(1) and the period for withdrawal of such application under sub-section
(2) of section 133;
(xxxviii)
the manner of authorising
any person to act and the manner of registration as a trade mark agent under
section 145;
(xxxix)
the conditions for inspection of documents under
sub-section (1) and the fee payable for obtaining a certified copy of
any entry in the register under sub-section (2) of section 148;
(xl)
the fees and surcharge payable for making applications
and registration and other matters under section 150;
(xli)
any other matter which is required to be or may be
prescribed.
(3)
The power to make rules conferred by this section shall include the power to
give retrospective effect in respect of the matters referred to in clauses (xxix)
and (xxxi) of sub-section (2) from a date not earlier than the
date of commencement of this Act, but no retrospective effect shall be given to
any such rule so as to prejudicially affect the interests of any person to whom
sub-rule may be applicable.
(4)
Every rule made by the Central Government under this Act shall be laid, as soon
as may be after it is made, before each House of Parliament, while it is in
session for a total period of thirty days which may be comprised in one session
or in two or more successive sessions, and if, before the expiry of the session
immediately following the session or the successive sessions aforesaid, both
Houses agree in making any modification in the rule or both Houses agree that
the rule should not be made, the rule shall thereafter have effect only in such
modified form or be of no effect, as the case may be; so, however, that any
such modification or annulment shall be without prejudice to the validity of
anything previously done under that rule.
158.
Amendments.—The
enactment specified in the Schedule shall be amended in the manner specified
therein.
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 1987), with respect to repeals, any notification, rule, order,
requirement, registration, certificate, notice, decision, determination,
direction, approval, authorisation, consent,
application, request or thing made, issued, given or done under the Trade and
Merchandise Marks Act, 1958 (43 of 1958) shall, if in force at the commencement
of this Act, continue to be in force and have effect as if made, issued, given
or done under the corresponding provisions of this Act.
(3)
The provisions of this Act shall apply to any application for registration of a
trade mark pending at the commencement of this Act and to any proceedings
consequent thereon and to any registration granted in pursuance thereof.
(4)
Subject to the provisions of section 100 and notwithstanding anything contained
in any other provision of this Act, any legal proceeding pending in any court
at the commencement of this Act may be continued in that court as if this Act
had not been passed.
(5)
Notwithstanding anything contained in this Act, where a particular use of a
registered trade mark is not an infringement of a trade mark registered before
the commencement of this Act, then, the continued use of that mark shall not be
an infringement under this Act.
(6)
Notwithstanding anything contained in sub-section (2), the date of
expiration of registration of a trade mark registered before the commencement
of this Act shall be the date immediately after the period of seven years for
which it was registered or renewed:
Provided that the registration of
a defensive trade mark referred to in section 47 of the Trade and Merchandise
Marks Act, 1958 (43 of 1958) shall cease to have effect on the date immediately
after the expiry of five years of such commencement or after the expiry of the
period for which it was registered or renewed, whichever is earlier.
1. Subs. by Act 40 of 2010, s.
8, for ―applications‖ (w.e.f. 8-7-2013).
1. Subs. by Act 40 of 2010, s. 9,
for clause (vii) (w.e.f. 8-7-2013).
2. Ins. by s. 9, ibid. (w.e.f. 8-7-2013).
1. Cls.
(xxvi), (xxvii) and (xxviii) omitted by Act 40 of 2010, s.
9 (w.e.f. 8-7-2013).
THE SCHEDULE
(See section 158)
AMENDMENTS
Year
|
Act No.
|
Short
title
|
Amendment
|
1956
|
1
|
The
Companies
Act,
1956
|
(1) In
Section 20, for sub-section (2), the following
sub-sections
shall be substituted, namely:—
“(2)
Without prejudice to the generality of the foregoing
power,
a name which is identical with, or too nearly
resembles,—
(i) the name by which a company in existence has
been
previously registered, or
(ii)
a registered trade mark, or a trade mark which is
subject
of an application for registration, of any
other
person under the Trade Marks Act, 1999,
may be
deemed to be undesirable by the Central
Government
within the meaning of sub-section (1).
(3)
The Central Government may, before deeming a name
as
undesirable under clause (ii) of sub-section (2),
consult the Registrar of Trade Marks.”.
(II)
In section 22, in sub-section (1),—
(i) for the portion beginning with “if, through”
and
ending
with “the first-mentioned company–” the
following
shall be substituted, namely:—
“If,
through inadvertence or otherwise, a company on
its
first registration or on its registration by a new
name,
is registered by a name which,—
(i) in the opinion of the Central Government, is
identical
with, or too nearly resembles, the name
by
which a company in existence has been
previously
registered, whether under this Act or
any
previous companies law, the first mentioned
company,
or
(ii)
on an application by a registered proprietor of a
trade
mark, is in the opinion of the Central
Government
identical with, or too nearly
resembles,
a registered trade mark of such
proprietor
under the Trade Marks Act, 1999,
such
company,—”;
(ii)
the following proviso shall be added, namely:—
“Provided
that no application under clause (ii)
made by
a registered proprietor of a trade mark
after five
years of coming to notice of
registration
of the company shall be considered
by the Central Government.”.
|