THE TRADE MARKS ACT, 1999
ACT No. 47 OF 1999
30thDecember, 1999
An Act to amend and consolidate the law relating to trade marks,to provide for registration and better protection of trade marks for goods andservices and for the prevention of the use of fraudulent marks.
BE it enacted by Parliament inthe Fiftieth Year of the Republicof India as follows: -
CHAPTER I
Preliminary
1.Short title, extent andcommencement: (1) ThisAct may be called the Trade Marks Act, 1999.
(2) It extends to the whole of India.
(3) It shall come into force onsuch date as the Central Government may, by notification in the OfficialGazette, appoint:
Provided that different datesmay be appointed for different provisions of this Act, and any reference in anysuch provision to the commencement of this Act shall be construed as areference to the coming into force of that provision.
2.Definitions andinterpretation: (1) Inthis Act, unless the context otherwise requires, -
(a) "Appellate Board"means the Appellate Board established under section 83;
(b) "assignment"means an assignment in writing by act of the parties concerned;
(c) "associated trademarks" means trade marks deemed to be, or required to be, registered asassociated trade marks under this Act;
(d) "Bench" means aBench of the Appellate Board;
(e) "certification trademark" means a mark capable of distinguishing the goods or services inconnection with which it is used in the course of trade which are certified bythe proprietor of the mark in respect of origin, material, mode of manufactureof goods or performance of services, quality, accuracy or other characteristicsfrom goods or services not so certified and registrable as such under ChapterIX in respect of those goods or services in the name, as proprietor of thecertification trade mark, of that person;
(f) "Chairman" meansthe Chairman of the Appellate Board;
(g) "collective mark"means a trade mark distinguishing the goods or services of members of anassociation of persons (not being a partnership within the meaning of theIndian Partnership Act, 1932) (9 of 1932) which is the proprietor of the markfrom those of others;
(h) "deceptivelysimilar". – A mark shall be deemed to be deceptively similar to anothermark if it so nearly resembles that other mark as to be likely to deceive orcause confusion;
(i) "false tradedescription" means -
(I) a trade description whichis untrue or misleading in a material respect as regards the goods or servicesto which it is applied; or
(II) any alteration of a tradedescription as regards the goods or services to which it is applied, whether byway of addition, effacement or otherwise, where that alteration makes thedescription untrue or misleading in a material respect; or
(III) any trade description whichdenotes or implies that there are contained, as regards the goods to which itis applied, more yards or metres than there are contained therein standardyards or standard metres; or
(IV) any marks or arrangementor combination thereof when applied -
(a) to goods in such a manneras to be likely to lead persons to believe that the goods are the manufactureor merchandise of some person other than the person whose merchandise ormanufacture they really are;
(b) in relation to services insuch a manner as to be likely to lead persons to believe that the services areprovided or rendered by some person other than the persons whose services theyreally are; or
(V) any false name or initialsof a person applied to goods or services in such manner as if such name orinitials were a trade description in any case where the name or initials -
(a) is or are not a trade markor part of a trade mark; and
(b) is or are identical with ordeceptively similar to the name or initials of a person carrying on business inconnection with goods or services of the same description or both and who hasnot authorised the use of such name or initials; and
(c) is or are either the nameor initials of a fictitious person or some person not bona fide carrying onbusiness in connection with such goods or services,
and the fact that a tradedescription is a trade mark or part of a trade mark shall not prevent suchtrade description being a false trade description within the meaning of thisAct;
(j) "goods" meansanything which is the subject of trade or manufacture;
(k) "Judicial Member"means a Member of the Appellate Board appointed as such under this Act, andincludes the Chairman and the Vice-Chairman;
(l) "limitations"(with its grammatical variations) means any limitation of the exclusive rightto the use of a trade mark given by the registration of a person as proprietorthereof, including limitations of that right as to mode or area of use withinIndia or outside India;
(m) "mark" includes adevice, brand, heading, label, ticket, name, signature. word, letter, numeral,shape of boxes, packaging or combination of colours or any combination thereof;
(n) "Member" means aJudicial Member or a Technical Member of the Appellate Board and includes theChairman and the Vice-Chairman;
(o) "name" includesany abbreviation of a name;
(p) "notify" means tonotify in the Trade Mark journal published by the Registrar;
(q) "package"includes any case, box, container, covering, folder, receptacle, vessel,casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid,stopper and cork;
(r) "permitted use",in relation to a registered trade mark, means the use of trade mark -
(i) by a registered user of thetrade mark in relation to goods or services
(a) with which he is connectedin the course of trade; and
(b) in respect of which thetrade mark remains registered for the time being; and
(c) for which he is registeredas registered user; and
(d) which complies with anyconditions or limitations to which the registration of registered user issubject; or
(ii) by a person other than theregistered proprietor and registered user in relation to goods or services -
(a) with which he is connectedin the course of trade; and
(b) in respect of which thetrade mark remains registered for the time being; and
(c) by consent of suchregistered proprietor in a written agreement; and
(d) which complies with anyconditions or limitations to which such user is subject and to which theregistration of the trade mark is subject;
(s) "prescribed"means prescribed by rules made under this Act;
(t) "register" meansthe Register of Trade Marks referred to in sub-section (1) of section 6;
(u) "registered"(with its grammatical variations) means registered under this Act;
(v) "registeredproprietor", in relation to a trade mark, means the person for the timebeing entered in the register as proprietor of the trade mark;
(w) "registered trademark" means a trade mark which is actually or the register and remainingin force;
(x) "registered user"means a person who is for the time being registered as such under section 49;
(y) "Registrar" meansthe Registrar of Trade Marks referred to in section 3;
(z) "service" meansservice of any description which is made available to potential users andincludes the provision of services in connection with business of anyindustrial or commercial matters such as banking, communication, education,financing, insurance, chit funds, real estate, transport, storage, materialtreatment, processing, supply of electrical or other energy, boarding, lodging,entertainment, amusement, construction, repair, conveying of news orinformation and advertising;
(za) "tradedescription" means any description, statement or other indication, director indirect, -
(i) as to the number, quantity,measure, gauge or weight of any goods; or
(ii) as to the standard ofquality of any goods or services according to a classification commonly used orrecognised in the trade; or
(iii) as to fitness for thepurpose, strength, performance or behaviour of any goods, being"drug" as defined in the Drugs and Cosmetics Act, 1940, (23 of 1940)or "food" as defined in the Prevention of Food Adulteration Act, 1954(37 of 1954); or
(iv) as to the place or countryin which or the time at which any goods or services were made, produced orprovided, as the case may be; or
(v) as to the name and addressor other indication of the identity of the manufacturer or of the personproviding the services or of the person for whom the goods are manufactured orservices are provided; or
(vi) as to the mode ofmanufacture or producing any goods or providing services; or
(vii) as to the material ofwhich any goods are composed; or
(viii) as to any goods beingthe subject of an existing patent, privilege or copyright, and includes -
(a) any description as to theuse of any mark which according to the custom of the trade is commonly taken tobe an indication of any of the above matters;
(b) the description as to anyimported goods contained in any bill of entry or shipping bill;
(c) any other description whichis likely to be misunderstood or mistaken for all or any of the said matters;
(zb) "trade mark" means a mark capable ofbeing represented graphically and which is capable of distinguishing the goodsor services of one person from those of others and may include shape of goods,their packaging and combination of colours; and
(i) in relation to Chapter XII(other than section 107), a registered Trade mark or a mark used in relation togoods or services for the purpose of indicating or so as to indicate aconnection in the course of trade between the goods or services, as the casemay be, and some person having the right as proprietor to use the mark; and
(ii) in relation to otherprovisions of this Act, a mark used or proposed to be used in relation to goodsor services for the purpose of indicating or so to indicate a connection in thecourse of trade between the goods or services, as the case may be, and someperson having the right, either as proprietor or by way of permitted user, touse the mark whether with or without any indication of the identity of thatperson, and includes a certification trade mark or collective mark;
(zc) "transmission" means transmission byoperation of law, devolution on the personal representative of a deceasedperson and any other mode of transfer, not being assignment;
(zd) "Technical Member" means a Member who isnot a Judicial Member;
(ze) "tribunal" means the Registrar or, as thecase may be, the Appellate Board, before which the proceeding concerned ispending;
(zf) "Vice-Chairman" means a Vice-Chairman ofthe Appellate Board;
(zg) "well-known trademark", in relation to any goods or services, means a mark which has becomeso to the substantial segment of the public which uses such goods or receivessuch services that the use of such mark in relation to other goods or serviceswould be likely to be taken as indicating a connection in the course of tradeor rendering of services between those goods or services and a person using themark in relation to the first-mentioned goods or services.
(2) In this Act, unless thecontext otherwise requires, any reference -
(a) to "trade mark"shall include reference to "collective mark" or "certificationtrade mark";
(b) to the use of a mark shallbe construed as a reference to the use of printed or other visualrepresentation of the mark;
(c) to the use of a mark, -
(i) in relation to goods, shallbe construed as a reference to the use of the mark upon, or in any physical orin any other relation whatsoever, to such goods;
(ii) in relation to services,shall be construed as a reference to the use of the mark as or as part of anystatement about the availability, provision ": performance of such services;
(d) to the Registrar shall beconstrued as including a reference to any officer when discharging thefunctions of the Registrar in pursuance of sub-section (2) of section 3;
(e) to the Trade Marks Registryshall be construed as including a reference to any office of the Trade MarksRegistry.
(3) For the purposes of thisAct goods and services are associated with each other if it is likely thatthose goods might be sold or otherwise traded in and those services might beprovided by the same business and so with descriptions of goods anddescriptions of services.
(4) For the purposes of thisAct, "existing registered trade mark" means a trade mark registeredunder the Trade and Merchandise Marks Act, 1958 (43 of 1958) immediately beforethe commencement of this Act.
CHAPTER II
The Register and Conditions for Registration
3.Appointment of Registrar andother officers: (1) TheCentral Government may, by notification in the Official Gazette, appoint aperson to be known as the Controller-General of Patents, Designs and TradeMarks, who shall be the Registrar of Trade Marks for the purposes of this Act.
(2) The Central Government mayappoint such other officers with such designations as it thinks fit for thepurpose of discharging, under the superintendence and direction of theRegistrar, such functions of the Registrar under this Act as he may from timeto time authorise them to discharge.
4.Power of Registrar towithdraw or transfer cases, etc.: Without prejudice to the generality of the provisions ofsub-section (2) of section 3, the Registrar may, by order in writing and forreasons to be recorded therein, withdraw any matter pending before an officerappointed under the said sub-section (2) and deal with such matter himselfeither de novo or from the stage it was so withdrawn or transfer the same toanother officer so appointed who may, subject to special directions in theorder of transfer, proceed with the matter either de navo or from the stage itwas so transferred.
5.Trade Marks Registry andofficers thereof: (1) For the purposes of this Act, there shall be a trade marksregistry and the Trade Marks Registry established under the Trade andMerchandise Marks Act, 1958 (43 of 1958) shall be the Trade Marks Registryunder this Act.
(2) The head office of the TradeMarks Registry shall be at such place as the Central Government may specify,and for the purpose of facilitating the registration of trade marks, there maybe established at such places as the Central Government may think fit branchoffices of the Trade Marks Registry.
(3) The Central Government may,by notification in the Official Gazette, define the territorial limits withinwhich an office of the Trade Marks Registry may exercise its functions.
(4) There shall be a seal ofthe Trade Marks Registry.
6.The Register of Trade Marks: (1) For the purposes of thisAct, a record called the Register of Trade Marks shall be kept at the headoffice of the Trade Marks Registry, wherein shall be entered all registeredtrade marks with the names, addresses and description of the proprietors,notifications of assignment and transmissions, the names, addresses anddescriptions of registered users, conditions, limitations and such other matterrelating to registered trade marks as may be prescribed.
(2) Notwithstanding anythingcontained in sub-section (1), it shall be lawful for the Registrar to keep therecords wholly or partly in computer floppies diskettes or in any otherelectronic form subject to such safeguards as may be prescribed.
(3) Where such register ismaintained wholly or partly on computer under sub-section (2) any reference inthis Act to entry in the register shall be construed as the reference to anyentry as maintained on computer or in any other electronic form.
(4) No notice of any trust,express or implied or constructive, shall be entered in the register and nosuch notice shall be receivable by the Registrar.
(5) The register shall be keptunder the control and management of the Registrar.
(6) There shall be kept at eachbranch office of the Trade Marks Registry a copy of the register and such ofthe other documents mentioned in section 148 as the Central Government may, bynotification in the Official Gazette, direct.
(7) The Register of TradeMarks, both Part A and Part B, existing at the commencement of this Act, shallbe incorporated in and form part of the register under this Act.
7.Classification of goods andservices: (1) The Registrar shall classify goods and services, as far as maybe, in accordance with the International classification of goods and servicesfor the purposes of registration of trade marks.
(2) Any question arising as tothe class within which any goods or services falls shall be determined by theRegistrar whose decision shall be final.
8.Publication of alphabeticalindex: (1) The Registrar may publishin the prescribed manner an alphabetical index of classification of goods andservices referred to in section 7.
(2) Where any goods or servicesare not specified in the alphabetical index of goods and services publishedunder sub-section (1), the classification of goods or services shall bedetermined by the Registrar in accordance with sub-section (2) of section 7.
9.Absolute grounds for refusalof registration: (1) The trade marks -
(a) which are devoid of any distinctivecharacter, that is to say, not capable of distinguishing the goods or servicesof one person from those of another person;
(b) which consist exclusivelyof marks or indications which may serve in trade to designate the kind,quality, quantity, intended purpose, values, geographical origin or the time ofproduction of the goods or rendering of the service or other characteristics ofthe goods or service;
(c) which consist exclusivelyof marks or indications which have become customary in the current language orin the bona fide and established practices of the trade,
shall not be registered:
Provided that a trade markshall not be refused registration if before the date of application forregistration it has acquired a distinctive character as a result of the usemade of it or is a well-known trade mark.
(2) A mark shall not beregistered as a trade mark if -
(a) it is of such nature as todeceive the public or cause confusion;
(b) it contains, or comprisesof any matter likely to hurt the religious susceptibilities of any class orsection of the citizens of India;
(c) it comprises or containsscandalous or obscene matter;
(d) – its use is prohibitedunder the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of1950).
(3) A mark shall not beregistered as a trade mark if it consists exclusively of -
(a) the shape of goods whichresults from the nature of the goods themselves; or
(b) the shape of goods which isnecessary to obtain a technical result; or
(c) the shape which givessubstantial value to the goods.
Explanation: – For the purposesof this section, the nature of goods orservices in relation the trade mark is used or proposed to be used shall not bea ground for refusal of registration.
10.Limitation as to colour: (1) A trade mark may be limitedwholly or in part to any combination of colours and any such limitation shallbe taken into consideration by the tribunal having to decide on the distinctivecharacter of the trade mark.
(2) So far as a trade mark isregistered without limitation of colour, it shall be deemed to be registeredfor all colours.
11.Relative grounds for refusalof registration: (1) Save as provided in section 12, a trade mark shall not beregistered if, because of -
(a) its identity with an earliertrade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to anearlier trade mark and the identity or similarity of the goods or servicescovered by the trade mark,
there exists a likelihood ofconfusion on the part of the public, which includes the likelihood ofassociation with the earlier trade mark.
(2) A trade mark which -
(a) is identical with orsimilar to an earlier trade mark; and
(b) is to be registered forgoods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor,
shall not be registered if orto the extent the earlier trade mark is a well-known trade mark in India andthe use of the later mark without due cause would take unfair advantage of orbe detrimental to the distinctive character or repute of the earlier trademark.
(3) A trade mark shall not beregistered if, or to the extent that, its use in India is liable to beprevented -
(a) by virtue of any law inparticular the law of passing off protecting an unregistered trade mark used inthe course of trade; or
(b) by virtue of law ofcopyright.
(4) Nothing in this sectionshall prevent, the registration of, a trade mark where the proprietor of theearlier trade mark or other earlier right consents to the registration,and such case the Registrar mayregister the mark under special circumstances under section 12.
Explanation: – For the purposesof this section, earlier trade mark means -
(a) a registered trade mark orconvention application referred to in section 154 which has a date ofapplication earlier than that of the trade mark in question, taking account,where appropriate, of the priorities claimed in respect of the trade marks;
(b) a trade mark which, on thedate of the application for registration of the trade mark in question, orwhere appropriate, of the priority claimed in respect of the application, wasentitled to protection as a well-known trade mark.
(5) A trade mark shall not berefused registration on the grounds specified in sub-sections (2) and (3),unless objection on any one or more of those grounds is raised in oppositionproceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall, whiledetermining whether a trade mark is a well-known trade mark, take into accountany fact which he considers relevant for determining a trade mark as awell-known trade mark including -
(i) the knowledge orrecognition of that trade mark in the relevant section of the public includingknowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent andgeographical area of any use of that trade mark;
(iii) the duration, extent andgeographical area of any promotion of the trade mark, including advertising orpublicity and presentation, at fairs or exhibition of the goods or services towhich the trade mark applies;
(iv) the duration andgeographical area of any registration of or any application for registration ofthat trade mark under this Act to the extent they reflect the use orrecognition of the trade mark;
(v) the record of successfulenforcement of the rights m that trade mark, in particular, the extent to whichthe trade mark has been recognised as a well-known trade mark by any court orRegistrar under that record.
(7) The Registrar shall, whiledetermining as to whether a trade mark is known or recognised in a relevantsection of the public for the purposes of sub-section (6), take into account -
(i) the number of actual orpotential consumers of the goods or services;
(ii) the number of personsinvolved in the channels of distribution of the goods or services;
(iii) the business circlesdealing with the goods or services, to which that trade mark applies.
(8) Where a trade mark has beendetermined to be well-known in at least one relevant section of the public inIndia by any court or Registrar, the Registrar shall consider that trade markas a well-known trade mark for registration under this Act.
(9) The Registrar shall notrequire as a condition, for determining whether a trade mark is a well-knowntrade mark, any of the following, namely: -
(i) that the trade mark hasbeen used in India;
(ii) that the trade mark hasbeen registered;
(iii) that the application forregistration of the trade mark has been filed in India;
(iv) that the trade mark
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which anapplication for registration has been fifed in, any jurisdiction other thanIndia; or
(v) that the" trade markis well-known to the public at large in India.
(10) While considering anapplication for registration of a trade mark and opposition filed in respectthereof, the Registrar shall-
(i) protect a well-known trademark against the identical or similar trade marks;
(ii) take into considerationthe bad faith involved either of the applicant or the opponent affecting theright relating to the trade mark.
(11) Where a trade mark hasbeen registered in good faith disclosing the material informations to the Registraror where right to a trade mark has been acquired through use in good faithbefore the commencement of this Act, then, nothing in this Act shall prejudicethe validity of the registration of that trade mark or right to use that trademark on the ground that such trade mark is identical with or similar to awell-known trade mark.
12.Registration in the case ofhonest concurrent use, etc.: In the case of honest concurrent use or of other specialcircumstances 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 markswhich are identical or similar (whether any such trade mark is alreadyregistered or not) in respect of the same or similar goods or services, subjectto such conditions and limitations, if any, as the Registrar may think fit toimpose.
13.Prohibition of registrationof names of chemical elements or international non-proprietory names: No word -
(a) which is the commonly usedand accepted name of any single chemical element or any single chemicalcompound (as distinguished from a mixture) in respect of a chemical substanceor preparation, or
(b) which is declared by theWorld Health Organisation and notified in the prescribed manner by theRegistrar from time to time, as an international non-proprietary name or whichis deceptively similar to such name,
shall be registered as a trademark and any such registration shall be deemed for the purpose of section 57 tobe an entry made in the register without sufficient cause or an entry wronglyremaining on the register, as the circumstances may require.
14.Use of names andrepresentations of living persons or persons recently dead: Where an application is madefor the registration of a trade mark which falsely suggests a connection withany living person, or a person whose death took place within twenty years priorto the date of application for registration of the trade mark, the Registrarmay, before he proceeds with the application require the applicant to furnishhim 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 appearingon the trade mark, and may refuse to proceed with the application unless theapplicant furnishes the registrar with such consent.
15.Registration of parts oftrade marks and of trade marks as a series: (1) Where the proprietor of a trade mark claims tobe entitled to the exclusive use of any part thereof separately, he may applyto register the whole and the part as separate trade marks.
(2) Each such separate trademark shall satisfy all the conditions applying to and have all the incidentsof, an independent trade mark.
(3) Where a person claiming tobe the proprietor of several trade marks in respect of the same or similargoods or services or description of goods or description of services, which,while resembling each other in the material particulars thereof, yet differ inrespect of
(a) statement of the goods orservices in relation to which they are respectively used or proposed to beused; or
(b) statement of number, price,quality or names of places; or
(c) other matter of anon-distinctive character which does not substantially affect the identity ofthe trade mark; or
(d) colour, seeks to registerthose trade marks, they may be registered as a series in one registration.
16.Registration of trade marksas associated trade marks: (1) Where a trade mark which is registered, or is the subject ofan application for registration, in respect of any goods or services isidentical with another trade mark which is registered, or is the subject of anapplication for registration, in the name of the same proprietor in respect ofthe same goods or description of goods or same services or description ofservices or so nearly resembles it as to be likely to deceive or causeconfusion if used by a person other than the proprietor, the Registrar may, atany time, require that the trade marks shall be entered on the register asassociated trade marks.
(2) Where there is an identityor near resemblance of marks that are registered, or are the subject ofapplications for registration in the name of the same proprietor, in respect ofgoods and in respect of services which are associated with those goods or goodsof that description and with those services or services of that description,subsection (1) shall apply as it applies as where there is an identity or nearresemblance of marks that are registered, or are the subject of applicationsfor registration, in the name of the same proprietor in respect of the samegoods or description of goods or same services or description of services.
(3) Where a trade mark and anypart thereof are, in accordance with the provisions of sub-section (1) ofsection 15, registered as separate trade marks in the name of the sameproprietor, they shall be deemed to be, and shall be registered as, associatedtrade marks.
(4) All trade marks registeredin accordance with the provisions of sub-section (3) of section 15 as a seriesin one registration shall be deemed to be, and shall be registered asassociated trade marks.
(5) On application made in theprescribed manner by the registered proprietor of two or more trade marksregistered as associated trade marks, the Registrar may dissolve theassociation as respects any of them if he is satisfied that there would be nolikelihood of deception or confusion being caused if that trade mark were usedby any other person in relation to any of the goods or services or both in respectof which it is registered, and may amend the register accordingly.
17.Effect of registration ofparts of a mark: (1) When a Trade mark consists of several matters, itsregistration shall confer on the proprietor exclusive right to the use of thetrade mark taken as a whole.
(2) Notwithstanding anythingcontained in sub-section (1), when a trade mark -
(a) contains any part -
(i) which is not the subject ofa separate application by the proprietor for registration as a trade mark; or
(ii) which is not separatelyregistered by the proprietor as a trade mark; or
(b) contains any matter whichis common to the trade or is otherwise of a non-distinctive character,
the registration thereof shallnot confer any, exclusive right in the matter forming. only a part of the wholeof the trade mark so registered.
CHAPTER III
Procedure for and Duration of Registration
18.Application forregistration: (1) Anyperson 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 bemade for registration of a trade mark for different classes of goods andservices and fee payable therefor shall be in respect of each such class ofgoods or services.
(3) Every application undersub-section (1) shall be filed in the office of the Trade Marks Registry withinwhose territorial limits the principal place of business in India of the applicanty in the case of joint applicants the principal place of business in India ofthe applicant whose name is first mentioned in the application as having aplace of business in India, is situate:
Provided that where theapplicant or any of the joint applicants does not carry on business in India, the, application shall be filed in. the office ofthe Trade Marks Registry within whose territorial limits; the place mentionedin the address for service in India as disclosed in the application, issituate.
(4) Subject to the provisionsof this Act; the Registrar may refuse the appropriation or may accept itabsolutely or subject to such amendments, modifications, conditions orlimitations, if any, as he may think fit.
(5) In the case of a refusal orconditional acceptance of an application, the Registrar shall record in writingthe grounds for such refusal or conditional acceptance and the materials usedby him in arriving at his decision.
19.Withdrawal of acceptance: Where, after the acceptance ofan application for registration of a trade mark but before its registration,the Registrar is satisfied -
(a) that the application hasbeen accepted in error; or
(b) that in the circumstancesof the case the trade mark should not be registered or should be registeredsubject to conditions or limitations or to conditions additional to ordifferent from the conditions or limitations subject to which the applicationhas been accepted,
the Registrar may after hearingthe applicant if he so desires, withdraw the acceptance and proceed as if theapplication had not been accepted.
20.Advertisement ofapplication: (1) Whenan application for registration of a trade mark has been accepted, whetherabsolutely or subject to conditions or limitations, the Registrar shall, assoon as may be after acceptance, cause the application as accepted togetherwith the conditions or limitations, if any, subject to which it has beenaccepted, to be advertised in the prescribed manner:
Provided that the Registrar maycause the application to be advertised before acceptance if it relates to atrade mark to which sub-section (1) of section 9 and sub-sections (1) and (2)of section 11 apply, or in any other case where it appears to him that it isexpedient by reason of any exceptional circumstances so to do.
(2) Where -
(a) an application has beenadvertised before acceptance under sub-section (1); or
(b) after advertisement of anapplication, -
(i) an error in the applicationhas been corrected; or
(ii) the application has beenpermitted to be amended under section 22,
the Registrar may in hisdiscretion cause the application to be advertised again or in any case fallingunder clause (b) may, instead of causing the application to be advertisedagain, notify in the prescribed manner. the correction or amendment made in theapplication.
21.Opposition to registration: (1) any person may. within three months from the date ofthe advertisement or re-advertisement of an application for registration orwithin such further period, not exceeding one month in the aggregate, as theRegistrar, on application made to him n the prescribed manner and on payment ofthe prescribed fee, allows, give notice in writing in the prescribed manner tothe Registrar, of opposition to the registration.
(2) The Registrar shall serve acopy of the notice on the applicant for registration and, within two monthsfrom the receipt by the applicant of such copy of the notice of opposition, theapplicant shall send to the Registrar, in the prescribed manner a counter-statementof the grounds on which he relies for his application, and if he does not do sohe shall be deemed to have abandoned his application.
(3) If the applicant sends suchcounter-statement, the Registrar shall serve a copy thereof on the persongiving notice of opposition.
(4) Any evidence upon which theopponent and the applicant may rely shall be submitted in the prescribed mannerand within the prescribed time to the Registrar, and the Registrar shall givean opportunity to them to be heard, if they so desire.
(5) The Registrar shall, afterhearing the parties, if so required, and considering the evidence, decidewhether and subject to what conditions or limitations, if any, the registrationis to be permitted, and may take into account a ground of objection whetherrelied upon by the opponent or not.
(6) Where a person givingnotice of opposition or an applicant sending a counter-statement after receiptof a copy of such notice neither resides or carries on business in India, theRegistrar may require him to give security for the costs of proceedings beforehim, and in default of such security being duly given, may treat the oppositionor application, as the case may be, as abandoned.
(7) The Registrar may, onrequest, permit correction of any error in, or any amendment of, a notice ofopposition or a counter-statement on such terms as he thinks just.
22.Correction and amendment: The Registrar may, on suchterms as he thinks just, at any time, whether before or after acceptance of anapplication for registration under section 18, permit the correction of anyerror in or in connection with the application or permit an amendment of theapplication:
Provided that if an amendmentis made to a single application referred to in subsection (2) of section 18involving division of such application into two or more applications, the dateof making of the initial application shall be deemed to be the date of makingof the divided applications so divided.
23.Registration: (1) Subject to the provisionsof section 19, when an application for registration of a trade mark has beenaccepted arid either -
(a) the application has notbeen opposed and the time for notice of opposition has expired; or
(b) the application has beenopposed and the opposition has been decided in favour of the applicant,
the Registrar shall, unless theCentral Government otherwise directs, register the said trade mark and thetrade mark when registered shall be registered as of the date of the making ofthe said application and that date shall, subject to the provisions of section154, be deemed to be the date of registration.
(2) On the registration of atrade mark, the Registrar shall issue to the applicant a certificate in theprescribed form of the registration thereof, seated with the seal of the TradeMarks Registry.
(3) Where registration of atrade mark is not completed within twelve months from the date of theapplication by reason of default on the part of the applicant, the Registrarmay, after giving notice to the applicant in the prescribed manner, treat theapplication as abandoned unless it is completed within the time specified inthat behalf in the notice.
(4) The Registrar may amend theregister or a certificate of registration for the purpose of correcting aclerical error or an obvious mistake.
24.Jointly owned trade marks: (1) Save as provided insub-section (2), nothing in this Act shall authorise the registration of two ormore persons who use a trade mark independently, or propose so to use it, asjoint proprietors thereof.
(2) Where the relations betweentwo or more persons interested in a trade mark are such that no one of them isentitled as between himself and the other or others of them to use it except -
(a) on behalf of both or all ofthem; or
(b) in relation to an articleor service with which both or all of them are connected in the course of trade,
those persons may be registeredas joint proprietors of the trade mark, and this Act shall have effect inrelation to any rights to the use of the trade mark vested in those persons asif those rights had been vested in a single person.
25.Duration, renewal, removaland restoration of registration: (1) The registration of a trade mark, after the commencement ofthis Act, shall be for a period of ten years, but may be renewed from time totime in accordance with the provisions of this section.
(2) The Registrar shall, onapplication made by the registered proprietor of a trade mark in the prescribedmariner and within the prescribed period and subject to payment of theprescribed fee, renew the registration of the trade mark for a period of tenyears from the date of expiration of the original registration or of the lastrenewal of registration as the case may be (which date is in this sectionreferred to as the expiration of the last registration).
(3) At the prescribed timebefore the expiration of the last. registration of a trade mark the Registrarshall send notice in the prescribed manner to the registered proprietor of thedate of expiration and the conditions as to payment of fees and otherwise uponwhich a renewal of registration may be obtained, and, if at the expiration ofthe time prescribed in that behalf those conditions have not been duly compliedwith the Registrar may remove the trade mark from the register:
Provided that the Registrarshall not remove the trade mark from the register if an application is made inthe prescribed form and the prescribed fee and surcharge is paid within sixmonths from the expiration of the last registration of the trade mark and shallrenew the registration of the trade mark for a period of ten years undersub-section (2).
(4) Where a trade mark has beenremoved from the register for non-payment of the prescribed fee, the Registrarshall, after six months and within one year from the expiration of the lastregistration of the trade mark, onreceipt of an application in the prescribed form and on payment of theprescribed fee, if satisfied that it is Just so to do, restore the trade markto the register and renew the registration of the trade mark either generallyor subject to such conditions or limitations as he thinks fit to impose, for aperiod of ten years from the expiration of the last registration.
26.Effect removal from registerfor failure to pay fee for renewal: Where a trade mark has been removed from theregister for failure to pay the fee for renewal, it shall nevertheless, for thepurpose of any application for the registration of another trade mark duringone year, next after the date of the removal, be deemed to be a trade markalready on the register, unless the tribunal is satisfied either -
(a) that there has been no bonafide trade use of the trade mark which has been removed during the two yearsimmediately preceding its removal; or
(b) that no deception orconfusion would be likely to arise, from the use of the trade mark which is thesubject of the application for registration by reason of any previous use ofthe trade mark which has been removed.
CHAPTER IV
Effect of Registration
27.No action for infringementof unregistered trade mark: (1) No person shall be entitled to institute any proceeding toprevent, or to recover damages for, the infringement of an unregistered trademark.
(2) Nothing in this Act shallhe deemed to affect rights of action against any person for passing off goodsor services as the goods of another person or as services provided by anotherperson, or the remedies in respect thereof.
28.Rights conferred byregistration: (1)Subject to, the other provisions of thisAct, the registration of a trade mark shall, if valid, give to the registeredproprietor of the trade mark the exclusive right to the use of the trade markin relation to the goods or services in respect of which the trade mark isregistered and to obtain relief in respect of infringement of the trade mark inthe manner provided by this Act.
(2) The exclusive right to theuse of a trade mark given under sub-section (1) shall be subject to anyconditions and limitations to which the registration is subject.
(3) Where two or more personsare registered proprietors of trade marks, which are identical with or nearlyresemble each other, the exclusive Tight to the use of any of those trade marksshall not (except so far as their respective rights are subject to anyconditions or limitations entered on the register) be deemed to have beenacquired by any one of those persons as against any other of those personsmerely by registration of the trade marks but each of those persons hasotherwise the same rights as against other persons (not being registered usersusing by way of permitted use) as he would have if he were the sole registeredproprietor.
29.Infringement of registeredtrade marks: (1) Aregistered trade mark is infringed by a person who, not being a registeredproprietor or a person using by way of permitted use, uses in the course oftrade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trade mark isregistered and in such manner as to render the use: of the mark likely to betaken as being used as a trade mark:
(2) A registered trade mark isinfringed by a person who, not being a registered proprietor or a person usingby way of permitted use, uses in the course of trade, a mark which because of -
(a) its identity with theregistered trade mark and the similarity of the goods or services covered bysuch registered trade mark; or
(b) its similarity to theregistered trade mark and the identity or similarity of the goods or servicescovered by such registered trade mark; or
(c) its identity with theregistered trade mark and the identity of the goods or services covered by suchregistered trade mark,
is likely to cause confusion onthe part of the public, or which is likely to have an association with theregistered trade mark.
(3) In any case falling underclause (c) of sub-section (2), the court shall presume that it is likely tocause confusion on the part of the public.
(4) A registered trade mark isinfringed by a person who, not being a registered proprietor or a person usingby way of permitted use, uses in the course of trade, a mark which -
(a) is identical with orsimilar to the registered, trade mark; and
(b) is used in relation togoods or services which are not similar to those for which the trade mark isregistered; and
(c) the registered trade markhas a reputation in India and the use of the mark without due cause takesunfair advantage of or is detrimental to, the distinctive character or reputeof the registered trade mark.
(5) A registered trade mark isinfringed by a person if he uses such registered trade mark, as his trade nameor part of his trade name, or name of his business concern or part of the name,of his business concern dealing in goods or services in respect of which thetrade mark is registered.
(6) For the purposes of thissection, a person uses a registered mark, if, in particular, he -
(a) affixes it to goods or thepackaging thereof;
(b) offers or exposes goods forsale, puts them on the market, or stocks them for those purposes under theregistered trade mark, or offers or supplies services under the registeredtrade mark;
(c) imports or exports goodsunder the mask; or
(d) uses the registered trademark on business papers or in advertising.
(7) A registered trade mark isinfringed by a person who applies such registered trade mark to a materialintended to be used for labeling or packaging goods, as a business paper, orfor advertising goods or services, provided such person, when he applied themark, knew or had reason to believe that the, application of the mark was notduly authorised by the proprietor or a licensee.
(8) A registered trade mark isinfringed by any advertising of that trade mark if such advertising -
(a) takes unfair advantage ofand is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to itsdistinctive character: or
(c) is against the reputationof the trade mark.
(9) Where the distinctiveelements of a registered trade mark consist of or include words, the trade markmay be infringed by the spoken use of those words as welt as by their visualrepresentation; and reference in this section to the use of a mark shall beconstrued accordingly.
30.Limits on effect of registeredtrade mark: (1)Nothing in section 29 shall be construed as preventing the use of a registeredtrade mark by any person for the purposes of identifying goods or services asthose of the proprietor provided the use -
(a) is in accordance with honestpractices in industrial or commercial matters, and
(b) is not such as to takeunfair advantage of or be detrimental to the distinctive character or repute ofthe trade mark.
(2) A registered trade mark isnot infringed where -
(a) the use in relation togoods or services indicates the kind, quality, quantity, intended purpose,value, geographical origin, the time of production of goods or of rendering ofservices or other characteristics of goods or services;
(b) a trade mark is registeredsubject to any conditions or limitations, the use of the trade mark in anymanner in relation to goods to be sold or otherwise traded in, in any place, orin relation to goods to be exported to any market or in relation to servicesfor use or available or acceptance in any place or country outside India or inany other circumstances, to which, having regard to those conditions orlimitations, the registration does not extend;
(c) the use by a person of atrade mark -
(i) in relation to goodsconnected in the course of trade with the proprietor or a registered user ofthe trade mark if, as to those goods or a bulk or which they form part, theregistered proprietor or the registered user conforming to the permitted usehas applied the trade mark and has not subsequently removed or obliterated it,or has at any time expressly or impliedly consented to the use of the trademark; or
(ii) in relation to services towhich the proprietor of such mark or of a registered user conforming to thepermitted use has applied the mark, where the purpose and effect of the use ofthe mark is to indicate, in accordance with the fact, that those services havebeen performed by the proprietor or a registered user of the mark;
(d) the use of a trade mark bya person in relation to goods adapted to form part of, or to be accessory to,other goods or services in relation to which the trade mark has been usedwithout infringement of the right given by registration under this Act or mightfor the time being be so used, if the use Of the trade mark is reasonablynecessary in order to indicate that the goods or services are so adapted, andneither the purpose nor the effect of the use of the trade mark is to indicate,otherwise than in accordance with the fact, a connection in the course of tradebetween any person and the goods or services, as the case may be;
(e) the use of a registeredtrade mark, being one of two or more trade marks registered under this Actwhich are identical or nearly resemble each other, in exercise of the right tothe use of that trade mark given by registration under this Act.
(3) Where the goods bearing aregistered trade mark are lawfully acquired by a person, the sale of the goodsin the market or otherwise dealing in those goods by that person or by a personclaiming under or through him is not infringement of a trade by reason only of-
(a) the registered trade markhaving been assigned by the registered proprietor to some other person, afterthe acquisition of those goods; or
(b) the goods having been puton the market under the registered trade mark by the proprietor or with hisconsent.
(4) Sub-section (3) shall notapply where there exists legitimate reasons for the proprietor to opposefurther dealings in the goods in particular; where the condition of the goods,has been changed or impaired after they have been put on the market.
31.Registration to be primafacie evidence of validity: (1) In all legal proceedings relating to a trade mark registeredunder this Act (Including applications under section 57), the originalregistration of the trade mark and of all subsequent assignments andtransmissions of the trade mark shall be prima facie evidence of the validitythereof;
(2) In alt legal proceedings asaforesaid a registered trade mark shall not be held to be invalid on the groundthat it was not a registrable trade mark under section 9 except upon evidenceof distinctiveness and that such evidence was not submitted to the Registrarbefore registration, if it is proved that the trade mark had been so used bythe registered proprietor or his predecessor in title as to have becomedistinctive at the date of registration.
32.Protection of registrationon ground of distinctiveness in certain cases: Where a trade mark is registered in breach ofsub-section (1) of section 9, it shall not be declared invalid if, inconsequence of the use which has been made of it, it has after registration andbefore commencement of any legal proceedings challenging the validity of suchregistration, acquired a distinctive character in relation to the goods orservices for which it is registered.
33.Effect of acquiescence: (1) Where the proprietor of anearlier trade mark has acquiesced for a continuous period of five years in theuse of a registered trade mark, being aware of that use, he shall no longer beentitled on the basis of that earlier trademark -
(a) to apply for a declarationthat the registration of the later trade mark is invalid, or
(b) to oppose the use of thelater trade mark in relation to the goods or services in relation to which ithas been so used,
unless the registration of thelater 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 theuse of the earlier trade mark, or as the case may be, the exploitation of theearlier right, notwithstanding, that the earlier trade mark may no longer beinvoked against his later trade mark.
34.Saving for vested rights: Nothing in this Act shallentitle the proprietor or a registered user of registered trade mark tointerfere with or restrain the use by any person of a trade mark identical withor nearly resembling it in relation to goods or services in relation to whichthat person or a predecessor in title of his has continuously used that trademark from a date prior –
(a) to the use of thefirst-mentioned trade mark in relation to those goods or services be theproprietor or a predecessor in title of his; or
(b) to the date of registrationof the first-mentioned trade mark in respect of those goods or services in thename of the proprietor of a predecessor in title of his;
whichever is the earlier, andthe Registrar shall not refuse (on such use being proved) to register thesecond mentioned trade mark by reason only of the registration of the firstmentioned trade mark.
35.Saving for use of name,address or description of goods or services: Nothing in this Act shall entitle the proprietor ora registered user of a registered trade mark to interfere with any bona fideuse by a person of his own name or that of his place of business, or of thename, or of the name of the place of business, of any of his predecessors inbusiness, or the use by any person of any bona fide description of thecharacter or quality of his goods or services.
36.Saving for words used asname or description of an article or substance or service: (1) The registration of a trademark shall not be deemed to have become invalid by reason only of any use afterthe date of the registration of any word or words which the trade mark containsor of which it consists as the name or description of an article or substanceor service:
Provided that, if it is provedeither -
(a) that there is a well knownand established use of the said word as the name or description of the articleor substance or service by a person or persons carrying on trade therein, notbeing use in relation to goods or services connected in the course of tradewith the proprietor or a registered user of the trade mark or (m the case of acertification trade mark) in relation to goods or services certified by theproprietor; or
(b) that the article orsubstance was formerly manufactured under a patent that a period of two yearsor more after the cesser of the patent has elapsed and that the said word isthe only practicable name or description of the article or substance,
the provisions of sub-section(2) shall apply.
(2) Where the facts mentionedin clause (a) or clause (6) of the proviso to subsection (1) are proved withrespect to any words, then;
(a) for the purposes of anyproceedings under section 57 if the trade mark consists solely of such words,the registration of the trade mark, so far as regards registration in respectof the article or substance in question or of any goods of the samedescription, or of the services or of any services of the same description, asthe case requires, shall be deemed to be an entry wrongly remaining on theregister;
(b) for the purposes of anyother legal proceedings relating to the trade mark, -
(i) if the trade mark consistssolely of such words, all rights of the proprietor under this Act or any otherlaw to the use of the trade mark; or
(ii) if the trade mark containssuch words arid other matter, all such right of the proprietor to the use ofsuch words,
in relation to the article orsubstance or to any goods of the same description, or to the service or to anyservices of the same description, as the case requires, shall be deemed to haveceased on the date on which the use mentioned in clause (a) of the proviso tosub-section (1) first became well known and established or at the expiration ofthe period of two years mentioned in clause (b) of the said proviso.
CHAPTER V
Assignment and Transmission
37.Power of registeredproprietor to assign and give receipts: The person for the time being entered in theregister as proprietor of a trade mark shall, subject to the provisions of thisAct and to any rights appearing from the register to be vested in any otherperson, have power to assign the trade mark, and to give effectual receipts forany consideration for such assignment.
38.Assignability andtransmissibility of registered trade marks: Notwithstanding anything in any other law to thecontrary, a registered trade mark shall, subject to the provisions of thisChapter, be assignable and transmissible, whether with or without the goodwillof the business concerned and in respect either of all the goods or services inrespect of which the trade mark is registered or of some only of those goods orservices.
39.Assignability andtransmissibility of unregistered trade marks: An unregistered trade mark may. be assigned ortransmitted with or without the goodwill of the business concerned.
40.Restriction on assignment ortransmission where multiple exclusive rights would be created: (1) Notwithstanding anything insections 38 and 39, a trade mark shall not be assignable or transmissible in acase in which as a result of the assignment or transmission there would in thecircumstances subsist, whether under this Act or any other law, exclusiverights in more than one of the persons concerned to the use, in relation to -
(a) same goods or services;
(b) same description of goodsor services;
(c) goods or services ordescription of goods or services which are associated with each other,
of trade marks nearlyresembling each other or of identical trade mark, if having regard to thesimilarity 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 todeceive or cause confusion:
Provided that an assignment ortransmission shall not be deemed to be invalid under this sub-section if theexclusive rights subsisting as a result thereof in the persons concernedrespectively are, having regard to limitations imposed thereon, such as not tobe exercisable by two or more of those persons in relation to goods to be sold,or otherwise traded in, within India otherwise than for export therefrom, or inrelation to goods to be exported to the same market outside India or inrelation to services for use at any place in India or any place outside Indiain relation to services available for acceptance in India.
(2) The proprietor of aregistered trade mark who proposes to assign it may submit to the Registrar inthe prescribed manner a statement of case setting out the circumstances and theRegistrar may issue to him a certificate stating whether, having regard to thesimilarity of the goods or services and of the trade marks referred to in the case,the proposed assignment would or would not be invalid under sub-section (1),and a certificate so issued shall, subject to appeal and unless it is shownthat the certificate was obtained by fraud or misrepresentation, be conclusiveas to the validity or invalidity under sub-section (1) of the assignment in sofar as such validity or invalidity depends upon the facts set out in the case,but, as regards a certificate in favour of validity, only if application forthe registration under section 45 of the title of the person becoming entitledis made within six months from the date oh which the certificate is issued.
41.Restriction on assignment ortransmission when exclusive rights would be created in different parts ofIndia: Notwithstanding anything insections 38 and 39, a trade mark shall not be assignable or transmissible, in acase in which as a result of the assignment or transmission there would in thecircumstances subsist, whether under this Act or any other law -
(a) an exclusive right in one ofthe persons concerned, to the use of the trade mark limited to use in relationto goods to be sold or otherwise traded in, in any place India, or in relationto services for use, or services available for acceptance in any place India;and
(b) an exclusive right inanother of these persons concerned, to the use of a trade mark nearlyresembling the first-mentioned trade mark or of an identical trade mark inrelation to -
(i) the same goods or services;or
(ii) the same description ofgoods or services; or
(iii) services which areassociated with those goods or goods of that description or goods which areassociated with those services or services of that description,
limited to use in relation togoods to be sold or otherwise traded in, or services for use. or available foracceptance, in any other place in India :