TRADE AND MERCHANDISE MARKS ACT, 1958
(1) The Act may be called the Trade and Merchandise Marks Act, 1958.
(1) It extends to the whole of India.
(2) It shall come into force on such date 1as the Central Government may, by notification in the Official Gazette, appoint.
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1. Came into force on 25-11-1959, see Gazette of India, 1959, Extra. Pt. II, section, 3(ii), p. 583.
Section 1 of the Trade and Merchandise Marks Act, 1958, lays down the preliminary provisions, including the short title, extent, commencement, and definitions relevant to the Act. It sets the foundation for the regulation of trademarks, their registration, protection, and enforcement in India.
Section 1 primarily states:- The Act may be called the Trade and Merchandise Marks Act, 1958.- It extends to the whole of India.- It came into force on a date appointed by the Central Government.- It defines key terms used in the Act, such as "trade mark," "registered trade mark," "goods," "owner," etc.
While Section 1 itself does not prescribe penalties, violations of the Act's provisions, such as false registration, infringement, or counterfeiting, attract penalties under other sections (e.g., Sections 77-82). Penalties may include fines, imprisonment, or both, depending on the offence.
In summary, Section 1 of the Trade and Merchandise Marks Act, 1958, is the cornerstone providing the legislative foundation, scope, and definitions necessary for the effective regulation, registration, and enforcement of trademarks across India. Its comprehensive scope ensures clarity, uniformity, and legal certainty, which are vital for protecting trade mark rights and fostering fair competition.
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(1) In this Act, unless the context otherwise requires,--
(a) "assignment" means an assignment in writing by act of the parties concerned;
(b) "associated trade marks" means trade marks deemed to be, or required to be, registered as associated trade marks under this Act;
(c) "certification trade mark" means a mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registrable as such under the provisions of Chapter VIII in respect of those goods in the name as proprietor of the certification trade mark, of that person;
(d) "deceptively similar":--A mark shall be deemed to
The High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the following cases is situate, namely:--
(a) in relation to a trade mark on the Register of Trade marks at the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor of the trade mark as entered in the register at such commencement is situate;
(b) in relation to a trade mark for which an application for registration of pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant as disclosed in his application is situate;
(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 1 [Registrar of Trade Marks] for the purposes of this Act. 2 [***].
(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.
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1.Substituted by Act 58 of 1960, section 3 and Second Schedule, for "Registrar".
2. The words and the Controller of Patents and Designs for the purposes of the Indian Patents and Designs Act, 1
(1) For the purpose of this Act there shall be established a Registry which shall be known as the Trade Marks Registry.
(2) The head office of the Trade Marks Registry shall be at such place as the Central Government may specify, and for the purpose of facilitating the registration of trade marks, there may be established at such places as the Central Government may think fit branch officers of the Trade Marks Registry,
(3) The Central Government may, by notification 1in 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.
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1. See Notification No. S.O.
(1) For the purposes of this Act, a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trade marks with the names, addresses and descriptions of registered users, disclaimers, conditions, limitations and such other matters relating to registered trademarks as may be prescribed.
(2) No notice of any trust, express or implied or constructive, shall be entered in the register and no such notice shall be receivable by the Registrar.
(3) Subject to the superintendence and direction of the Central Government, the register shall be kept under the control and management of the Registrar.
(4) There shall be kept at each branch office of the Trade Marks Registry a copy of the register and such of the other docum
(1) The register referred to in section 6 shall be divided into two parts called respectively Part A and Part B.
(2) The Register of Trade Marks existing at the commencement of this Act shall be incorporated with and form part of Part A of the register, and this Part shall comprise all trade marks entered in the Register of Trade marks existing at the commencement of this act and all trade marks which after such commencement may be entered in Part A of the register.
(3) Part B of the register shall comprise all trade marks which after the commencement of this Act may be entered in Part B of the register.
(1) A trade mark may be registered in respect of any or al! of the goods comprised in a prescribed class of goods.
(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.
(1) A trademark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:--
(a) the name of a company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) one or more invented words;
(d) one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;
(e) any other distinctive mark.
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(1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.
(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
A mark-
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court,
shall not be registered as a trade mark.
(1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods the Registrar may defer the acceptance of the application or applications bearing a later date until after the deermination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(1) No word which is commonly used and accepted name of any single chemical element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding any thing in section 32, be deemed for the purposes of section 56 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.
(2) This section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the Registrar with such consent.
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to registrar the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same goods or description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of--
(a) statement of the goods in relation to which they are respectively used or proposed to be used; or
(b) statements of number, price, quality or names of places; or
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(1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks.
(2) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (I) of section 15, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.
(3) All trade marks
If a trade mark--
(a) contains any part--
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character;
the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register.
(2) An application shall not be made in respect of goods comprised in more than one prescribed class of goods.
(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India or the applicant whose name is first mentioned in the application as having a place of business in India, is situate:
Provided that where the a
Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied--
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.
(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:
Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (2) of section 9 applies or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.
(2) Where-
(a) An application has been advertised before acceptance under sub-section (1); or
(b) after advertise
(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.
(3) If the applicant sen
The Registrar may on such terms as he thinks just-
(a) at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application ; or
(b) permit correction of any error in, or an amendment of, a notice of opposition or a counter-statement under section 21.
(1) Subject to the provisions of section 19, when an application for registration of a trade mark in Part A or Part B of the register has been accepted and either-
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has not been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said trade mark in Part A or Part B of the register, as the case may be, and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 131, be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to t
(1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a trade mark are such that on one of them is entitled as between himself and the other or others of them to use it except--
(a) on behalf of both or all of them; or
(b) in relation to an article with which both or all of them are connected in the course of trade, those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.
(1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of seven years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the condition
Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall neverthless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either-
(a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or
(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
(1) No person shall be entiteld to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (I) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complaints is not likely to deceive or cause confusion or (o be taken as indicating a connection in (he course of trade between the goods in respect of which the trade mark is re
(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark:--
(a) Where a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to good to be exported to any market, or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;
(b) the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and h
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 56), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prime facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a trade mark registered in Part A of the register shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctivness and that such evidence was not submitted to the Registrar before registration, in all legal proceedings as aforesaid, if it is proved that the trade mark had been used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.
Subject to the provisions of section 35 and section 46, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 56) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved-
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his,
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 t
Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bana 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.
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description .of an article or substance:
Provided that, if it is proved either -
(a) that there is a well-known and established use of the said word as the name or description of the article or substance by a person or persons carrying on a trade therein, not being used in relation to goods 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) goods certified by the proprietor; or
(b) that the article or substance was formerly manufactured under a patent, that a period of two years o
The person for the time being entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.
Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to Ihe provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods in respect of which the trade mark is registered or of some only of these goods.
(1) An unregistered trade mark shall not be assignable or transmissible except along with the goodwill of the business concerned.
(2) Notwithstanding anything contained in sub-section (1), an unregistered trade mark may be assigned or transmitted otherwise, than along with the goodwill of the business concerned if--
(a) at the time of assignment or transmission of the unregistered trade mark, it is used in the same business as a registered trade mark; and
(b) the registered trade mark is assigned or transmitted at the same time and to the same person as the unregistered trade mark; and
(c) the unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.
(1) Notwithstanding anything in section 37 and section 38, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion:
Provided that an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitation imposed thereon, such as not to
Notwithstanding anything in section 37 and section 38, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in any place in India and an exclusive right in another of these persons to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, in any other place in India:
Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who
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 ihe 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 or 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 certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Central Government, for which application shall be made in writing in the prescribed manner through the Registrar.
Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall for all other purposes, be deemed to have been registered as separate trade marks.
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register:
Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.
(2) Except for the purpose of an application before the Registrar under subsection (I) or an appeal from
(1) No application for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark if the Registrar is satisfied that a Company is about to be formed and registered under the Companies Act, 1956 (1 of 1956), and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods by the company.
(2) The tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.
(3) Where in a case to which sub-section (1) applies, a tra
(1) Subject to the provisions of section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either-
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or
(b) that up to a date one month before the date of the application, a continuous period of fi
(1) Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely lo be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first mentioned goods does not use or propose to use the trade mark in relation to those other goods and not- withstanding anything in section 48, the trade mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark, and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.
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(1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as the registered user thereof in respect of any of all of the goods in respect of which the trademark is registered otherwise than as a defensive trade mark; but the Central Government may, by rules made in this behalf, provide that no application for registration as such shall be enertained unless the agreement between the. parties complies with the conditions laid down in the rules for preventing trafficking in trade marks.
(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 46 or for any other purpose for which such use is material under this Act or any other law.
(1) Where it is proposed that a person should be registered as a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be accompanied by--
(i) the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark; and
(ii) an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf,--
(a) giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control
Notwithstanding anything contained in any law for the time being in force or in any contract or agreement, every registration made before the commencement of this Act of a registered user shall cease to have effect after the expiration of three years from such commencement.
(1) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and if the proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.
(2) Notwithstanding anything contained in any other law, a proprietor so added as defendant shall be liable for any costs unless he enters an appearance and takes part in the proceedings.
(1) Without prejudice the provisions of section 56, to the registration of a person as a registered user--
(a) may be varied by the Registrar as regards the goods in respect of which or any conditions or restrictions subject to which, it has effect on the application in writing in the prescribed manner of the registered proprietor of the trade mark;
(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark;
(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of any person of any of the following grounds, namely:--
(i) that the registered user has used the trade mark other
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
(1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, it and so far as it shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alteralions not substanlially affecting its identity, as an equivalent for the use required to be proved.
(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in accordance with sub-section (1) of section 15 in the name of the same proprietor.
(1) The application in India of trade mark to goods to be exported from India and any other act done in India in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or any other law.
(2) The use of a registered trade mark in relation to goods between which and the person using the mark any form of conneclion in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods between which and the said person or a predecessor in title of that person a different form of connection in the course of trade subsisted or subsists.
(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error of defect in any entry in the ' register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any question that
(1) The Registrar may, on application made in the prescribed manner by the regisiered proprietor,--
(a) correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark;
(b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark;
(c) cancel the entry of a trade mark on the register;
(d) strike out any goods or classes of goods from those in respect of which a trade mark is registered;
(e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark,
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(1) The registered proprietor of trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the manner.
(3) Where leave is granted under this section, the trade mark as altered shall be adver
(1) The Registrar shall not, in exercise of any power conferred on him by rules made with reference to clause (a) of sub-section (2) of section 133, make any amendment of the register which would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods:
Provided that this sub-section shall not apply when the Registrar is satisfied that compliance therewith would involve under complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be notified to the registered pr
The following provisions of this Act shall not apply to certification trade marks, that is to say,--
(a) section 9;
(b) sections 18, 20 and 21, except as expressly applied by this Chapter;
(c) sections 28, 29, 30, 39, 40, 41, 45, 46, 47, 48, 49, 51, 52, 53 and subsection (2) of section 55;
(d) Chapter X, except section 81;
(e) any provision the operation of which is limited by the terms thereof to registration in Part B of the register.
(1) A certification trade mark shall be registrable only in Part A of the register.
(2) A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified.
(3) In determining whether a certification trade mark is adapted to distinguish in accordance with the provisions of clause (c) of sub-section (I) of section 2, the tribunal may have regard to the extent to which--
(a) the mark is inherently so adapted distinguish in relation to the goods in question; and
(b) by reason of the use of the mark or of any other circumstances, the mark is in fact so adapted to distinguish in relation to the goods in question.
(1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 65.
(2) Subject to the provisions of section 61, the provisions of sub-sections (1), (2), (3), (4) and (6) of section 18 and of sections 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that references therein to acceptance of an application shall be construed as references to authorisation to proceed with an application.
(3) In dealing under the said provisions with an application under this section, the tribunal shall have regard to the like
(1) When authorisation to proceed, with an application under section 62 has been given, the Registrar shall forward the applications to the Central Government.
(2) The Central Government shall consider the application so forwarded with regard to the following matters, namely:--
(a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;
(b) whether the draft of the regulations to be deposited under section 65 is satisfactory;
(c) whether in all the circumstances the registration applied for would be to the public advantage,
and may either --
(i) direct that the application shall not be accepted; or
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(1) When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the provisions of section 21 shall apply in relation to the registration of the mark as they apply in relation to an application under section 18.
(2) In deciding any matter relating to opposition proceedings under the provisions aforesaid the tribunal shall have regard only to the considerations referred to in sub-section (3) of section 62, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Central Government under sub-section (3) of this section of any opposition relating to any of the matters referred to in section 63.
(3) When notice of opposition is given relating to any of the matt
(1) There shall be desposited at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulation approved by the Central Government for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the certification trade mark, and may contain any other provisions which the Central Government may, by general or special order, require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the certification trade mark in accordance with the regulations) ; and regulations so deposited shall be open to inspection in like manner as the register.
(2) The regulations so deposited may on the application of the registered proprietor be altered b
(1) Subject to the provisions of sections 33, 34 and 68, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods.
(2) The exclusive right to the use of a certification trade mark given under subsection (1) shall be subject to any conditions and limitations to which the registration is subject.
The right conferred under section 66 is infringed by any person who, not being the registered proprietor of the certification trade mark of a person authorised by him in that behalf under the regulations deposited under section 65, using it in accordance therewith, uses in the course of trade, a mark which is identical with, or deceptively similar to, the certification trade mark in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark, likely to be taken as being use as a trade mark.
(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered certification trade marks:--
(a) where a certification trade mark is registered to any conditions or 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 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 certifierd by the proprietor of the mark if, as to those goods or a bulk of which they form part, the proprietor of another in accordance with his authorisation under the relevant regulations has applied the mark and has not subseque
The Central Government may, on the application in the prescribed manner of any person aggrieved or on the recommendation of the Registrar, and after giving the proprietor an opportunity of opposing the application or recommendation, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on any of the following grounds, namely:
(a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the mark is registered, to certify those goods;
(b) that the proprietor has failed to observe any provision of the deposited regulations to be observed on his part;
(c) that it is no longer to the public advantage that the mark should remain registered;
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The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made by the Central Government under section 69.
The Central Government may prescribe classes of goods (in this Chapter referred to as textile goods) to the trade marks used in relation to which the provisions of this Chapter shall apply ; and subject to the said provisions, the other provisions of this Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods.
(1) In respect of textile goods being piece goods--
(a) no mark consisting of a line heading alone shall be registrable as a trade mark;
(b) a line heading shall not be deemed to be adapted to distinguish;
(c) the registration of a trade mark shall not give any exclusive right to the use of a line heading.
(2) In respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.
(1) No addition shall, after the commencement of this Act, be made to the Refused Textile Marks List maintained under the Trade Marks Act, 1940 (5 of 1940).
(2) A mark already entered on the Refused Textile Marks List may, however, be continued to be so entered:
Provided that an application therefor is made in the prescribed manner and with the prescribed fee within one year after the commencement of this Act, in which case it will be retained in the List for a period of seven years from the date of the application.
(1) Piece goods, such as are ordinarily sold by length or by the piece, which have been manufactured, bleached, dyed, printed or finished in premises which are a factory, as defined in the Factories Act, 1948 (63 of 1948), shall not be removed for sale from the last of such premises in which they underwent any of the said processes without having conspicuously stamped in international form of Indian numerals on each piece the length thereof in standard yards, or in standard yards and a fraction of such a yard, or in standard metres or in standard metres and a fraction of such a metre, according to the real length of the piece, and, except when the goods are sold from the factory for export from India, wiihout being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in India of the piece.
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(1) For the purposes of this Act, the Central Government may make rules,--
(a) to provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, gauge or weight for the number of samples to be selected and tested and for the selection of the samples;
(b) to provide for the manner in which for the purposes of section 74 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dyeing of finishing of cotton yarn or cotton thread from the provisions of that section; and
(c) declaring what classes of goods are included in the expression "piece goods such as are ordinarily sold by length or by the piece" for the purpose of section 74 of this
(1) A person shall be deemed to apply a trade mark or mark or trade description to goods who--
(a) applies it to the goods themselves; or
(b) applies it to any package in or with which the goods are sold, or expose for sale, or had in possession for sale or for any purpose of trade or manufacture; or
(c) places, encloses, or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or 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 in connection with which it is used are designated or described by that t
(1) A person shall be deemed to falsify a trade mark who, either,--
(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or
(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods a trade mark who, without the assent of the proprietor of the trade mark,--
(a) applies such trade mark or a deceptively similar mark, to goods or any package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling, or wrapping therein any goods other than the
Any person who,--
(a) falsifies any trade mark; or
(b) falsely applies to goods any trade mark; or
(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying, or of being used for falsifying, a trade mark; or
(d) applies any false trade description to goods; or
(e) applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied under section 117, a false indication of such country, place, name or address; or
(f) tampers with, alters or e
Any person who sells, on exposes for sale, or has in his possession for sale or for any purpose of trade or manufacture, any goods or things to which any false trade mark or false trade description is applied or which, being required under section 117 to have applied to them an indication of the country or place in which they were made or produced or me name and address of the manufacturer or the person for whom the goods are manufactured, are without the indication so required, shall, unless he proves,--
(a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods; and
(b) that, on demand by or on beh
If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 74, or sells or exposes for sale or has in his possession for sale or for any purpose of trade or anufacture piece goods or cotton yam or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees.
(1) No person shall make any representation--
(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or
(c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not in fact registered; or
(d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not in fact give that right.
(2
If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is or is officially connected with, the Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to six months, or with fine, or with both.
If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces on tenders, or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
The provisions of sections 77, 78 and 79 shall, in relation to a registered trade mark or proprietor of such mark, be subject to the rights created or recognised by this Act, and no act or omission shall be deemed to be an offence under section 77 or section 78 or section 79 if,--
(a) the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and
(b) the alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law for the time being in force.
(1) Where a person is convicted of an offence under section 78 or section 79, or is acquitted of an offence under section 78 on proof that he acted without intent to defraud, or under section 79 on proof of the matters specified in clauses (a), (b) and (c) of that section, the court convicting or acquiting 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 against the forfeiture also.
(3) When a forfeiture is directed on an acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thi
Where a person accused of an offence under section 78 proves--
(a) that in the ordinary course of his business he is employed on behalf of others persons to apply trade marks or trade descriptions, or, as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making trade marks; and
(b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other thing by way of profit or commission dependent on the sale of such goods; and
(c) that, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark or trade description; and
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(1) Where the offence charged under section 78 or seclion 79 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed:--
(a) If the magistrate is satisfied that such defence is prima facie tenable, he shall not proceed with me charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act, for the rectification of the register on the ground that the registration is invalid.
(b) If the accused proves to the magistrate that he has made such application within the time so limited or within such further time as the magistrate may for sufficient cause allow, the further proceedings in the prosecution shall sta
(1) Tf 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 Ihe 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 a
(1) No court shall take cognizance of an offence under section 81, section 82 or section 83 except on complaint in writing made by the Registrar or any officer authorised by him in writing.
(2) No court inferior to that of a sessions judge, presidency magistrate or magistrate of the first class shall try an offence under this Act.
In the case of goods brought into India by sea, evidence of the port of shipment shall, in a prosecution for an offence under this Act or under clause (d), clause (dd), clause (e), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878 (8 of 1878), be prima facie evidence of the place or country in which the goods were made or produced.
In any prosecution under this Act the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deemed reasonable having regard to all the circumstances of the case and the conduct of the parties. Costs so awarded shall be recoverable as if they were a fine.
No prosecution for an offence under this Act or under clause (d), clause (dd), clause (e), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878 (8 of 1878), shall be commenced after the expiration of three years next after the commission of the offence charged, or two years after the discovery (hereof by the prosecutor, whichever expiration first happens.
An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter, shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.
If any person, being within India, abets Ihe 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 which he would be liable if he had himself committed in that place the act which he abetted.
The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight, which are to be recognised by criminal courts as permissible in the case of any goods.
On the sale or in the contract for the sale of any goods to which a trade marks or mark or trade description has been applied, the seller shall be deemed to warrant that the mark is a genuine mark and not falsely applied, or that the trade description is not a false trade description within the meaning of this Act, unless the contrary is expressed in some writing signed by or on behalf of the seller and delivered at the time of the sale or contract to and accepted by the buyer.
In all proceedings under this Act before the Registrar--
(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;
(b) the Registrar may, subject to any rules made in this behalf under section 133, make such orders as to costs as be considers reasonable, and any such order shall be executable as a decree of a civil court:
Provided that the Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the mark:
Subject to the provisions of section 101, the Registrar shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within the prescribed time) giving to that person an opportunity of being heard.
In any proceeding under this Act before the Registrar evidence shall be given by affidavit:
Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit.
If a person who is a party to a proceeding under this Act (not being a proceeding in a court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of the transmission of the interest of the deceased person, substitute in the preceding his successor in interest in his place, or, if the Registrar is of opinion that the interest of the deceased person is sufficiently represented by the surviving parties, permit the proceeding to continue without the substitution of his successor in interest.
(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in the Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.
Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may by notice require the applicant to remedy the default within a time specified and after giving him, if so desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied with in the time specified in the notice.
(1) The Registrar may, on application made to him in the prescribed manner by any person who proposes to apply for the registration of a trade mark in Part A or Part B of the register, give advice as to whether the trade mark appears to him prima facie to the inherently adapted to distinguish, or capable of distinguishing as the case may be.
(2) If, on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative made within three months after the advice was given, the Registrar, after further investigation or consideration, gives notice, to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or is not capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have a repaid to
In all proceedings under this Act before the Central Government, evidence shall be given by affidavit:
Provided that the Central Government may, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purpose have all the powers of a civil court referred to in clause (a) of section 97.
No suit--
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark . which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 105 includes an injunction (subject to such terms, if any, as the court think fit) and the option of the plaintiff, either damages or on account of profits, together with or without any order for the delivery-up of the infringing lables and marks for destruction or erasure.
(2) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case--
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark; or
(b) where in a suit for infringement the defendant satisfies the court--
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(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (d) of subsection (1) of section 30 and the palintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in section 46, sub section (4) of section 47 or section 56, such application shall be made to the High Court and not to the Registrar.
(2) Subject to the provisions of sub-section (1) where an application for rectification of the registered made to the Registrar under section 46 or sub-section (4) of section 47 or section 56, the Registrar
(1) An application for rectification of the register madeto a High Court under section 46, sub-section (4) of section 47 or section 56shall be in such form and shall contain such particulars as may be prescribed.
(2) Every such application shall be heard by a single Judgeof the High Court:
Provided that any such Judge may, if he thinks fit, refer theapplication at any stage of the proceedings for decision to a Bench of thatHigh Court.
(3) Where any such application is heard by a single judgeof the High Court, an appeal shall lie from the order made by him onapplication to a Bench of the High Court.
(4) Subject to the provisions of this Act and the rulesmade thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of1908), shall apply to ap
(1) No appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government or from any act or order of the Registrar for the purpose of giving effect to any such decision, order or direction.
(2) Save as otherwise expressly provided in sub-section (1) or in any other provision of this Act, an appeal shall lie to the High Court within the prescribed period from any order or decision of the Registrar under this Act or the rules made thereunder.
(3) Every such appeal shall be preferred by petition in writing and shall be in such form and shall contain such particulars as may be prescribed.
(4) Every such appeal shall be heard by a single Judge of the High Court:
Provided that any such Judge may, if he so think
The High Court may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it.
(1) Where in any suit for the infringement of a trade mark--
(a) the defendant pleads that the registration of the plaintiffs trade mark is invalid; or
(b) the defendant raises a defence under clause (d) of sub-section (1) of section 30 and the plaintiff pleads the invalidity of the registration of the defendant's trade mark,
the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea re
(1) The Registrar shall have the right to appear and be heard--
(a) in any legal proceedings before a High Court in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;
(b) in any appeal to the High Court from an order of the Registrar on an application for registration of a trade mark--
(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest,
and the Registrar shall
In all proceedings under this Act before a High Court the costs of the Registrar shall be in the discretion of the High Court, but the Registrar shall not be ordered to pay the costs of any of the parties.
(1) In every proceeding under Chapter VII or under section 109, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, shall be made a party to the proceeding,
(2) Notwithstanding anything contained in any other law, a registered user so made a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding.
(1) A copy of any entry in the register or of any document referred to in sub-section (1) of section 125 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or not done.
The Registrar or any other officer of the Trade Marks Registry shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special cause.
(1) The Central Government may, by notification in the Official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of India and imported into India, or which are made or produced within the limits of India, shall from such date as may be appointed by the notification not being less than Ihrce months from its issue, have applied to them an indication of the country or place in which they were made or produced, or of the name and address of the manufacturer or the person for whom the goods were manufactured.
(2) The notification may specify the manner in which such indication shall be applied, that is to say, whether to the goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessary, that is to say, whether on importation only, or also at the time of sal
(1) Where goods, which are prohibited to be imported into India under clause (d), clause (dd), clause (c), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878, (8 of 1878) and are liable to detention and confiscation on importation under that Act, are imported into India, the Chief Customs Officer if, upon representation made to him, he has reason to believe that the trade mark complained of is used as a false trade mark, may require the importer of the goods, or his agent, to produce any documents in his possession relating to the goods and to furnish information as to the name and address of the person by whom the goods were consigned to India and the name and address of the person to whom the goods were sent in India.
(2) The importer or his agent shall, within fourteen days, comply with the requirement as aforesaid, and if he fails to do
If in any legal proceeding for rectification of the register before a High Court a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect, and if such a certificate is granted, then in any subsequent legal proceeding in which the said validity conies info question the said proprietor on obtaining a final order or judgment in his favour affirming the validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges and expenses as between legal practitioner and client.
(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceedings, a person aggrieved may, whether the person making the threats is or is not registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute, an infringement of the trade mark.
(2) T
An address for service stated in an application or notice of opposition shall for the purposes of the application or notice of opposition, be deemed to be the address of the applicant opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.
In any suit or other proceeding relating to a trade mark, the tribunal shall admit evidence of the usage of the trade concerned and of any relevenl trade mark or trade name or get up legitimately used by other persons.
Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done, instead of by that person himself, by a person duly authorised in the prescribed manner, who is--
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a trade marks agent, or
(c) a person in the sole and regular employment of the principal.
There shall be kept under the direction and supervision ofthe Registrar,--
(a) an index of registered trade marks,
(b) an index of trade marks in respect of whichapplications, for registration are pending,
(c) an index of the names of the proprietors of registeredtrade marks, and
(d) an index of the name of registered users.
(1) Save as otherwise provided in sub-section (5) of section 49,--
(a) the register, and any document upon which any entry in the register is based;
(b) every notice of opposition to the registration of a trade mark, application for rectification before the Registrar, counter-statement therelo, and any affidavit or document filed by the parties in any proceedings before the Registrar;
(c) all regulations deposited under section 65, and all applications under section 69 for varying such regulations;
(d) the indexes mentioned in section 124; and
(e) such other documents as the Central Government may, by notification in the Official Gazette, specify, shall, subject to such conditions as may be prescribed, be
The Central Government shall cause to be placed before both Houses of Parliament once a year a report respecting the execution by or under the Registrar of this Act.
(1) There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fee has been paid.
(3) Where a fee is payable in respect of the filing of a document at the Trade Marks Registry, the document shall be deemed not lo have been filed at the Registry until the fee has been paid.
Nothing in Chapter X shall--
(a) exempt any person from any suit or other proceeding which might, but for anything in that Chapter, be brought against him,
(b) entitle any person to refuse to make a complete discovery, or to answer any question or interrogatory in any suit or other proceeding, but such discovery or answer shall not be admissible in evidence against such person in any such prosecution for an offence under Chapter X or against clause (d), clause (dd), clause (e), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878, (8 of 1878), or
(c) be construed so as to render liable to any prosecution or punishment any servant of a master resident in India who in good faith acts in obedience to the instructions of such master, and, on demand made by or
Notwithstanding anything contained in the Indian Registration Act, 1908 (16 of 1908), no document declaring or purporting to declare the ownership or title of a person to a trade mark other than a registered trade mark shall be registered under that Act.
The provisions of this Act shall be binding on the Government.
(1) With a view to the fulfilment of a treaty, convention or arrangement, with any country outside India which affords to citizens of India similar privileges as granted, to its own citizens, the Central Government may, by notification in the Official Gazette, declare such country to be a convention country for the purposes of this Act.
(2) Where a person has made an application for the registration of a trade mark in a convention country and that person, or his legal representative or assignee, makes an application for the registration of the trade mark in India within six months after the date on which the application was made in the convention country, the trade mark shall, if registered under this Act, be registered as of the date on which the application was made in the convention country and that date shall be deemed for the purpose of this Act to be the date of registration.
Where any country specified by the Central Government in this behalf by notification in the Official Gazette does not accord to citizens of India the same rights in respect of the registration and protection of trade marks as it accords to its own nationals, no national of such country shall be entitled, either solely or jointly with any other person--
(a) to apply for the registration of, or be registered as the proprietor of, a trade mark in Part A or Part B of the register,
(b) to be registered as the assignee of the proprietor of a registered trade mark, or
(c) to apply for registration or be registered as a registered user of a trade mark under section 49.
(1) The Central Government may, by notification in the Official Gazette and subject to the condition of previous publication, make rules 1to carry out the purposes of this Act.
(2) In particular, and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:--
(a) the classification of goods for the purpose of the registration of trade marks, and the empowering of the Registrar to amend the register so far as may be necessary for the purpose of adapting the entries therein to any amended or substituted classification;
(b) the making of duplicates of trade marks and other documents connected therewith;
(c) the securing and regulating the publication, sale or distribution of copi
1134. Laying of rules before Parliament
Every rule made under this Act shall be laid, as soon as may be after it is made, before each House of Parliament, while it is in session, for a total period of thirty days which may be comprised in one session or in two or more successive sessions, and if, before the expiry of the session immediately following the session or the successive sessions aforesaid, both Houses agree in making any modification in the rule or both Houses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no effect, as the case may be ; so, however, that any such modification or annulment shall be without prejudice to the validity of anything previously done under that rule.
________________________
1. Substituted by
The enactments specified in the Schedule shall be amended in the manner specified there in.
(1) The Indian Merchandise Marks Act, 1889 (4 of 1889), and the Trade Marks Act, 1940 (5 of 1940), are hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request, or thing made, issued, given or done under1the Indian Merchandise Marks Act, 1889 (4 of 1889), or the Trade Marks Act, 1940 (5 of 1940), shall, if in force at the commencement of this Act, continue in force, and have effect as if made, issued, given or done under the corresponding provision of this Act.
(3) The provisions of this Act shall apply to any application for registration of a trade mark pending at the commencement of this
(See section 135)
Year No. Short title Amendment
1860 45 The Indian Penal Code, (i) In the heading to Chapter XVIII, the words "TRADE OR" shall be omitted;
(ii) in the heading above section 478, the word "trade", shall be omitted;
(iii) sections 478 and 480 shall be omitted;
(iv) in section 482, the words "any false trade mark or" shall be omitted;
(v) in section 483, the words" trade mark or" shall be omitted;
(vi) for section 485, the following section shall be substituted, namely:--
"485. Making 'or possession of any i
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