TRADE MARKS ACT, 1999
(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.
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1. 15th September, 2003 vide S.O. 1048 (E), dated 15-9-2003, published in the Gazette of India, Extra., Part II, Section 3(ii), dated 15th September, 2003.
(1) In this Act, unless the context otherwisere quires,--
(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 oth
Section 2 of the Trade Marks Act, 1999, provides the definitions and interpretative provisions crucial for understanding the scope, nature, and protection of trademarks in India. It lays down the foundational concepts that underpin the entire statutory framework for registration, infringement, and enforcement of trade marks.
Section 2 defines key terms such as "trade mark," "deceptively similar," "goods," "services," and other relevant concepts. It emphasizes that a trade mark must be capable of being represented graphically and distinguish the goods or services of one person from those of others. It also clarifies what cannot be registered as a trade mark, including marks that are descriptive, generic, or solely consist of shapes resulting from the nature of goods.
Section 2's scope is broad, covering:- Definitions of what constitutes a trade mark.- Criteria for registration, including distinctiveness and graphical representation.- Exclusions from registration, such as marks that are deceptive, generic, or functional.- The concept of similarity and likelihood of confusion, especially under subsection (h) and (zb).- The protection of well-known and famous marks, as interpreted through judicial pronouncements.
While Section 2 itself primarily deals with definitions, violations related to false applications, misuse, or infringement under the Act attract penal provisions under sections like 103-121, which prescribe imprisonment (up to three years), fines, or both for offences such as applying false trade marks or infringing registered marks.
This concise commentary highlights the pivotal role of Section 2 in shaping the legal landscape of trademarks in India, emphasizing the importance of clear definitions, scope of protection, and penalties for violations, supported by judicial interpretations and statutory provisions.
(1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.
(2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge.
Without prejudice to the generality of the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under the said sub-section (2) and deal with such matter himself eitherde 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 eitherde novo or from the stage it was so transferred.
(1) For the purposes of this Act, there shall be a trade marks registry and the Trade Marks Registry established under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall be the Trade Marks Registry under this Act.
(2) The head office of the Trade Marks Registry shall be at such place as the Central Government may specify, and for the purpose of facilitating the registration of trade marks, there may be established at such places as the Central Government may think fit branch offices of the Trade Marks Registry.
(3) The Central Government may, by notification in the Official Gazette, define the territorial limits within which an office of the Trade Marks Registry may exercise its functions.
(4) There shall be a seal of the Trade Marks Registry.
(1) For the purposes of this Act, a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trade marks with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the names, addresses and descriptions of registered users, conditions, limitations and such other matter relating to registered trade marks as may be prescribed.
(2) Notwithstanding anything contained in sub-Section (1), it shall be lawful for the Registrar to keep the records wholly or partly in computer floppies, diskettes or in any other electronic form subject to such safeguards as may be prescribed.
(3) Where such register is maintained wholly or partly on computer under subsection (2) any reference in this Act to entry in the register s
(1) The Registrar shall classify goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks.
(2) Any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final.
(1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical index of goods and services published under sub-section (1), the classification of goods or services shall be determined by the Registrar in accordance with sub-section (2) of section 7.
(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in thebona fide and established practices of the trade,
shall not be registered :
Provided that a trade mark shall not be refused regist
Section 9 of the Trade Marks Act, 1999 serves as the bedrock of the Indian trademark regime by establishing the "Absolute Grounds for Refusal of Registration." Its primary legislative intent is to prevent the monopoly of words or symbols that are devoid of distinctive character or serve merely to describe the goods/services, thereby ensuring that the public domain remains free for generic descriptors while protecting unique brand identities. This section operates distinctively from Section 11 (Relative Grounds) by focusing on the intrinsic nature of the mark rather than its similarity to prior registrations.
Section 9 enumerates specific categories of marks that the Registrar is prohibited from accepting for registration. Key subsections include:* Section 9(1)(a): Refusal if the mark is devoid of any distinctive character and cannot distinguish the goods/services of one person from another.* Section 9(1)(b): Refusal if the mark consists exclusively of signs indicating the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods/services.* Section 9(1)(c): Refusal for marks consisting exclusively of customary shapes needed for получении of nature, or substantial value.* Section 9(2)(a): Refusal if the mark is liable to deceive or cause confusion by reason of something in it.* Section 9(2)(b): Refusal if the mark contains emblems, flags, or names of international intergovernmental organizations without valid authorization.
For a successful challenge under Section 9 (or refusal thereof), the following elements are critical:1. Absence of Distinctive Character (9(1)(a)): The mark must fail to function as an identifier of source on its own.2. Exclusivity of Signs (9(1)(b)): The objection often lies in the fact that the entire mark consists only of descriptive terms, leaving no room for creativity.3. Deceptive Capacity (9(2)(a)): The mark must have an inherent capacity to mislead the public regarding the nature of the goods.4. Geographical/Generic Natures: The mark attempts to monopolize geographical names (unless secondary meaning exists) or functional shapes.5. Holistic Assessment: Courts consistently emphasize that marks must be viewed as a whole, not dissected into parts to find descriptiveness (Anti-Dissection Rule).
The scope of Section 9 is broad and protective of the public interest:* Public Domain Preservation: It prevents industries from monopolizing common English words (e.g., "ALL," "PRO", "INSTITUTE") or geographical terms unless they have acquired secondary meaning.* Absolute Bar on Laudatory Terms: Certain sections imply an absolute bar on registering purely laudatory or testimonial marks (e.g., "RAJ," "BEST") without evidence of distinctiveness.* Distinguishing from Section 11: Unlike Section 11, which requires a comparison with existing registered marks, Section 9 is a standalone test of the mark's inherent registrability.* Deceptiveness: It covers marks that inherently cause confusion, serving as a preventative measure before registration is granted.* Emblems and Flags: It strictly regulates the use of national symbols and international organizational names.* Geographical Names: While generally prohibited, geographical names are not automatically barred if the applicant can prove extensive use and acquired secondary meaning distinguishing them from generic geographical references.
It is important to clarify the remedies available:* Administrative Refusal: The immediate consequence of a proven Section 9 violation is the absolute refusal of the trademark application by the Registrar.* Judicial Cancellation: Even if a mark is registered erroneously under this section, it can be removed from the Register (rectification) upon proof of absolute grounds.* No Criminal Penalty: Infringement of Section 9 (i.e., attempting to register a non-registrable mark) does not attract criminal penalties like imprisonment or fines under the Act. These penalties typically apply to violations of Section 28 (infringement after registration) or specific offenses in Chapter XII (Sections 100-121), not the substantive refusal grounds of Section 9 itself.
(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 allcolours.
(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 r
In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
No word--
(a) which is the commonly used and accepted name ofany single chemical element or any single chemical compound (as distinguishedfrom a mixture) in respect of a chemical substance or preparation, or
(b) which is declared by the World HealthOrganisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name,
shall be registered as a trade mark and any such registration shall be deemed for the purpose of section 57 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.
Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or similar goods or services or description of goods or description of services, which, while resembling each other in the material particulars thereof, yet differ in respect of--
(a) statement of the goods or services in relation to which they are respectively used or proposed to be used; or
(b) statement of number, price, quality or n
(1)Where a trade mark which is registered, or is the subject of an application forregistration, in respect of any goods or services is identical with anothertrade mark which is registered, or is the subject of an application forregistration, in the name of the same proprietor in respect of the same goods ordescription of goods or same services or description of services or so nearlyresembles it as to be likely to deceive or cause confusion if used by a personother than the proprietor, the Registrar may, at any time, require that thetrade 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, orare the subject of applications for registration in the name of the sameproprietor, in respect of goods and in respect of services which are associatedwith those goods or goods of that description and w
Section 16 of the Trade Marks Act, 1999, addresses the registration of trade marks as associated trade marks, facilitating the registration of marks that are similar or identical and owned by the same proprietor, to prevent confusion and promote brand expansion.
Section 16(1) states that when a trade mark which is registered or applied for registration is identical with another trade mark owned by the same proprietor, or is similar to it, the Registrar may register them as associated trade marks. It aims to recognize related marks that are used in connection with similar or related goods/services, provided they are owned by the same entity.
In summary, Section 16 of the Trade Marks Act, 1999, provides a framework for registering related or similar marks owned by the same proprietor, promoting brand expansion while safeguarding consumer interests and maintaining competition. It does not create automatic rights but facilitates registration of associated marks, which can be used strategically for business growth.
Note: All references are based on the provided sources and legal principles derived therefrom.
(1)When a trade mark consists of several matters, its registration shall confer onthe 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 forregistration 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 anon-distinctive character,
theregistration thereof shall not confer any exclusive right in the matter formingonly a part of the whole of the trade mark
(1)Any person claiming to be the proprietor of a trade mark used or proposed to beused by him, who is desirous of registering it, shall apply in writing to theRegistrar 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 differentclasses of goods and services and fee payable therefor shall be in respect ofeach such class of goods or services.
(3)Every application under sub-section (1) shall be filed in the office of theTrade Marks Registry within whose territorial limits the principal place ofbusiness in India of the applicant or in the case of joint applicants theprincipal place of business in India of the applicant whose name is firstmentioned in the application as having a place of business in India, is situate:
Where,after the acceptance of an application for registration of a trade mark butbefore 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 orshould be registered subject to conditions or limitations or to conditionsadditional to or different from the conditions or limitations subject to whichthe application has been accepted,
theRegistrar may, after hearing the applicant if he so desires, withdraw theacceptance and proceed as if the application had not been accepted.
(1)When an application for registration of a trade mark has been accepted whetherabsolutely or subject to conditions or limitations, the Registrar shall, as soonas may be after acceptance, cause the application as accepted together with theconditions or limitations, if any, subject to which it has been accepted, to beadvertised in the prescribed manner:
Providedthat the Registrar may cause the application to be advertised before acceptanceif it relates to a trade mark to which sub-section (1) of section 9 andsubsections (1) and (2) of section 11 apply, or in any other case where itappears to him that it is expedient by reason of any exceptional circumstancesso to do.
(2)Where--
(a)an application has been advertised before acceptance under sub-section (1); or
&n
(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, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application:
Provided that if an amendment is made to a single application referred to in subsection (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.
(1) Subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either--
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade mark 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 o
(1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except--
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of them are connected in the course of trade,
those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been
Section 24 of the Trade Marks Act, 1999, addresses the issue of jointly owned trademarks, clarifying the rights, limitations, and legal standing of multiple proprietors of a trade mark. It plays a crucial role in regulating the use and registration of trademarks owned by more than one person or entity, ensuring clarity in ownership and preventing misuse or infringement.
Section 24 stipulates that the registration of a trademark in the name of two or more persons does not confer exclusive rights to any one of them over the mark. It recognizes the possibility of joint ownership, with each owner having concurrent rights to use the mark, subject to certain conditions. The section also emphasizes that such registration does not create new rights but merely acknowledges pre-existing rights of the parties involved.
Section 24 primarily governs:- The registration process for jointly owned trademarks.- The rights and limitations of multiple proprietors.- The relationship between registration and prior user rights.- The legal standing of joint owners in infringement and passing off actions.- The recognition of concurrent rights, preventing one owner from claiming exclusive rights over the mark against others.
Section 24 itself does not prescribe specific punishments or penalties. Instead, violations related to infringement or misuse of jointly owned trademarks are punishable under the broader provisions of the Trade Marks Act, 1999, which include penalties such as fines and imprisonment for infringement, falsification, or unauthorized use.
In summary, Section 24 of the Trade Marks Act, 1999, ensures that joint ownership of trademarks is recognized without creating exclusive rights, emphasizing the importance of prior user rights and equitable use among co-owners. It promotes a balanced approach to trademark registration and use, safeguarding the interests of all parties involved.
(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 dat
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) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered
(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 id
(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 m
Section 30 of the Trade Marks Act, 1999, delineates the limitations and scope of the rights conferred by a registered trade mark. It balances the exclusive rights of the proprietor with the need to allow fair business practices, preventing undue restriction on legitimate uses of trademarks.
Section 30 specifies acts that do not constitute infringement of a registered trade mark, including use for descriptive purposes, fair use, and other circumstances where the use does not deceive or cause confusion. It emphasizes that registration does not grant absolute rights and that certain uses are permissible under specific conditions.
While Section 30 itself does not prescribe punishments, acts outside its scope may constitute infringement under Section 29, attracting remedies such as injunctions, damages, or account of profits under the broader framework of the Act.
"Scope of Section 30" - Section 30 delineates acts that do not amount to infringement, such as descriptive, fair, or honest use, balancing proprietary rights with fair business practices. [Section 30, Trade Marks Act, 1999]
"Use for descriptive purposes" - Use of a mark to describe the kind, quality, intended purpose, etc., of goods/services is permissible, preventing unjustified restriction of descriptive terms. [Section 30(2)(a)]
"Fair use" doctrine - Section 30(2)(e) permits fair use, including use of the mark in comparative advertising, explanatory, or informative contexts, provided it does not mislead consumers. [Section 30(2)(e)]
"No infringement when use is bona fide" - Use made in good faith and without intent to deceive is protected, emphasizing that malicious or dishonest use can still constitute infringement. [Section 30(2)]
"Use of common words" - Words that are descriptive, generic, or common to trade cannot be monopolized, and their use by others is permissible, as clarified in cases involving disclaimed terms. [Section 30(2)(d), Disclaimers in registration]
"Limitations on rights" - Registration does not confer absolute rights; acts like use of descriptive words or use for informational purposes are exceptions. [Section 30(3)]
"Use of trademarks in good faith" - Bona fide use for indicating characteristics or descriptive purposes is protected, preventing unjustified claims of infringement. [Section 30(2)]
"Impact of registration" - Registration creates a prima facie presumption of validity but does not prevent others from using descriptive or non-distinctive words legitimately. [Section 30(1)]
"Infringement vs. permissible use" - Section 30 emphasizes that permissible use does not infringe the mark, especially when it is not deceptive and not intended to pass off goods/services. [Section 30(1)]
"Trade practices and honest use" - The section aims to prevent abuse of rights and ensures that honest and bona fide uses are protected, fostering fair competition. [Section 30(2)(b)]
"Use in trade and commerce" - Use that merely indicates the nature or origin of goods, without claiming exclusive rights, is permissible. [Section 30(2)(a)]
"Legal interpretation" - Courts have consistently held that Section 30 restricts overbroad claims of infringement and recognizes public interest in descriptive and fair uses. [Judicial precedents]
"Trade mark rights and public interest" - The section balances proprietor’s rights with public interest, allowing descriptive or non-deceptive use without infringement claims. [Legal doctrine]
"Use for comparative advertising" - Under Section 30(1), use of a mark in comparative advertising to demonstrate superiority or difference is protected, provided it is not misleading. [Section 30(1)]
"Protection of non-distinctive marks" - Marks that are merely descriptive or common cannot be monopolized; their use by third parties is protected under Section 30. [Case law]
"Infringement and exceptions" - Section 30 provides exceptions to infringement, ensuring that legitimate, honest, and descriptive uses are not penalized, promoting free trade and competition. [Legal commentary]
"Legal safeguard for public interest" - The section acts as a safeguard ensuring that descriptive words and common trade terms remain accessible for all traders, preventing monopolization. [Legal principles]
"Injunctions and remedies" - Acts permissible under Section 30 typically do not attract injunctive relief unless they cross into deceptive or misleading use, respecting fair use doctrines. [Judicial rulings]
"Distinction from infringement" - The section clarifies that permitted acts are not infringement, provided they meet the criteria of honest, fair, and non-deceptive use. [Section 30(2)]
Section 30 of the Trade Marks Act, 1999, is a vital provision that delineates the boundaries of proprietary rights, ensuring that descriptive, fair, and honest use of trademarks is permissible, thereby fostering fair competition and preventing monopolization of common trade terms. Courts interpret this section to balance intellectual property rights with public interest, emphasizing that registration does not grant absolute rights and that non-deceptive, bona fide uses are protected under specific circumstances.
Note: The references are based on the provisions of the Act and judicial interpretations as discussed in the sources and case law summaries.
(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 beprima 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.
Section 31 of the Trade Marks Act, 1999, plays a pivotal role in establishing the legal standing of registered trademarks in India. It provides that registration of a trademark serves as prima facie evidence of its validity in legal proceedings, thereby simplifying the enforcement of trademark rights and reducing the burden of proof on the registrant. This section aligns Indian trademark law with international standards, emphasizing the importance of registration as a key factor in trademark protection.
Section 31 states that "Registration shall be prima facie evidence of the validity of the registered trademark." It implies that once a trademark is registered, it is presumed to be valid unless challenged and proved otherwise in a court of law. This presumption facilitates the enforcement of rights by the registered proprietor and streamlines legal proceedings related to infringement and validity disputes.
While Section 31 itself does not specify penalties, violations related to false representation of a trademark's validity or misuse can attract penalties under other provisions of the Act, including criminal sanctions for counterfeiting or false declarations. Offenders may face fines or imprisonment as prescribed under Sections 103 and 104 of the Act.
In conclusion, Section 31 of the Trade Marks Act, 1999, significantly enhances the enforceability of trademarks by establishing registration as prima facie evidence of validity. While it simplifies legal proceedings for trademark owners, it also maintains a balanced approach by allowing validity to be challenged with appropriate evidence, ensuring fairness and integrity in trademark law.
Where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered.
(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark--
(a) to apply for a declaration that the registrationof the later trade mark is invalid, or
(b) to oppose the use of the later trade mark inrelation 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 ear
Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved), toregister the second mentioned trade mark by
Section 34 of the Trade Marks Act, 1999, provides a crucial safeguard for prior users of trademarks, emphasizing the rights of individuals or entities who have used a mark continuously before the date of registration or use by others. It aims to balance the rights of registered proprietors with those who have established goodwill through prior use, ensuring fairness and preventing unjust enrichment.
Section 34 states that nothing in the Act shall entitle the proprietor or registered user of a 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 respect of which that person or a predecessor in title has continuously used that trade mark from a date prior to:- the use of the first-mentioned trade mark in relation to those goods/services, or- the date of registration of the first-mentioned trade mark, whichever is earlier.
It essentially preserves the rights of prior users against subsequent registered owners, acting as a defense to infringement actions.
While Section 34 itself does not prescribe penalties, infringement or misuse in violation of this section can lead to civil remedies such as injunctions, damages, and accounts of profits. Violations may also attract criminal penalties under other provisions of the Act, especially if coupled with fraudulent activities.
This comprehensive analysis underscores the importance of Section 34 as a vital safeguard for prior users of trademarks, ensuring that their longstanding goodwill and continuous use are protected against subsequent registration and infringement, thereby promoting fairness in trademark law.
Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with anybona 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 theplace of business, of any of his predecessors in business, or the use by any person of anybona fide description of the character or quality of his goods or services.
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance or service:
Provided that, if it is proved either--
(a) that there is a well known and established use of the said word as the name or description of the article or substance or service by a person or persons carrying on trade therein, not being used in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified by the proprietor; or
(b) that the article or substance was formerly
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.
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.
Section 38 of the Trade Marks Act, 1999, deals with the assignability and transmissibility of registered trademarks in India. It establishes the legal framework for transferring ownership rights of trademarks, ensuring clarity and protection for both the trademark owner and third parties.
Section 38 states that a registered trademark shall, subject to the provisions of the Act, be assignable and transmissible, whether with or without the goodwill of the business. This means that ownership rights can be transferred through assignment or transmission, facilitating commercial transactions and inheritance.
While Section 38 itself does not specify penalties, violations related to improper assignment or transmission can lead to legal consequences under the broader provisions of the Trade Marks Act, including penalties for false representation or infringement.
Note: The penalties for violations related to improper transfer or false representation are addressed under other sections of the Act, such as Section 107, which prescribes penalties for false statements and infringement.
This commentary synthesizes legal principles from the Trade Marks Act, 1999, and relevant case law, providing a comprehensive understanding of Section 38.
An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.
(1) Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to--
(a) same goods or services;
(b) same description of goods or services;
(c) goods or services or description of goods or services which are associated with each other,
of trade marks nearly resembling each other or of identical trade mark, if having regard to the similarity of the goods and services and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be likely to d
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
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:--
&nb
A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which application shall be made in writing in the prescribed manner.
Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trade marks.
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register:
Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.
(2) Except for the purpose of an application before the Registrar under sub-section (1) or a
(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-
(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 fideintention 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 nobona 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 th
(1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trade mark is registered.
(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any other purpose for which such use is material under this Act or any other law.
(1) Where it is proposed that a person should be registered as a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be accompanied by--
(a) the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark; and
(b) an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf,--
(i) giving particulars of the relationship, existing or proposed, between the registered proprietor and the proposed registered user, including particulars showing the degree
(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
(1) The Registrar may, at any time during the continuance of the registration of the registered user, by notice in writing, require the registered proprietor to confirm to him within one month that the agreement filed under clause (a) of subsection (1) of section 49 continues to be in force.
(2) If the registered proprietor fails to furnish the confirmation within one month as required under sub-section (1), the registered user shall cease to be the registered user on the day immediately after the expiry of the said period and the Registrar shall notify the same.
(1) Subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered proprietor a defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding for any infringement.
Nothing in this Act shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.
Explanation I.--The right of a registered user of a trade mark shall not be deemed to have been assigned or transmitted within the meaning of this section in the following cases, namely:--
(a) where the registered user being an individual enters into a partnership with any other person for carrying on the business concerned; but in any such case the firm may use the trade mark, if otherwise in force, only for so long as the registered user is a member of the firm;
(b) where the registered user being a firm subsequently undergoes a change in its constitution; but in any such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long as
(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.
(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 a
(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 qu
(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 t
(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3) Where leave is granted under this section, the trade mark as altered shall be adverti
(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 ma
(1) The provisions of this Act shall apply to collective marks subject to the provisions contained in this Chapter.
(2) In relation to a collective mark the reference in clause (zb) of sub-section (1) of section 2 to distinguishing the goods or services of one person from those of others shall be construed as a reference to distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.
A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of public in particular if it is likely to be taken to be something other than a collective mark, and in such case the Registrar may require that a mark in respect of which application is made for registration comprises some indication that it is a collectivemark.
(1) An application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark.
(2) The regulations referred to in sub-section (1) shall specify the persons authorised to use the mark, the conditions of membership of the association and, the conditions of use of the mark, including any sanctions against misuse and such other matters as may be prescribed.
If it appears to the Registrar that the requirements for registration are satisfied, he shall accept the application together with the regulations, either unconditionally or subject to such conditions including amendments of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted shall notify the regulations.
The regulations referred to in sub-section (1) of section 63 shall be open to public inspection in the same way as the register as provided in section 148.
Any amendment of regulations referred to in subsection (1) of section 63 shall not be effective unless the amended regulations are filed with the Registrar, and accepted and published by him in accordance with section 64.
In a suit for infringement instituted by the registered proprietor of a collective mark as plaintiff the court shall take into account any loss suffered or likely to be suffered by authorised users and may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such authorised users.
The registration of a collective mark may also be removed from the register on the ground--
(a) that the manner in which the collective mark has been used by the proprietor-or authorised user has caused it to become liable to mislead the public as a collective mark; or
(b) that the proprietor has failed to observe, or to secure the observance of the . regulations governing the use of the mark.
Explanation I.--For the purposes of this Chapter, unless the context otherwise requires, "authorised user" means a member of an association authorised to use the registered collective mark of the association.
Explanation II.--For the purposes of this Act, use of a collective mark by an authorised user referred to inExplanation I shall be deemed to be the use b
The following provisions of this Act shall not apply to certification trade marks, that is tosay,--
(a) clauses (a) and (c) of sub-section (1) of section 9;
(b) sections 18,20 and 21, except as expressly applied by this Chapter;
(c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56;
(d) Chapter XII, except section 107.
A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the provision of services of the kind certified.
(1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 74.
(2) Subject to the provisions of section 70, the provisions of sections 18, 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that references therein to acceptance of an application shall be construed as references toauthorization to proceed with an application.
(3) In dealing under the said provision with an application under this section, the tribunal shall have regard to the like considerations, so far as relevant, as if the application were applic
(1) The Registrar shall consider the application made under section 71 withregard 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 o
When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the provisions of section 21 shall apply in relation to the registration of the mark as they apply in relation to an application under section 18.
(1) There shall be filed at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods or services and to authorise the use of the certification trade mark, and may contain any other provisions which the Registrar may by general or special order, require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the certification trade mark in accordance with the regulations); and regulations so filed shall be open to inspection in like manner as the register as provided in section 148.
(2) The regulations so filed may, on the application of the registered proprietor, be altered by the Registrar.<
The right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorised by him in that behalf under the regulations filed under section 74, using it in accordance therewith, uses in the course of trade, a mark, which is identical with, or deceptively similar to the certification trade mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a trade mark.
(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered certification trade mark--
(a) where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, or in relation to goods to be exported to any market or in relation to services for use or available for acceptance in any place, country or territory or in any other circumstances, to which having regard to any such limitations, the registration does not extend;
(b) the use of a certification trade mark in relation to goods or services certified by the proprietor of the mark if, as to those goods or services or a bulk of which they form part, the prop
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 publ
(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.
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 capable of distinguishing;
(c) the registration of trade mark shall not give any exclusive right to the use of a line heading.
(2) In respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.
(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, without being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in India of the piece.
(1) For the purposes of this Act, the Central Government may make rules--
(a) to provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, gauge or weight, for the number of samples to be selected and tested and for the selection of the samples;
(b) to provide, for the manner in which for the purposes of section 81 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dying or finishing of cotton yarn or cotton thread from the provisions of that section; and
(c) declaring what classes of goods are included in the expression "piece goods such as are ordinarily sold by length or by the piece" for the purpose of section 81, of this
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.
_________________________
1. Intellectual Property Appellate Board established(w.e.f. 15th September, 2003)vide S.O. 1049 (E), dated 15-9-2003, published in the Gazette of India, Extra., Pt. II,section 3(ii), dated 15th September, 2003.
(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 provision's of this Act, the jurisdiction, powers and authority of the Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the 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 T
(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 me
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.
(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.
(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.
(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 provedmisbehaviors 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
(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 functionsunder the general superintendence of the Chairman in the manner as may be prescribed.
(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules madethere under 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 o
(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
&nb
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.
On ceasing to hold office, the Chairman, Vice-Chairman or other Members shall not appear before the Appellate Board or the Registrar.
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.
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.
(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.
(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 shal
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.
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 thedate1 as notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter eitherdc novo or from the stage it was so transferred.
___________________________
1. 6th October, 2003 vide S.O. 1150 (E), dated 1st October, 2003, published in the Gazette of India, Extra., Pt. II,Section 3(ii), dated 1st October, 2003.
(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
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) tam
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
&
Whoever having already been convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees:
Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees:
Provided further that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.
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.
(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.
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.
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.
The provisions of sections 102, 103, 104 and 105 shall, in relation to a registered trade mark or proprietor of such mark, be subject to the rights created or recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections if,--
(a) the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and
(b) the alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law for the time being in force.
(1) Where a person is convicted of an offence under section 103 or section 104 or section 105 or is acquitted of an offence under section 103 or section 104 on proof that he acted without intent to defraud, or under section 104 on proof of the matters specified in clause (a), clause (b) or clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed, or but for such proof as aforesaid would have been committed.
(2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.
(3) When a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal agai
Where a person accused of an offence under section 103 proves--
(a) that in the ordinary course of his business he is employed on behalf of other persons to apply trade marks or trade descriptions, or as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making, trade marks; and
(b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other thing by way of profit or commission dependent on the sale of such goods or providing of services, as the case may be; and
(c) that, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark or trade descr
(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 facietenable, 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 sh
(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 a
(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)
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, beprima facie evidence of the place or country in which the goods are made or produced.
In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deems reasonable having regard to all the circumstances of the case and the conduct of the parties and the costs so awarded shall be recoverable as if they were a fine.
No prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under clause (d) of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of the said Act for the protection of trade marks, relating to import of goods shall be commenced after expiration of three years next after the commission of the offence charged, or two years after the discovery thereof by the prosecutor, whichever expiration first happens.
An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.
If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in that place the act which he abetted.
The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight which are to be recognized by criminal courts as permissible in the case of any goods.
No suit or other legal proceedings shall lie against any person in respect of anything which is in good faith done or intended to be done in pursuance of this Act.
Every person appointed under this Act 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).
(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 reg
Section 124 of the Trade Marks Act, 1999, provides a procedural mechanism for courts to stay infringement proceedings when the validity of a trade mark is questioned or pending rectification or cancellation proceedings are underway. It aims to prevent conflicting litigations and ensure that the validity of the trade mark is determined by the appropriate authority before substantive rights are adjudicated in infringement suits.
Section 124 delineates the circumstances under which a court can stay proceedings in a suit for infringement of a trade mark:- When the defendant pleads that the registration of the plaintiff’s trade mark is invalid.- When the defendant raises a defense under specific provisions (e.g., Section 30(2)(e)).- When proceedings for rectification or cancellation are pending before the Registrar or the IPAB.- When the court is satisfied that the plea of invalidity is prima facie tenable.
The section emphasizes that the stay is discretionary and depends on the prima facie tenability of the invalidity plea.
Section 124 of the Trade Marks Act, 1999, serves as a vital procedural instrument to streamline trade mark disputes, ensuring that the validity of a trade mark is settled by the appropriate authority before the infringement rights are adjudicated. Its discretionary nature requires courts to carefully assess the prima facie tenability of invalidity pleas, balancing judicial economy with the rights of the parties. Despite judicial debates and evolving jurisprudence, the core principle remains that validity issues should be settled by the competent tribunal to prevent conflicting judgments and unnecessary litigation.
Note: All references are based on the provided sources and case law summaries.
(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 to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any st
Where a mark or a trade mark or trade description has been applied to the goods on sale or in the contract for sale of any goods or in relation to any service, the seller shall be deemed to warrant that the mark is a genuine mark and not falsely applied, or that the trade description is not a false trade description within the meaning of this Act unless the contrary is expressed in writing signed by or on behalf of the seller and delivered at the time of the sale of goods or providing of services on contract to and accepted by the buyer.
In all proceedings under this Act before the Registrar,--
(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing the attendance ofwitnesses, 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;
Subject to the provisions of section 131, the Registrar shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within the prescribed time) giving to the person an opportunity of being heard.
In any proceeding under this Act before the Registrar, evidence shall be given by affidavit:
Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit.
If a person who is a party to a proceeding under this Act (not being a proceeding before 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.
(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.
Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.
(1) The Registrar may, on application made to him in the prescribed manner by any person who proposes to apply for the registration of a trade mark, give advice as to whether the trade mark appears to him prima facie to be distinctive.
(2) If, on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative made within three months after the advice was given, the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not distinctive, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.
(1) No suit--
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose
(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 anex 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 a
(1) In every proceeding under Chapter VII or under section 91, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, shall be made a party to the proceeding.
(2) Notwithstanding anything contained in any other law, a registered user so made a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding.
(1) A copy of any entry in the register or of any document referred to in sub-section (1) of section 148 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall beprima facie evidence of the entry having been made, and of the contents thereof, or of the matter or things having been done or not done.
The Registrar or any officer of the Trade Marks Registry shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special cause.
(1) The Central Government may, by notification in the Official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of India and imported into India, or, which are made or produced within the limits of India, shall, from such date as may be appointed by the notification not being less than three months from its issue, have applied to them an indication of the country or place in which they were made or produced, or of the name and address of the manufacturer or the person for whom the goods were manufactured.
(2) The notification may specify the manner in which such indication shall be applied that is to say, whether to goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessary, that is to say, whether on importation only, or also at the time of sale,
(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
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.
(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.
An address for service stated in an application or notice of opposition shall for the purposes of the application or notice of opposition be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.
In any proceeding relating to a trade mark, the 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.
Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is--
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a trade marks agent, or
(c) a person in the sole and regular employment of the principal.
If an agent or a representative of the proprietor of a registered trade mark, without authority uses or attempts to register or registers the mark in his own name, the proprietor shall be entitled to oppose the registration applied for or secure its cancellation or rectification of the register so as to bring him as the registered proprietor of the said mark by assignment in his favour:
Provided that such action shall be taken within three years of the registered proprietor of the trade mark becoming aware of the conduct of the agent or representative.
There shall be kept under the direction and supervision of the Registrar--
(a) an index of registered trade marks,
(b) an index of trade marks in respect of which applications for registration are pending,
(c) an index of the names of the proprietors of registered trade marks, and
(d) an index of the names of registered users.
(1) Save as otherwise provided in subsection (4) of section 49,--
(a) the register and any document upon which any entry in the register is based;
(b) every notice of opposition to the registration of a trade mark application for rectification before the Registrar, counter-statement thereto, and any affidavit or document filed by the parties in any proceedings before the Registrar;
(c) all regulations deposited under section 63 or section 74, and all applications under section 66 or section 77for varying such regulations;
(d) the indexes mentidned in section 147; and
(e) such other documents as the Central Government may, by notification in the Official Gazette, specify,
&
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 and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fee has been paid.
(3) Where a fee is payable in respect of the filing of a document at the Trade Marks Registry, the document shall be deemed not to have been filed at the registry until the fee has been paid.
Nothing in Chapter XII shall--
(a) exempt any person from any suit or other proceeding which might, but for anything in mat Chapter, be brought against him; or
(b) entitle any person to refuse to make a complete discovery, or to answer any question or interrogatory in any suit or other proceeding, but such discovery or answer shall not be admissible in evidence against such person in any such prosecution for an offence under that Chapter or against clause (h) of section 112 of the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under clause (d) of section 111 of that Act and notified by the Central Government under clause (n) of sub-section (2) of section 11 thereof for the protection of trade marks relating to import of goods; or
(c) be construed so as to render liable to an
Notwithstanding anything contained in the Registration Act, 1908 (16 of 1908), no document declaring or purporting to declare the ownership or title of a person to a trade mark other than a registered trade mark shall be registered under that Act.
The provisions of this Act shall be binding on the Government.
(1) With a view to the 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 Organisations as the case may be, for the purposes of this Act.
(2) Where a person has made an application for the registration of a trade mark in a convention country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation and that person, or his legal representative or assi
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
(1) If any difficulty arises in giving effect to the provisions of this Act, the Central Government may, by order published in the Official Gazette, make such provisions not inconsistent with the provisions of this Act as may appear to be necessary for removing the difficulty:
Provided that no order shall be made under this section after the expiry of five years from the commencement of this Act.
(2) Every order made under this section shall, as soon as may be after it is made, be laid before each House of Parliament.
(1) The Central Government may, by notification in the Official Gazette and subject to the conditions of previous publication, make rules to carry out the provisions of this Act.
(2) In particular, and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:--
(i) the matters to be included in the Register of Trade Marks under sub-section (1) of section 6, and the safeguards to be observed in the maintenance of records on computer floppies or diskettes or in any other electronic form under sub-section (2) of that section;
(ii) the manner of publication of alphabetical index of classification of goods and services under sub-section (1) of section 8;
(iii) the manner in which t
The enactment specified in the Schedule shall be amended in the manner specified therein.
(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall, if in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.
(3) The provisions of this Act shall apply to any application for registration of a trade mark pending at the commencement of this Act and to any proceedings consequent thereon and to any registration grant
(See section 158)
AMENDMENTS
Year Act No. Short title Amendment
(1) (2) (3) (4)
1956 1 The Companies (I) In section 20, for sub-section (2), the following sub-sections shall be substituted, namely:--
(2) Without prejudice to the generality of the foregoing power, a name which is identical with, or too nearly resembles,--
(i) the name by which a company in existence has been previously registered, or
(ii) a registered trade mark, or a trade mark which is subject of an application for registration, o) any other person under the Trade Marks Act, 1999;
may be deeme
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