TRADE MARKS ACT 1999

by Usha Rai · April 26, 2015

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

(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

(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;

(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;

(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;

(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

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

(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

(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;

(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

(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;

(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;

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 :

Provided that in any such case,on application in the prescribed manner by the proprietor of a trade mark whoproposes to assign it, or by a person who claims that a registered trade mark hasbeen transmitted to him or to a predecessor in title of his since thecommencement of this Act, the Registrar, if he is satisfied that in all thecircumstances the use of the trade mark in exercise of the said rights wouldnot be contrary to the public interest may approve the assignment ortransmission, and an assignment or transmission so approved shall not, unlessit is shown that the approval was obtained by fraud or misrepresentation, bedeemed to be invalid under this section or section 40 if application for theregistration under section 45 of the title of the person becoming entitled ismade within six months from the date on which the approval is given or, in thecase of a transmission, was made before that date.

42.Conditions for assignment otherwisethan in connection with the goodwill of a business: Where an assignment of a trademark, whether registered or unregistered is made otherwise than in connectionwith the goodwill of the business in which the mark has been or is used, theassignment shall not take effect unless the assignee, not later than theexpiration of six months from the date on which the assignment is made orwithin such extended period, if any, not exceeding three months in theaggregate, as the Registrar may allow applies to the Registrar for directionswith respect to the advertisement of the assignment, and advertises it in suchform and manner and within such period as the Registrar may direct.

Explanation: – For the purposesof this section, an assignment of a trade mark of the following descriptionshall not be deemed to be an assignment made otherwise than in connection withthe goodwill of the business in which the mark is used, namely: –

(a) an assignment of a trademark in respect only of some of the goods or services for which the trade markis registered accompanied by the transfer of the goodwill of the businessconcerned in those goods or services only; or

(b) an assignment of a trademark which is used in relation to goods exported from India or in relation to servicesfor use outside India if the assignment is accompanied by the transfer of thegoodwill of the export business only.

43.Assignability andtransmissibility of certification trade marks: A certification trade mark shall not be assignableor transmissible otherwise than with the consent of the Registrar, for whichapplication shall be made in writing in the prescribed manner.

44.Assignability andtransmissibility or associated trade marks: Associated trade marks shall be assignable andtransmissible only as a whole and not separately, but subject to the provisionsof this Act, they shall, for all other purposes, be deemed to have beenregistered as separate trade marks.

45.Registration of assignmentsand transmissions: (1) Where a person becomes entitled by assignment or transmissionto a registered trade mark, he shall apply in the prescribed manner to theRegistrar to register his title, and the Registrar shall, on receipt of theapplication and on proof of title to his satisfaction, refer him as theproprietor of the trade mark in respect of the goods or services in respect ofwhich the assignment or transmission has effect, and shall cause particulars ofthe assignment or transmission to be entered on the register:

Provided that where thevalidity of an assignment or transmission is in dispute between the parties,the Registrar may refuse to register the assignment or transmission until therights of the parties have been determined by a competent court.

(2) Except for the purpose ofan application before the Registrar under sub-section (1) or an appeal from anorder thereon, or an application under section 57 or an appeal from an orderthereon, a document or instrument in respect of which no entry has been made inthe register in accordance with sub-section (1), shall not be admitted inevidence by the Registrar or the Appellate Board or any court in proof of titleto the trade mark by assignment or transmission unless the Registrar or theAppellate Board or the court, as the case may be, otherwise directs.

CHAPTER VI

Use of Trade Marks and Registered Users

46.Proposed use of trade markby company to be formed, etc.: (1) No application for the registration of a trade mark in respectof any goods or services shall be refused nor shall permission for suchregistration be withheld, on the ground only that it appears that the applicantdoes not use or propose to use the trade mark if the Registrar is satisfiedthat –

(a) a company is about to beformed and registered under the Companies Act, 1956 (1 of 1956) and that theapplicant intends to assign the trade mark to that company with a view to theuse thereof in relation to those goods or services by the company, or

(b) the proprietor intends itto be used by a person, as a registered user after the registration of thetrade mark.

(2) The provisions of section47 shall have effect, in relation to a trade mark registered under the powersconferred by this sub-section; as if for the reference, in clause (a) ofsub-section (1) of that section, to the intention on the part of an applicantfor registration that a trade mark should be used by him there were substitutedreference to the intention on his part that it should he used by the company orregistered user concerned.

(3) The tribunal may, in a caseto which sub-section (1) applies, require the applicant to give security forthe costs of any proceedings relating to any opposition or appeal, and indefault of. such security being duly given, may treat the application asabandoned.

(4) Where in a case to whichsub-section (1) applies, a trade mark in respect of any goods or services isregistered in the name of an applicant who, relies on intention to assign thetrade mark to a company, then, unless within such period as may be prescribedor within such further period not exceeding six months as the Registrar may, onapplication being made to him in the prescribed manner, allow, the company hasbeen registered as the proprietor of the trade mark in respect of those goodsor services, the registration shall cease to have effect in respect thereof atthe expiration of that period and the Registrar shall amend the registeraccordingly.

47.Removal from register andimposition of limitations on ground of non-use: (1) A registered trade mark may be taken off theregister in respect of the goods or services in respect of which it isregistered on application made in the prescribed manner to the Registrar or theAppellate Board by any person aggrieved on the ground either –

(a) that the trade mark wasregistered without any bona fide intention on the part of the applicant forregistration that it should be used in relation to those goods or services byhim or, in a case to which the provisions of section 46 apply, by the companyconcerned or the registered user, as the case may be, and that there has, infact, been no bona fide use of the trade mark in relation to those bonds orservices by any proprietor thereof for the time being up to a date three monthsbefore the date of the application; or

(b) that up to a date threemonths before the date of the application, a continuous period of five yearsfrom the date on which the trade mark is actually entered in the register orlonger had elapsed during which the trade mark was registered and during whichthere was no bona fide use thereof in relation to those goods or services byany proprietor thereof for the time being:

Provided that except where theapplicant has been permitted under section 12 to register an identical ornearly resembling trade mark in respect of the goods or services in question,or where the tribunal is of opinion that he might properly be permitted so toregister such a trade mark, the tribunal may refuse an application under clause(a) or clause (b) in relation to any goods or services, if it is shown thatthere has been, before the relevant date or during the relevant period, as thecase may be, bona fide use of the trade mark by any proprietor thereof for thetime being in relation to –

(i) goods or services of thesame description; or

(ii) goods or servicesassociated with those goods or services of that description being goods orservices, as the case may be, in respect of which the trade mark is registered.

(2) Where in relation to anygoods or services in respect of which a trade mark is registered –

(a) the circumstances referredto in clause (b) of sub-section ( I) are shown to exist so far as regards non-use of the trade markin relation to goods to be sold, or otherwise traded in a particular place inIndia (otherwise than for export from India), or in relation to goods to beexported to a particular market outside India; or in relation to services foruse or available for acceptance in a particular place in India or for use. in aparticular market outside India; and

(b) a person has been permittedunder section 12 to register an identical or nearly resembling trade mark inrespect of those goods, under a registration extending to use in relation togoods to be so sold, or otherwise traded in, or in relation to goods to be soexported, or in relation to services for use or available for acceptance inthat place or for use in that country, or the tribunal is of opinion that hemight properly be permitted so to register such a trade mark,

on application by that personin the prescribed manner to the Appellate Board or to the Registrar, thetribunal may impose on the registration of the first-mentioned trade mark suchlimitations as it thinks proper for securing that that registration shall ceaseto extend to such use.

(3) An applicant shall not beentitled to rely for the purpose of clause (b) of sub-section (1) or for thepurposes of sub-section (2) on any non-use of a trade mark which is shown tohave been due to special circumstances in the trade, which includesrestrictions on the use of the trade mark in India imposed by any law orregulation and not to any intention to abandon or not to use the trade mark inrelation to the goods or services to which the application relates.

48.Registered users: (1) Subject to the provisionsof section 49, a person other than the registered proprietor of a trade markmay be registered as a registered user thereof in respect of any or all of thegoods or services in respect of which the trade mark is registered.

(2) The permitted use of atrade mark shall be deemed to be used by the proprietor thereof, and shall bedeemed not to be used by a person other than the proprietor, for the purposesof section 47 or for any other purpose for which such use is material underthis Act or any other law.

49.Registration as registereduser: (1) Where it is proposed that aperson should be registered as a registered user of a trade mark, theregistered proprietor and the proposed registered user shall jointly apply inwriting to the Registrar in the prescribed manner, and every such applicationshall be accompanied by –

(a) the agreement in writing ora duly authenticated copy thereof, entered into between the registeredproprietor and the proposed registered user with respect to the permitted useof the trade mark; and

(b) an affidavit made by theregistered proprietor or by some person authorised to the satisfaction of theRegistrar to act on his behalf,

(i) giving particulars of therelationship, existing or proposed, between the registered proprietor and theproposed registered user, including particulars showing the degree of controlby the proprietor over the permitted use which their relationship will conferand whether it is a term of their relationship that the proposed registereduser shall be the sole registered user or that there shall be any otherrestriction as to persons for whose registration as registered usersapplication may be made;

(ii) stating the goods orservices in respect of which registration is proposed;

(iii) stating the conditions orrestrictions, if any, proposed with respect to the characteristics of the goodsor services, to the mode or place of permitted use, or to any other matter;

(iv) stating whether thepermitted use is to be for a period or without limit of period, and, if for aperiod; the duration thereof; and

(2) When the requirements ofsub-section (1) have been complied with, the Registrar shall register the proposedregistered user in respect of the goods or services as to which he is sosatisfied.

(3) The Registrar shall issuenotice in the prescribed manner of the registration of a person as a registereduser, to other registered users of the trade mark, if any.

(4) The Registrar shall, if sorequested by the applicant, take steps for securing that information given forthe purposes of an application under this section (other than matters enteredin the register) is not disclosed to rivals in trade.

50.Power of Registrar forvariation or cancellation of registration as registered user: (1) Without prejudice to theprovisions of section 57, the registration of a person as registered user –

(a) may be varied by theRegistrar as regards the goods or services in respect of which it has effect onthe application in writing in the prescribed manner of the registeredproprietor of the trade mark;

(b) may be cancelled by theRegistrar on the application in writing in the prescribed manner of theregistered proprietor or of the registered user or of any other registered userof the trade mark;

(c) may be cancelled by theRegistrar on the application in Writing in the prescribed manner of any personon any of the following grounds, namely: –

(i) that the registered userhas used the trade mark otherwise than in accordance with the agreement underclause (a) of sub-section (I) of section 49 or in such way as to cause or to belikely to cause, deception or confusion;

(ii) that the proprietor or theregistered user misrepresented, or failed to disclose, some fact material tothe application for registration which if accurately represented or disclosedwould not have justified the registration of the registered user;

(iii) that the circumstanceshave changed since the date of registration in such a way that at the date ofsuch application for cancellation they would not have justified registration ofthe registered user;

(iv) that the registrationought not to have been effected having regard to rights vested in the applicantby virtue of a contract in the performance of which he is interested;

(d) may be cancelled by theRegistrar on his own motion or on the application in writing in the prescribedmanner by any person, on the ground that any stipulation in the agreement betweenthe registered proprietor and the registered user regarding the quality of thegoods or services in relation to which the trade mark is to be used is eithernot being enforced or is not being complied with;

(e) may be cancelled by theRegistrar in respect of any goods or services in relation to which the trademark is no longer registered.

(2) The Registrar shall issuenotice in the prescribed manner in respect of every application under thissection to the registered proprietor and each registered user (not being theapplicant) of the trade mark.

(3) The procedure for cancelinga registration shall be such as may be prescribed:

Provided that before cancelingof registration, the registered proprietor shall be given a reasonableopportunity of being heard.

51.Power of Registrar to callfor information relating to agreement in respect of registered users: (1) The Registrar may, at anytime during the continuance of the registration of the registered user, bynotice in writing, require the registered proprietor to confirm to him withinone month that the agreement filed under clause (a) of sub-section (1) ofsection 49 continues to be in force.

(2) If the registeredproprietor fails to furnish the confirmation within one month as required undersub-section (1), the registered user shall cease to be the registered user onthe day immediately after the expiry of the said period and the Registrar shallnotify the same.

52.Right of registered user totake proceedings against infringement: (1) Subject to any agreement subsisting between theparties, a registered user may institute proceedings for infringement in hisown name as if he were the registered proprietor, making the registeredproprietor a defendant and the rights and obligations of such registered userin such case being concurrent with those of the registered proprietor.

(2) Notwithstanding anythingcontained in any other law, a registered proprietor so added as defendant shallnot be liable for any costs unless he enters an appearance and takes part inthe proceedings.

53.No right of permitted userto take proceeding against infringement: A person referred to in sub-clause (ii) of clause(r) of sub-section (1) of section 2 shall have no right to institute anyproceeding for any infringement.

54.Registered user not to haveright of assignment or transmission: Nothing in this Act shall confer on a registereduser of a trade mark any assignable or transmissible right to the use thereof.

Explanation I: – The right of aregistered user of a trade mark shall not be deemed to have been assigned ortransmitted within the meaning of this section in the following cases, namely:-

(a) where the registered userbeing an individual enters into a partnership with another person for carryingon the business concerned; but in any such case the firm may use the trademark, if otherwise in force, only for so long as the registered user is amember of the firm;

(b) where the registered userbeing a firm subsequently undergoes a change in its constitution; but in anysuch case the reconstituted firm may use the trade mark, if otherwise in force,only for so long as any partner of the original firm at the time of itsregistration as registered user, continues to be a partner of the reconstitutedfirm.

Explanation II: – For thepurposes of Explanation I, "firm" has the same meaning as in theIndian Partnership Act, 1932 (9 of 1932).

55.Use of one of associated orsubstantially identical trade marks equivalent to use of another: (1) Where under the provisionsof this Act, use of a registered trade mark is required to be proved for anypurpose, the tribunal may, if and, so far as it shall think right, accept useof a registered associated trade mark, or of the trade mark with additions oralterations not substantially affecting its identity, as an equivalent for theuse required to be proved.

(2) The use of the whole of aregistered trade mark shall, for the purpose of this Act, be deemed to be alsouse of any trade mark being a part thereof and registered in accordance withsub-section (1) of section 15 in the name of the same proprietor.

(3) Notwithstanding anything insection 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 purposeunder this Act.

56.Use of trade mark for exporttrade and use when form of trade connection changes: (1) The application in India oftrade mark to goods to be exported from India or in relation to services foruse outside India and any other act done in India in relation to goods to be soexported or services so rendered outside India which, if done in relation togoods to be sold or services provided or otherwise traded in within India wouldconstitute use of a trade mark therein, shall be deemed to constitute use ofthe trade mark in relation to those goods or services for any purpose for whichsuch use is material under this Act or any other law.

(2) The use of a registeredtrade mark in relation to goods or services between which and the person usingthe mark any form of connection in the course of trade subsists shall not bedeemed to be likely to cause deception or confusion on the ground only that themark has been or is used in relation to goods or services between which and thesaid person or a predecessor in title of that person a different form ofconnection in the course of trade subsisted or subsists.

CHAPTER VII

Rectification and Correction of the Register

57.Power to cancel or varyregistration and to rectify the register: (1) On application made in the prescribed manner tothe Appellate Board or to the Registrar by any person aggrieved, the tribunalmay make such order as it may think fit for canceling or varying theregistration of a trade mark on the ground of any contravention, or failure toobserve a condition entered on the register in relation thereto.

(2) Any person aggrieved by theabsence or omission from the register of any entry, or by any entry made in theregister without sufficient cause, or by any entry wrongly remaining on theregister, or by any error or defect in any entry in the register, may apply inthe prescribed manner to the Appellate Board or to the Registrar, and thetribunal may make such order for making, expunging or varying the entry as itmay think fit.

(3) The tribunal may in anyproceeding under this section decide any question that may be necessary orexpedient to decide in connection with the rectification of the register.

(4) The tribunal, of its ownmotion, may, after giving notice in the prescribed manner to the partiesconcerned and after giving them an opportunity of being heard, make any orderreferred to in sub-section (1) or sub-section (2).

(5) Any order of the AppellateBoard rectifying the register shall direct that notice of the rectificationshall be served upon the Registrar in the prescribed manner who shall uponreceipt of such notice rectify the register accordingly.

58.Correction of register: (1) The Registrar may, onapplication made in the prescribed manner by the registered proprietor, –

(a) correct any error in thename, address or description of the registered proprietor of a trade mark, orany other entry relating to the trade mark;

(b) enter any change in thename, address or description of the person who is registered as proprietor of atrade mark;

(d) strike out any goods orclasses of goods or services from those in respect of which a trade mark isregistered;

and may make any consequentialamendment or alteration in the certificate of registration, and for thatpurpose, may require the certificate of registration to be produced to him.

(2) The Registrar may, onapplication made in the prescribed manner by a registered user of a trade mark,and after notice to the registered proprietor, correct any error, or enter anychange, in the name, address or description of the registered user.

59.Alteration of registeredtrade marks: (1) Theregistered proprietor of a trade mark may apply in the prescribed manner to theRegistrar for leave to add to or alter the trade mark in any manner notsubstantially affecting the identity thereof, and the Registrar may refuseleave or may grant it on such terms and subject to such limitations as he maythink fit.

(2) The Registrar may cause anapplication under this section to be advertised in the prescribed manner in anycase where it appears to him that it is expedient so to do, and where he doesso, if within the prescribed time from the date of the advertisement any persongives notice to the Registrar in the prescribed manner of opposition to theapplication, the Registrar shall, after hearing the parties if so required,decide the matter.

(3) Where leave is grantedunder this section, the trade mark as altered shall be advertised used in theprescribed manner, unless the application has already been advertised undersub-section (2).

60.Adaptation of entries inregister to amended or substituted classification of goods or services: (1) The Registrar shall notmake any amendment of the register which would have the effect of adding anygoods or classes of goods or services to those in respect of which a trade markis registered (whether in one or more classes) immediately before the amendmentis to be made or of antedating the registration of a trade mark in respect ofany goods or services:

Provided that this sub-section,shall not apply when the Registrar is satisfied that compliance therewith wouldinvolve undue complexity and that the addition or antedating, as the case maybe, would not affect any substantial quantity of goods or services and wouldnot substantially prejudice the rights of any person.

(2) A proposal so to amend theregister shall be brought to the notice of the registered proprietor of thetrade mark affected and advertised in the prescribed manner, and may be opposedbefore the Registrar by any person aggrieved on the ground that the proposedamendment contravenes the provisions of sub-section (1).

CHAPTER VIII

Collective Marks

61.Special provisions for collectivemarks: (1) The provisions of this Actshall apply to collective marks subject to the provisions contained in thisChapter.

(2) In relation to a collectivemark the reference in clause (zb) of sub-section (1) of section 2 to distinguishing the goods orservices of one person from those of others shall be construed as a. referenceto distinguishing the goods or services of members of an association of personswhich is the proprietor of the mark from those of others.

62.Collective mark not to bemisleading as to character or significance: A collective mark shall not be registered if it islikely to deceive or cause confusion on the part of public in particular if itis likely to be taken to be something other than a collective mark, and in suchcase the Registrar may require that a mark in a respect of which application ismade for registration comprise some indication that it is a collective mark.

63.Application to beaccompanied by regulations governing use of collective marks: (1) An application for registrationof a collective mark shall be accompanied by the regulations governing the useof such collective mark.

(2) The regulations referred toin sub-section (1) shall specify the persons authorised to use the mark, theconditions of membership of the association and, the conditions of use of themark, including any sanctions against misuse and such other matters as may beprescribed.

64.Acceptance of applicationand regulations by Registrar: If it appears to the Registrar that the requirements for registrationare satisfied, he shall accept the application together with the regulations,either unconditionally or subject to such conditions including amendments ofthe said regulations, if any, as he may deem fit or refuse to accept it and ifaccepted shall notify the regulations.

65.Regulations to be open toinspection: Theregulations referred to in subsection (1) of section 63 shall be open to publicinspection in the same way as the register as provided in section 148.

66.Amendment of regulations: Any amendment of regulationsreferred to in subsection (1) of section 63 shall, not be effective unless theamended regulations are filed with the Registrar, and accepted and published byhim in accordance with section 64.

67.Infringement proceedings by registeredproprietor of collective mark: In a suit for infringement instituted by the registered proprietorof a collective mark as plaintiff the court shall take into account any losssuffered or likely to be suffered by authorised users and may give suchdirections as it thinks fit as to the extent to which the plaintiff shall holdthe proceeds of any pecuniary remedy on behalf of such authorised users.

68.Additional grounds forremoval of registration of collective mark: The registration of a collective mark may also beremoved from the register on the ground –

(a) that the manner in whichthe collective mark has been used by the proprietor or authorised user hascaused it to become liable to mislead the public as a collective mark; or

(b) that the proprietor hasfailed to observe, or to secure the observance of the regulations governing theuse of the mark.

Explanation I: – For thepurposes of this Chapter, unless the context otherwise requires,"authorised user" means a member of an association authorised to usethe registered collective mark of the association.

Explanation II: – For thepurposes of this Act, use of a collective mark by an authorised user referredto in Explanation I shall be deemed to be the use by the registered proprietorthereof.

CHAPTER IX

Certification Trade Marks

69.Certain provisions of thisAct not applicable to certification trade marks: The following provisions of this Act shall not applyto certification trade marks, that is to say, –

(a) clauses (a) and (c) ofsub-section (1) of section 9;

(b) sections 18, 20 and 21,except as expressly applied by this Chapter;

(d) Chapter XII, except section107.

70.Registration of certificationtrade marks: A markshall not be registrable as a certification trade mark in the name of a personwho carries on a trade in goods of the kind certified or a trade of theprovision of services of the kind certified.

71.Applications forregistration of certification trade marks: (1) An application for the registration of a mark asa certification trade mark shall be made to the Registrar in the prescribedmanner by the person proposed to be registered as the proprietor thereof, andaccompanied by a draft of the regulations to be deposited under section 74.

(2) Subject to the provisionsof section 70, the provisions of sections 18, 19 and 22 shall apply in relationto an application under this section as they apply in relation to anapplication under section 18, subject to the modification that referencestherein to acceptance of an application shall be construed as references toauthorisation to proceed with an application.

(3) In dealing under the saidprovisions with an application under this section, the tribunal shall haveregard to the like considerations, so far as relevant, as if the applicationwere applications under section 18 and to any other considerations relevant toapplications under this section, including the desirability of securing that acertification trade mark shall comprise some indication that it is acertification trade mark.

72.Consideration of applicationfor registration by Registrar: The Registrar shall consider the application made under section 71with regard to the following matters, namely:

(a) whether the applicant iscompetent to certify the goods in respect of which the mark is to beregistered;

(b) whether the draft of theregulations to be filed under section 74 is satisfactory;

and may either –

(i) refuse the application; or

(ii) accept the application andapprove the said draft of the regulations, either without modification andunconditionally or subject to any conditions or limitations, or to anyamendments or modifications of the application or of the regulations, which hethinks requisite having regard to any of the said matters.

(2) Except in the case ofacceptance and approval without modification and unconditionally, the Registrarshall not decide any matter under sub-section (1) without giving the applicantan opportunity of being heard.

73.Opposition to registrationof certification trade marks: When an application has been accepted, the Registrar shall, assoon as may be of thereafter, cause the application as accepted to beadvertised in the prescribed manner, and the provisions of section 21 shallapply in relation to the registration of the mark as they apply in relation toan application under section 18.

74.Filing of regulationsgoverning use of a certification trade mark: (1) There shall be filed at the Trade Marks Registryin respect of every mark registered as a certification trade mark regulationsfor governing the use thereof, which use shall include provisions as to thecases in which the proprietor is to certify goods or services and to authorisethe use of the certification trade mark, and may contain any other provisionswhich the Registrar may by general or special order, require or permit to beinserted therein (including provisions conferring a right of appeal to theRegistrar against any refusal of the proprietor to certify goods or toauthorise the use of the certification trade mark in accordance with theregulations); and regulations so filed shall be open to inspection in likemanner as the register as provided in section 148.

(2) The regulations so filedmay, on the application of the registered proprietor, be altered by theRegistrar.

(3) The Registrar may causesuch application to be advertised in any case where it appears to him expedientso to do, and where he does so, if within the time specified in theadvertisement any person gives notice of opposition to the application, theRegistrar shall not decide the matter without giving the parties an opportunityof being heard.

75.Infringement ofcertification trade marks: The right conferred by section 78 is infringed by any person who,not being the registered proprietor of the certification trade mark or a personauthorised 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 isidentical with, or deceptively similar to the certification trade mark inrelation to any goods or services in respect of which it is registered, and insuch manner as to render the use of the mark likely to be taken as being a useas a trade mark.

76.Acts not constitutinginfringement of certification trade marks: (1) Notwithstanding anything contained in this Act,the following acis do not constitute an infringement of the right to the use ofa registered certification trade mark –

(a) where a certification trademark is registered subject to any conditions or limitations entered on theregister, the use of any such mark in any mode, in relation to goods to be soldor otherwise traded in any place, or in relation to goods to be exported to anymarket or in relation to services for use or available for acceptance in anyplace, country or territory or in any other circumstances, to which havingregard to any such limitations, the registration does not extend;

(b) the use of a certificationtrade mark in relation to goods or services certified by. the proprietor of themark if, as to those goods or services or a bulk of which they form part, theproprietor or another in accordance with his authorisation under the relevantregulations has applied the mark and has not subsequently removed orobliterated it, or the proprietor has at any time expressly or impliedly consentedto the use of the mark;

(c) the use of a certificationtrade mark in relation to goods or services adapted to form part of, or to beaccessory to, other goals in relation to which the mark has been used withoutinfringement of the right given as aforesaid or might for the time being be soused, if the use of the mark is reasonably necessary in order to indicate thatthe goods or services are so adapted and neither the purpose nor the effect ofthe use of the mark is to indicate otherwise than in accordance with the factthat the goods or services are certified by the proprietor.

(2) Clause (b) of sub-section(1) shall not apply to the case of use consisting of the application of acertification trade mark to goods or services, notwithstanding that they aresuch goods or services as are mentioned in that clause if such application iscontrary to the regulations referred to in that clause.

(3) Where a certification trademark is one of two or more trade marks registered under this Act, which areidentical or nearly resemble each other, the use of any of those trade marks inexercise of the right to the use of that trade mark given by registration,shall not be deemed to be an infringement of the right so given to the use ofany other of those trade marks.

77.Cancellation or varying ofregistration of certification trade marks: The Registrar may, on the application in theprescribed manner of any person aggrieved and after giving the proprietor anopportunity of opposing the application, make such order as he thinks fit forexpunging 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 nolonger competent, in the case of any of the goods or services in respect ofwhich the mark is registered, to certify those goods or services;

(b) that the proprietor hasfailed to observe any provisions of the regulations to be observed on his part;

(d) that it is requisite forthe public advantage that if the mark remains registered, the regulationsshould be varied.

78.Rights conferred byregistration of certification trade marks: (1) Subject to the provisions of sections 34, 35 and76, the registration of a person as a proprietor of certification trade mark inrespect of any goods or services shall, if valid, give to that person theexclusive right to the use of the mark in relation to those goods or services.

(2) The exclusive right to theuse of a certification trade mark given under subsection (1) shall be subjectto any conditions and limitations to which the registration is subject.

CHAPTER X

Special Provisions for Textile Goods

79.Textile goods: The Central Government mayprescribe classes of goods (in this Chapter referred to as textile goods) tothe trade marks used in relation to which the provisions of this Chapter shallapply; and subject to the said provisions, the other provisions of this Actshall apply to such trade marks as they apply to trade marks used in relationto other classes of goods.

80.Restriction on registrationof textile goods: (1) in respect of textile goods being piece goods –

(a) no mark consisting of aline heading alone shall be registrable as a trade mark;

(b) a line heading shall not bedeemed to be capable of distinguishing;

(2) In respect of any textilegoods, the registration of letters or numerals, or any combination thereof,shall be subject to such conditions and restrictions as may be prescribed.

81.Stamping of piece goods,cotton yarn and thread: (1) Piece goods, such as are ordinarily sold by length or by thepiece, which have been manufactured, bleached, dyed, printed or finished inpremises which are a factory, as defined in the Factories Act, 1948 (63 of1948), shall not be removed for sale from the last of such premises in whichthey underwent any of the said processes without having conspicuously stampedin international form of Indian numerals on each piece the length thereof instandard yards, or in standard yards and a fraction of such a yard, or instandard metres or in standard metres and a fraction of such a metre, accordingto the real length of the piece, and, except when the goods are sold from thefactory for export from India, without being conspicuously marked on each piecewith the name of the manufacturer or of the occupier of the premises in which thepiece was finally processed or of the wholesale purchaser in India of thepiece.

(2) Cotton yarn such as isordinarily sold in bundles, and cotton thread, namely, sewing, darning, crochetor handicraft thread; which have been manufactured, bleached, dyed or finishedin any premises not exempted by the rules made under section 82 shall not beremoved for sale from those premises unless, in accordance with the said rulesin the case of yarn –

(a) the bundles areconspicuously marked with an indication of the weight of yarn in English or themetric system in each bundles; and

(b) the count of the yarncontained in the bundles and in the case of thread each unit is conspicuouslymarked with the length or weight of thread in the unit and in such other manneras may be required by the said rules; and

(c) except where the goods aresold from the premises for export from India, unless each bundle or unit isconspicuously marked with the name of the manufacturer or of the wholesalepurchaser in India of the goods:

Provided that the rules madeunder section 82 shall exempt all premises where the work is done by members ofone family with or without the assistance of not more than ten other employees,and all premises controlled by a co-operative society where not more thantwenty workers are employed in the premises.

82.Determination of characterof textile goods by sampling: (1) For the purposes of this Act, the Central Government may makerules –

(a) to provide, with respect toany 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 testedand for the selection of the samples;

(b) to provide, for the mannerin which for the purposes of section 81 cotton yarn and cotton thread shall bemarked which the particulars required by that section, and for the exemption ofcertain premises used for the manufacture, bleaching, dying or finishing of cotton yarn or cotton threadfrom the provisions of that section; and

(c) declaring what classes ofgoods are included in the expression "piece goods such as are ordinarilysold by length or by the piece" for the purpose of section 81, of this Actor clause (n) of sub-section (2) of section11 of the Customs Act, 1962 (52 of 1962).

(2) With respect to any goodsfor the selection and testing of samples of which provision is not made in anyrules for the time being in force under sub-section (1), the court or officerof customs, as the case may be, having occasion to ascertain the number, quantity,measure, gauge or weight of the goods, shall, by order in writing, determinethe number of samples to be selected and tested and the manner in which thesamples are to be selected.

(3) The average of the resultsof the testing in pursuance of rules under subsection (1) or of an order undersub-section (2) shall be prima facie evidence of the number, quantity, measure,gauge or weight, as the case may be, of the goods.

(4) If a person having anyclaim to; or in relation to, any goods of which samples have been selected andtested in pursuance of rules under sub-section (1), or of an order undersub-section (2), desires that any further samples of the goods be selected andtested, such further samples shall, on his written application and on the paymentin advance by him to the court or officer of customs, as the case may be, ofsuch sums for defraying the cost of the further selection and testing as thecourt or officer may from time to time require, be selected and tested to suchextent as may be permitted by rules made by the Central Government in thisbehalf or as, in the case of goods with respect to which provision is not madein such rules, the court or officer of customs may determine in thecircumstances to be reasonable, the samples being selected in the mannerprescribed under sub-section (1), or in sub-section (2), as the case may be.

(5) The average of the resultsof the testing referred to in sub-section (3) and of the further testing undersub-section (4) shall be conclusive proof of the number, quantity, measure,gauge or weight, as the case may be, of the goods.

CHAPTER XI

Appellate Board

83.Establishment of AppellateBoard: The Central Government shall,by notification in the Official Gazette, establish an Appellate Board to beknown as the Intellectual Property Appellate Board to exercise thejurisdiction, powers and authority conferred on it by or under this Act.

84.Composition of AppellateBoard: (1) The Appellate Board shallconsist of a Chairman, Vice-Chairman and such number of other Members as theCentral Government may deem fit and subject to the other provisions of thisAct, the jurisdiction, powers and authority of the Appellate Board, may beexercised by Benches thereof.

(2) Subject to the otherprovisions of this Act, a Bench shall consist of one Judicial Member and oneTechnical Member and shall sit at such place as the Central Government may, bynotification in the Official Gazette, specify.

(3) Notwithstanding anythingcontained in sub-section (2), the Chairman –

(a) may, in addition todischarging the functions of the Judicial Member or Technical Member of theBench to which he is appointed, discharge the functions of the Judicial Memberor, as the case may be, the Technical Member, of any other Bench;

(b) may transfer a Member fromone Bench to another Bench;

(c) may authorise theVice-Chairman, the Judicial Member or the Technical Member appointed to oneBench to discharge also the functions of the Judicial Member or the TechnicalMember, as the case may be, of another Bench.

(4) Where any Benches areconstituted, the Central Government may, from time to time, by notification,make provisions as to the distribution of the business of the Appellate Boardamongst the Benches and specify the matters which may be dealt with by eachBench.

(5) If any question arises asto whether any matter falls within the purview of the business allocated to aBench, the decision of the Chairman shall be final.

Explanation: – For the removalof doubts, it is hereby declared that the expression "matter" includes an appeal under section 91.

(6) If the Members of a Benchdiffer in opinion on any point, they shall state the point or points on whichthey differ, and make a reference to the Chairman who shall either hear thepoint or points himself or refer the case for hearing on such point or pointsby one or more of the other members and such point or points shall be decidedaccording to the opinion of the majority of the Members who have heard thecase, including those who first heard it.

85.Qualifications forappointment as Chairman, Vice-Chairman, or other Members: (1) A person shall not bequalified for appointment as The Chairman unless he –

(a) is, or has been, a Judge ofa High Court; or

(b) has, for at least twoyears, held the office of a Vice-Chairman.

(2) A person shall not bequalified for appointment as the Vice-Chairman, unless he –

(a) has, for at least twoyears, held the office of a Judicial Member or a Technical Member; or

(b) has been a member of theIndian Legal Service and has held a post in Grade I of that Service or anyhigher post for at least five years.

(3) A person shall not bequalified for appointment as a Judicial Member, unless he –

(a) has been a member of theIndian Legal Service and has held the post in Grade I of that Service for atleast three years; or

(b) has, for at least tenyears, held a civil judicial office.

(4) A person shall not bequalified for appointment as a Technical Member, unless he –

(a) has, for at least tenyears, exercised functions of a tribunal under this Act or under the Trade andMerchandise Marks Act, 1958 (43 of 1958), or both, and has held a post notlower than the post of a Joint Registrar for at least five years; or

(b) has, for at least tenyears, been an advocate of a proven specialised experience in trade mark law.

(5) Subject to the provisionsof sub-section (6), the Chairman, Vice-Chairman and every other Member shall beappointed by the President of India.

(6) No appointment of a personas the Chairman shall be made except after consultation with the Chief Justiceof India.

86.Term of office of Chairman,Vice-Chairman and other Members: The Chairman, Vice-Chairman or other Members shall hold office assuch for a term of five years from the date on which he enters upon his officeor until he attains, –

(a) in the case of Chairman andVice-Chairman, the age of sixty-five years; and

(b) in the case of a Member,the age of sixty-two years, whichever is earlier.

87.Vice-Chairman or senior-mostMember to act as Chairman or discharge his functions in certain circumstances: (1) In the event of or anyvacancy in the office of the Chairman by reasons of his death, resignation orotherwise, the Vice-Chairman and in his absence the senior-most Member shallact as Chairman until the date on which a new Chairman, appointed in accordancewith the provisions of this Act to fill such vacancy, enters upon his office.

(2) When the Chairman is unableto discharge his functions owing to his absence, illness or any other cause, theVice-Chairman and in his absence the senior-most Member shall discharge thefunctions of the Chairman until the date on which the Chairman resumes hisduty.

88.Salaries, allowances andother terms and conditions of service of Chairman, Vice-Chairman and otherMembers: (1) The salaries and allowancespayable to, and other terms and conditions of service (including pension,gratuity and other retirement benefits), of the Chairman, Vice-Chairman andother Members shall be such as may be prescribed.

(2) Notwithstanding anythingcontained in sub-section (1), a person who, immediately before the date ofassuming office as the Chairman, Vice-Chairman or other Member was in serviceof Government, shall be deemed to have retired from service on the date on whichhe enters upon office as the Chairman, Vice-Chairman or other Member.

89.Resignation and removal: (1) The Chairman, Vice-Chairmanor any other Member may, bynotice in writing under his hand addressed to the President of India, resignhis office:

Provided that the Chairman,Vice-Chairman or any other Member shall, unless he is permitted by thePresident of India to relinquish his office sooner, continue to hold officeuntil the expiry of three months from the date of receipt of such notice oruntil a person duly appointed as his successor enters upon his office or untilthe expiry of his term of office, whichever is earlier.

(2) The Chairman, Vice-Chairmanor any other Member shall not be removed from his office except by an ordermade by the President of India on the ground of proved misbehaviour orincapacity after an inquiry made by a Judge of the Supreme Court in which theChairman, Vice-Chairman or other Member had been informed of the chargesagainst him and given a reasonable opportunity of being heard in respect ofthose charges.

(3) The Central Government may,by rules, regulate the procedure for the investigation of misbehaviour orincapacity of the Chairman, Vice-Chairman or other Member referred to insub-section (2).

90.Staff of Appellate Board: (1) The Central Governmentshall determine the nature and categories of the officers and other employeesrequired to assist the Appellate Board in the discharge of its functions andprovide the Appellate Board with such officers and other employees as it maythink fit.

(2) The salaries and allowancesand conditions of service of the officers and other employees of the AppellateBoard shall be such as may be prescribed.

(3) The officers and otheremployees of the Appellate Board shall discharge their functions under thegeneral superintendence of the Chairman in the manner as may be prescribed.

91.Appeals to Appellate Board: (1) Any person aggrieved by anorder or decision of the Registrar under this Act, or the rules made thereundermay prefer an appeal to the Appellate Board within three months from the dateon which the order or decision sought to be appealed against is communicated tosuch person preferring the appeal.

(2) No appeal shall be admittedif it is preferred after the expiry of the period specified under sub-section(1):

Provided that an appeal may beadmitted after the expiry of the period specified therefor, if the appellantsatisfies the Appellate Board that he had sufficient cause for not preferringthe appeal within the specified period.

(3) An appeal to the AppellateBoard shall be in the prescribed form and shall be verified in the prescribedmanner and shall be accompanied by a copy of the order or decision appealedagainst and by such fees as may be prescribed.

92.Procedure and powers ofAppellate Board: (1) The Appellate Board shall not be bound by the procedure laiddown in the Code of Civil Procedure, 1908 (5 of 1908) but shall be guided byprinciples of natural justice and subject to the provisions of this Act and therules made thereunder, the Appellate Board shall have powers to regulate itsown procedure including the fixing of places and times of its hearing.

(2) The Appellate Board shallhave, for the purpose of discharging its functions under this Act, the samepowers 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 forexamination of witnesses;

(d) any other matter which maybe prescribed.

(3) Any proceeding before theAppellate Board shall be deemed to be a judicial proceeding within the meaningof sections 193 and 228, and for the purpose of section 196, of the IndianPenal Code (45 of 1860), and the Appellate Board shall be deemed to be a civilcourt for all the purposes of section 195 and Chapter XXVI of the Code ofCriminal Procedure, 1973 (2 of 1974).

93.Bar of jurisdiction ofcourts, etc.: No courtor other authority shall have or, be entitled to, exercise any jurisdiction,powers or authority in relation to the matters referred to in sub-section (1)of section 91.

94.Bar to appear beforeAppellate Board: On ceasing to hold office, the Chairman, Vice-Chairman or other Membersshall not appear before the Appellate Board or the Registrar.

95.Conditions as to makinginterim orders: Notwithstandinganything contained in any other provisions of this Act or in any other law forthe time being in force, no interim order (whether by way of injunction or stayor any other manner) shall be made on, or in any proceedings relating to, anappeal unless –

(a) copies of such appeal andof all documents in support of the plea for such interim order are furnished tothe party against whom such appeal is made or proposed to be made; and

(b) opportunity is given tosuch party to be heard in the matter.

96.Power of Chairman totransfer cases from one Bench to another: On the application of any of the parties and afternotice to the parties, and after hearing such of them as he may desire to beheard, or on his own motion without such notice, the Chairman may transfer anycase pending before one Bench, for disposal, to any other Bench.

97.Procedure for applicationfor rectification, etc., before Appellate Board: (1) An application for rectification of the registermade to the Appellate Board under section 57 shall be in such form as may beprescribed.

(2) A certified copy of everyorder or judgment of the Appellate Board relating to a registered trade markunder this Act shall be communicated to the Registrar by the Board and theRegistrar shall give effect to the order of the Board and shall, when sodirected, amend the entries in, or rectify, the register in accordance withsuch order.

98.Appearance of Registrar inlegal proceedings: (1) The Registrar shall have the right to appear and be heard –

(a) in any legal proceedingsbefore the Appellate Board in which the relief sought includes alteration orrectification of the register or in which any question relating to the practiceof the Trade Marks Registry is raised;

(b) in any appeal to the Boardfrom an order of the Registrar on an application for registration of a trademark –

(i) which is not opposed, andthe application is either refused by the Registrar or is accepted by himsubject to any amendments, modifications, conditions or limitations, or

(ii) which has been opposed andthe Registrar considers that his appearance is necessary in the publicinterest,

and the Registrar shall appearin any case if so directed by the Board.

(2) Unless the Appellate Boardotherwise directs, the Registrar may, in lieu of appearing, submit a statementin writing signed by him, giving such particulars as he thinks proper of theproceedings before him relating to the matter in issue or of the grounds of anydecision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, orof other matters relevant to the issues and within his knowledge as Registrar,and such statement shall be evidence in the proceeding.

99.Cost of Registrar inproceedings before Appellate Board: In all proceedings under this Act before theAppellate Board the costs of the Registrar shall be in the discretion of theBoard, but the Registrar shall not be ordered to pay the costs of any of theparties.

100.Transfer of pendingproceedings to Appellate Board: All cases of appeals against any order or decision of theRegistrar and all cases pertaining to rectification of register, pending beforeany High Court, shall be transferred to the Appellate Board from the date asnotified by the Central Government in the Official Gazette and the AppellateBoard may proceed with the matter either de novo or from the stage it was sotransferred.

CHAPTER XII

Offences, Penalties and Procedure

101.Meaning of applying trademarks and trade descriptions: (1) A person shall be deemed to apply a trade mark or mark ortrade description to goods or services who –

(a) applies it to the goodsthemselves or uses it in relation to services; or

(b) applies it to any packagein or with which the goods are sold, or exposed for sale, or had in possessionfor sale or for any purpose of trade or manufacture; or

(c) places, encloses or annexesany goods which are sold, or exposed for sale, or had in possession for sale orfor any purpose of trade or manufacture, in or with any package or other thingto which a trade mark or mark or trade description has been applied; or

(d) uses a trade mark or markor trade description in any manner reasonably likely to lead to the belief thatthe goods or services in connection with which it is used are designated ordescribed by that trade mark or mark or trade description; or

(e) in relation to the goods orservices uses a trade mark or trade description in any sign, advertisement,invoice, catalogue, business letter, business paper, price list or othercommercial document and goods are delivered or services are rendered to aperson in pursuance of a request or order made by reference to the trade markor trade description as so used.

(2) A trade mark or mark ortrade description shall be deemed to be applied to goods whether it is wovenin, impressed on, or otherwise worked into, or annexed or affixed to, the goodsor to any package or other thing.

102.Falsifying and falselyapplying trade marks: (1) A person shall be deemed to falsify a trade mark who, either,-

(a) without the assent of theproprietor of the trade mark makes that trade mark or a deceptively similarmark; or

(b) falsifies any genuine trademark, whether by alteration, addition, effacement or otherwise.

(2) A person shall be deemed tofalsely apply to goods or services a trade mark who, without the assent of theproprietor of the trade mark, –

(a) applies such trade mark ora deceptively similar mark to goods or services or any package containinggoods;

(b) uses any package bearing amark which is identical with or deceptively similar to the trade mark of suchproprietor, for the purpose of packing, filling or wrapping therein any goodsother than the genuine goods of the proprietor of the trade mark.

(3) Any trade mark falsified asmentioned in sub-section (1) or falsely applied as mentioned in sub-section(2), is in this Act referred to as a false trade mark.

(4) In any prosecution forfalsifying a trade mark or falsely applying a trade mark to goods or services,the burden of proving the assent of the proprietor shall lie on the accused.

103.Penalty for applying falsetrade marks, trade descriptions, etc.: Any person who –

(a) falsifies any trade mark;or

(b) falsely applies to goods orservices any trade mark; or

(c) makes, disposes of, or hasin his possession, any die, block, machine, plate or other instrument for thepurpose of falsifying or of being used for falsifying, a trade mark; or

(d) applies any false tradedescription to goods or services; or

(e) applies to any goods towhich an indication of the country or place in which they were made or producedor the name and address of the manufacturer or person for whom the goods aremanufactured is required to be applied under section 139, a false indication ofsuch country, place, name or address; or

(f) tampers with, alters oreffaces an indication of origin which has been applied to any goods to which itis required to be applied under section 139; or

(g) causes any of the thingsabove-mentioned in this section to be done,

shall, unless he proves that heacted, without intent to defraud, be punishable with imprisonment for a termwhich shall not be less than six months but which may extend to three years andwith fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:

Provided that the court may,for adequate and special reasons to be mentioned in the judgment, impose asentence of imprisonment for a term of less than six months or a fine of lessthan fifty thousand rupees.

104.Penalty for selling goodsor providing services to which false trade mark or false trade description isapplied: Any person who sells, lets forhire or exposes for sale, or hires or has in his possession for sale, goods orthings, or provides or hires services, to which any false trade mark or falsetrade description is applied or which, being required under section 139 to haveapplied to them an indication of the country or place in which they were madeor produced or the name and address of the manufacturer, or person for whom thegoods are manufactured or services provided, as the case may be, are withoutthe indications so required, shall, unless he proves,

(a) that, having taken allreasonable precautions against committing an offence against this section, hehad at the time of commission of the alleged offence no reason to suspect thegenuineness of the trade mark or trade description or that any offence had beencommitted in respect of the goods or services; or

(b) that, on demand by or onbehalf of the prosecutor, he gave all the information in his power with respectto the person from whom he obtained such goods or things or services; or

be punishable with imprisonmentfor a term which shall not be less than six months but which may extend tothree years and with fine which shall not be less than fifty thousand rupeesbut which may extend to two lakh rupees:

105.Enhanced penalty on secondor Subsequent conviction: Whoever having already been convicted of an offence under section103 or section 104 is again convicted of any such offence shall be punishablefor the second and for every subsequent offence, with imprisonment for a termwhich shall not be less than one year but which may extend to three years andwith fine which shall not be less than one lakh rupees but which may extend totwo lakh rupees:

Provided that the court may,for adequate and special reason to be mentioned in the judgment, impose asentence of imprisonment for a term of less than one year or a fine of lessthan one lakh rupees:

Provided further that for thepurposes of this section, no cognizance shall be taken of any conviction madebefore the commencement of this.

106.Penalty for removing piecegoods, etc., contrary to section 81: If any person removes or attempts to remove orcauses or attempts to, cause to be, removed for, sale from any premisesreferred to in section 81 or sells or exposes for sale or has in his possessionfor sale or for any purpose of trade or manufacture piece goods or cotton yarnor cotton thread which is not marked as required by that section, every suchpiece and every such bundle of yarn and all such thread and everything used forthe packing thereof shall be forfeited to Government and such person shall bepunishable with fine which may extend to one thousand rupees.

107.Penalty for falselyrepresenting a trade mark as registered: (1) No person shall make any representation –

(a) with respect to a mark, notbeing a registered trade mark, to the effect that it is a registered trademark; or

(b) with respect to a part of aregistered 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 aregistered trade mark is registered in respect of any goods or services inrespect of which it is not in fact registered; or

(d) to the effect thatregistration of a trade mark gives an exclusive right to the use thereof in anycircumstances in which, having regard to limitation entered on the register,the registration does not in fact give that right.

(2) If any person contravenesany of the provisions of sub-section (1), he shall be punishable withimprisonment for a term which may extend to three years, or with fine, or withboth.

(3) For the purposes of thissection, the use in India in relation to a trade mark of the word"registered", or of any other expression, symbol or sign referringwhether expressly or impliedly to registration, shall be deemed to import areference to registration in the register, except –

(a) where that word or otherexpression, symbol or sign is used in direct association with other wordsdelineated in characters at least as large as these in which chat word or otherexpression, symbol or sign is delineated and indicating that the reference isto registration as a trade mark under the law of a country outside India beinga country under the law of which the registration referred to is in fact inforce; or

(b) where that otherexpression, symbol or sign is of itself such as to indicate that the referenceis to such registration as is mentioned in clause (a); or

(c) where that word is used inrelation to a mark registered as a trade mark under the law of a countryoutside India and in relation solely to goods to be exported to that country orin relation to services for use in that country.

108.Penalty for improperly describinga place of business as connected with the Trade Marks Office: If any person uses on his placeof business, or on any document issued by him, or otherwise, words which wouldreasonably lead to the belief that his place of business is, or is officiallyconnected with, the Trade Marks Office, he shall be punishable withimprisonment for a term which may extend to two years, or with fine, or withboth.

109.Penalty for falsificationof entries in the register: If any person makes, or causes to be made, a false entry in theregister, or a writing falsely purporting to be a copy of an entry in theregister, or produces or tenders or causes to be produced or tendered, inevidence any such writing, knowing the entry or writing to be false, he shallbe punishable with imprisonment for a term which may extend to two years, orwith fine, or with both.

110.No offence in certaincases: The provisions of sections 102,103, 104 and 105 shall, in relation to a registered trade mark or proprietor orsuch mark, be subject to the rights created or recognised by this Act and noact or omission shall be deemed to be an offence under the aforesaid sectionsif, –

(a) the alleged offence relatesto a registered trade mark and the act or omission is permitted under this Act;and

(b) the alleged offence relatesto a registered or an unregistered trade mark and the act or omission ispermitted under any other law for the time being in force.

111.Forfeiture of goods: (1) Where a person is convictedof an offence under section 103 or section 104 or section 105 or is acquittedof an offence under section 103 or section 104 on proof that he acted withoutintent to defraud, or under section 104 on proof of the matters specified inclause (a), clause (b) or clause (c) of that section, the court convicting oracquitting him may direct the forfeiture to Government of all goods and thingsby means of, or in relation to, which the offence has been committed, or butfor such proof as aforesaid would have been committed.

(2) When a forfeiture isdirected on a conviction and an appeal lies against the conviction, an appealshall lie against the forfeiture also.

(3) When a forfeiture isdirected on acquittal and the goods or things to which the direction relatesare of value exceeding fifty rupees, an appeal against the forfeiture may bepreferred, within thirty days from the date of the direction, to the court towhich in appealable cases appeals lie from sentences of the court whichdirected the forfeiture.

(4) When a forfeiture is directedon a conviction, the court, before whom the person is convicted, may order anyforfeited articles to be destroyed or otherwise disposed of as the court thinksfit.

112.Exemption of certainpersons employed in ordinary course of business: Where a person accused of an offence under section103 proves –

(a) that in the ordinary courseof his. business he is employed on behalf of other persons to apply trade marksor 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 isthe subject of the charge he was so employed, and was not interested in thegoods or other thing by way of profit or commission dependent on the sale ofsuch goods or providing of services, as the case may be; and

(c) that, having taken allreasonable precautions against committing the offence charged, he had, at thetime of the commission of the alleged offence, no reason to suspect thegenuineness of the trade mark or trade description; and

(d) that, on demand made by oron behalf of the prosecutor, he gave all the information in his power withrespect to the persons on whose behalf the trade mark or trade description wasapplied,

he shall be acquitted.

113.Procedure where invalidityof registration is pleaded by the accused: (1) Where the offence charged under section 103 orsection 104 or section 105 is in relation to a registered trade mark and theaccused pleads that the registration of the trade mark is invalid, thefollowing procedure shall be followed:

(a) If the court is satisfiedthat such defence is prima facie tenable, it shall not proceed with the chargebut shall adjourn the proceeding for three months from the date on which theplea of the accused is recorded to enable the accused to file an applicationbefore the Appellate Board under this Act, for the rectification of theregister on the ground that the registration is invalid.

(b) If the accused proves tothe court that he has made such application within the time so limited orwithin such further time as the court may for sufficient cause allow, thefurther proceedings in the prosecution shall stand stayed till the disposal ofsuch application for rectification.

(c) If within a period of threemonths or within such extended time as may be allowed by the court the accusedfails to apply to the Appellate Board for rectification of the register, thecourt shall proceed with the case as if the registration were valid.

(2) Where before the institutionof a complaint of an offence referred to in subsection (1), any application forthe rectification of the register concerning the trade mark in question on theground of invalidity of the registration thereof has already been properly madeto and is pending before the tribunal, the court shall stay the furtherproceedings in the prosecution pending the disposal of the applicationaforesaid and shall determine the charge against the accused in conformity withthe result of the application for rectification in so far as the complainantrelies upon the registration of his mark.

114.Offences by companies: (1) If the person committing anoffence under this Act is a company, the company as well as every person incharge of, and responsible to the company for the conduct of its business atthe time of the commission of the offence shall be deemed to be guilty of theoffence and shall be liable to be proceeded against and punished accordingly:

Provided that nothing containedin this sub-section shall render any such person liable to any punishment if heproves that the offence was committed without his knowledge or that heexercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anythingcontained in sub-section (1), where ah offence under this Act has beencommitted by a company and it is proved that the offence has been committedwith the consent or connivance of, or that the commission of the offence isattributable to any neglect on the part of, any director, manager, secretary orother officer of the company, such director, manager, secretary or otherofficer shall also be deemed to be guilty of that offence and shall be liableto be proceeded against and punished accordingly.

Explanation: For the purposesof this section –

(a) "company" meansany body corporate and includes a firmor other association of individuals;and

(b) "director", inrelation to a firm, means a partner in the firm.

115.Cognizance of certainoffences and the powers of police officer for search and seizure: (1) No court shall takecognizance of an offence under section 107 or section 108 or section 109 excepton complaint in writing made by the Registrar or any officer authorised by himin writing:

Provided that in relation toclause (c) of sub-section (1) of section 107, a court shall take cognizance ofan offence on the basis of a certificate issued by the Registrar to the effectthat a registered trade mark has been represented as registered in respect ofany goods or services in respect of which it is not in fact registered.

(2) No court inferior to thatof a Metropolitan Magistrate or Judicial Magistrate of the first class shalltry an offence under this Act.

(3) The offences under section103 or section 104 or section 105 shall be cognizable.

(4) Any police officer notbelow the rank of deputy superintendent of police or equivalent, may, if he issatisfied that any of the offences referred to in sub-section (3) has been, isbeing, or is likely to be, committed, search and seize without warrant thegoods, die, block, machine, plate, other instruments or things involved incommitting the offence, wherever found, and all the articles so seized shall,as soon as practicable, be produced before a Judicial Magistrate of the firstclass or Metropolitan Magistrate, as the case may be:

Provided that the policeofficer, before making any search and seizure, shall obtain the opinion of theRegistrar on facts involved in the offence relating to trade mark and shallabide by the opinion so obtained.

(5) Any person having aninterest in any article seized under sub-section (4), may, within fifteen daysof such seizure, make an application to the Judicial Magistrate of the firstclass or Metropolitan Magistrate, as the case may be, for such article being restoredto him and the Magistrate, after hearing the applicant and the prosecution,shall make such order on the application as he may deem fit.

116.Evidence of origin of goodsimported by sea: In the case of goods brought into India by sea, evidence of theport of shipment shall, in a prosecution for an offence under this Act or underclause (6) of section 112 of the Customs Act, 1962 (52 of 1962), relating toconfiscation of goods under clause (d) of section 111 and notified by theCentral Government under clause (n) of sub-section (2) of section 11 of thesaid 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 orproduced.

117.Costs of defence orprosecution: In anyprosecution under this Act, the court may order such costs to be paid by theaccused to the complainant, or by the complainant to the accused, as the courtdeems reasonable having regard to all the circumstances of the case; and theconduct of the parties and the costs so awarded shall be recoverable, as ifthey were a fine.

118.Limitation o f prosecution:No prosecution for an offenceunder this Act or under clause (b) of section 112 of the Customs Act, 1962 (52of 1962), relating to confiscation of goods under clause (d) of section 111 andnotified by the Central Government under clause (n) of sub-section (2) ofsection 11 of the said Act for the protection of trade marks, relating toimport of goods shall be commenced after expiration of three years next afterthe commission of the offence charged, or two years after the discovery thereofby the prosecutor, whichever expiration first-happens.

119.Information as tocommission of offence: An officer of the Government whose duty it is to take part in theenforcement of the provisions of this Chapter shall not be compelled in anycourt to say whence he got any information as to the commission of any offenceagainst this Act.

120.Punishment of abetment inIndia of acts done out of India: If any person, being within India, abets the commission, withoutIndia, of any act which, if committed in India, would, under this Act, be anoffence, he may be tried for such abetment in any place in India in which hemay be found, and be punished therefor with the punishment to which he would beliable if he had himself committed in that place the act which he abetted.

121.Instructions of CentralGovernment as to permissible variation to be observed by criminal courts: The Central Government may, bynotification in the Official Gazette, issue instructions for the limits ofvariation, as regards number, quantity, measure, gauge or weight which are tobe recognised by criminal courts as permissible in the case of any goods.

CHAPTER XIII

Miscellaneous

122.Protection of action takenin good faith: No suitor other legal proceedings shall lie against any person in respect of anythingwhich is in good faith done or intended to be done in pursuance of this Act.

123.Certain persons to bepublic servants: Every person appointed under this Act and every Member of theAppellate Board shall be deemed to be a public servant within the meaning ofsection 21 of the Indian Penal Code (45 of 1860).

124.Stay of proceedings wherethe validity of registration of the trade mark is questioned, etc.: (1) Where in any suit forinfringement of a trade mark –

(a) the defendant pleads thatregistration of the plaintiff’s trade mark is invalid; or

(b) the defendant raises adefence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of thedefendant’s trade mark,

the court trying the suit(hereinafter referred to as the court), shall, –

(i) if any proceedings forrectification of the register in relation to the plaintiff’s or defendant’s trademark are pending before the Registrar or the Appellate Board, stay the suitpending the final disposal of such proceedings;

(ii) if no such proceedings arepending and the court is satisfied that the plea regarding the invalidity ofthe registration of the plaintiffs or defendant’s trade mark is prima facietenable, raise an issue regarding the same and adjourn the case for a period ofthree months from the date of the framing of the issue in order to enable theparty concerned to apply to the Appellate Board for rectification of theregister.

(2) If the party concernedproves to the court that he has made any such application as Is referred to inclause (b) (ii) of sub-section (1) within the time specified therein or withinsuch extended time as the court may for sufficient cause allow, the trial ofthe suit shall stand until the final disposal of the rectification proceedings.

(3) If no such application asaforesaid has been made within the time so specified or within such extendedtime as the court may allow, the issue as to the validity of the registrationof the trade mark concerned shall be deemed to have been abandoned and thecourt shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in anyrectification proceedings referred to in subsection (1) or sub-section (2)shall be binding upon the parties and the court shall dispose of the suitconformably to such order in so far as it relates to the issue as to thevalidity of the registration of the trade mark.

(5) The stay of a suit for theinfringement of a trade mark under this section shall not preclude the courtfrom making any interlocutory order (including any order granting aninjunction, directing account to be kept, appointing a receiver or attachingany property), during the period of the stay of the suit.

125.Application forrectification of register to be made to Appellate Board in certain cases: (1) Where in a suit forinfringement of a registered trade mark the validity of the registration of theplaintiff’s trade mark is questioned by the defendant or where in any such suitthe defendant raises a defence under clause (e) of sub-section (2) of section30 and the plaintiff questions the validity of the registration of thedefendant’s trade mark, the issue as to the validity, of the registration ofthe trade mark concerned shall be determined only on an application for therectification of the register and, notwithstanding anything contained insection 47 or section 57, such application shall be made to the Appellate Boardand not to the Registrar.

(2) Subject to the provisionsof sub-section (1), where an application for rectification of the register ismade to the Registrar under section 47 or section 57, the Registrar may, if hethinks fit, refer the application at any stage of the proceedings to theAppellate Board.

126.Implied warranty on sale ofmarked goods: Where amark or a trade mark or trade description has been applied to the goods on saleor in the contract for sale of any goods or in relation to any service theseller shall be deemed to warrant that the mark is a genuine mark and notfalsely applied, or that the trade description is not a false trade descriptionwithin the meaning of this Act unless the contrary is expressed in writingsigned by or on behalf of the seller and delivered at the time of the sale ofgoods or providing of services on contract to and accepted by the buyer.

127.Powers of Registrar: In all proceedings under thisAct before the Registrar, –

(a) the Registrar shall haveall the powers of a civil court for the purposes of receiving evidence,administering oaths, enforcing the attendance of witnesses, compelling thediscovery and production of documents and issuing commissions for theexamination of witnesses;

(b) the Registrar may, subjectto any rules made in this behalf under section 157, make such orders as tocosts as he considers reasonable, and: any such order shall be executable as adecree of a civil court:

Provided that the Registrarshall have no power to award costs to or against any party on an appeal to himagainst a refusal of the proprietor of a certification trade mark to certifygoods or provision of services or to authorise, the use of the mark;

128.Exercise of discretionarypower by Registrar: Subject to the provisions of section 131, the Registrar shall notexercise any discretionary or other power vested in him by this Act or therules made thereunder adversely to a person applying for the exercise of thatpower without (if so required by that person within the prescribed time) givingto the person an opportunity of being heard.

129.Evidence before Registrar: In any proceeding under thisAct before the Registrar, evidence shall be given by affidavit:

Provided that the Registrarmay, if he thinks fit, take oral evidence in lieu of, or in addition to such evidence byaffidavit.

130.Death of party to aproceeding: If aperson who is a party to a proceeding under this Act (not being a proceedingbefore the Appellate Board or a court) dies pending the proceeding, theRegistrar may, on request, and on proof to his satisfaction of the transmissionof the interest of the deceased person, substitute in the proceeding hissuccessor in interest in his place, or, if the Registrar is of opinion that theinterest of the deceased person is sufficiently represented by the survivingparties, permit the proceeding to continue without the substitution of hissuccessor in interest.

131.Extension of time: (1) If the Registrar issatisfied, on application made to him in the prescribed manner and accompaniedby the prescribed fee, that there is sufficient cause for extending the timefor doing any act (not being a time expressly provided in this Act), whetherthe time so specified has expired or not, he may, subject to such conditions ashe 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 disposingof an application for extension of time, and no appeal shall lie from any orderof the Registrar under this sections.

132.Abandonment: Where, in the opinion of the Registrar, an applicant is in defaultin the prosecution of an application filed under this Actor any Act relating totrade 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 specifiedand after giving him, if so, desired, an opportunity of being heard, treat theapplication as abandoned, unless the default is remedied within the timespecified in the notice.

133.Preliminary advice by, theRegistrar as to distinctiveness: (1) The Registrar may, on application made to him in theprescribed manner by any person who proposes to apply for the registration of atrade mark, give advice as to whether the trade mark appears to him prima facieto be distinctive.

(2) If, on an application forthe registration of a trade mark as to which the Registrar has given advice asaforesaid in the affirmative made within three months after the advice wasgiven, the Registrar, after further investigation or consideration, givesnotice, to the applicant of objection on the ground that the trade mark is notdistinctive, the applicant shall be entitled, on giving notice of withdrawal ofthe application within the prescribed period, to have repaid to him any fee paid on the filing of the application.

134.Suit for infringement etc.,to be instituted before District Court: (1) No suit –

(a) for the infringement of aregistered trade mark; or

(b) rebating to any right in aregistered trade mark; or

(c) for passing off arising outof the use by the defendant of any trade mark which is identical with ordeceptively similar to the plaintiff’strade mark, whether registered or unregistered,

shall be instituted in anycourt 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 havingjurisdiction" shall, notwithstanding anything contained in the Code ofCivil Procedure, 1908 (5 of 1908) or any other law for the time being in force,includes District Court within the local limits of whose jurisdiction, at thetime of the institution of the suit or other proceeding, the person institutingthe suit or proceeding, or where there are more than one such persons any ofthem, actually and voluntarily resides or carries on business or personally worksfor gain.

Explanation: For the purposesof sub-section (2), "person" includes the registered proprietor andthe registered user.

135.Relief in suits forinfringement or for passing off: (1) The relief which a court may grant in any suit for infringementor for passing off referred to in section 134 includes injunction (subject tosuch terms, if any; as the court thinks fit) and at the option of theplaintiff, either damages or an account of profits, together with or withoutany order for the delivery-up of the infringing labels and marks fordestruction or erasure.

(2) The order of injunctionunder sub-section (1) may include an ex parte injunction or any interlocutoryorder for any of the following matters, namely:

(a) for discovery of documents;

(b) preserving of infringinggoods, documents or other evidence which are related to the subject-matter ofthe suit;

(c) restraining the defendantfrom disposing of or dealing with his assets in a manner which may adverselyaffect plaintiff’s ability to recover damages, costs or other pecuniaryremedies which may be finally awarded to the plaintiff.

(3) Notwithstanding anythingcontained in sub-section (1), the court shall not grant relief by way ofdamages (other than nominal damages) or on account of profits in any case –

(a) where in a suit forinfringement of a trade mark, the infringement complained of is in relation toa certification trade mark or collective mark; or

(b) where in a suit forinfringement the defendant satisfies the court –

(i) that at the time hecommenced to use the trade mark complained of in the suit, he was unaware andhad no reasonable ground for believing that the trade mark of the plaintiff wason the register or that the plaintiff was a registered user using by way ofpermitted use; and

(ii) that when he became awareof the existence and nature of the plaintiff’s right in the trade mark, heforthwith ceased to use the trade mark in relation to goods or services inrespect of which it was registered; or

(i) that at the time hecommenced to use the trade mark complained of in the suit he was unaware andhad no reasonable ground for believing that the trade mark of the plaintiff wasin use; and

(ii) that when he became awareof the existence and nature of the plaintiff’s trade mark he forthwith ceasedto use the trade mark complained of.

136.Registered user to beimpleaded in certain proceedings: (1) In every proceeding under Chapter VII or under section 91,every registered user of a trade mark using by way of permitted use, who is nothimself an applicant in respect of any proceeding under that Chapter orsection, shall be made a party to the proceeding.

(2) Notwithstanding anythingcontained in any other law, a registered user so made a party to the proceedingshall not be liable for any costs unless he enters an appearance and takes partin the proceeding.

137.Evidence of entries inregister, etc., and things done by the Registrar: (1) A copy of any entry in the register or of anydocument referred to in subsection (1) of section 148:, purporting to be certified by the Registrarand sealed with the seal of the Trade Marks Registry shall be admitted inevidence in all courts and in all proceedings without further proof orproduction of the original.

(2) A certificate purporting tobe under the hand of the Registrar as to any entry, matter or thing that he isauthorised by this Act or the rules to make or do shall be prima facie evidenceof the entry having been made, and of the contents thereof, or of the matter orthings having been done or not done.

138.Registrar and otherofficers not compellable to produce register, etc.: The Registrar or any officer ofthe Trade Marks Registry shall not, in an legal proceedings to which he is nota party, be compellable to produce the register of any other document in hiscustody, the contents of which can be proved by the production of a certifiedcopy issued under this Act or to appear as a witness to prove the matterstherein recorded unless by order of the court made for special cause.

139.Power to require goods toshow indication of origin: (1) The Central Government may, by notification in the OfficialGazette, require that goods of any class specified in the notification whichare 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 asmay 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 weremade or produced, or of the name and address of the manufacturer or the personfor whom the goods were manufactured.

(2) The notification mayspecify 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 occasionson which the presence of the indication shall be necessary, that is to say,whether on Importation only, or also at the time of sale, whether by wholesale or retail orboth.

(3) No notification under thissection shall be issued, unless application is made for its issue by persons orassociations substantially representing the interests of dealers in, ormanufacturers, producers, or users of, the goods concerned, or unless theCentral Government is otherwise convinced that it is necessary in the publicinterest to issue the notification, with or without such inquiry, as theCentral Government may consider necessary.

(4) The provisions of section23 of the General Clauses Act, 1897 (10 of 1897) shall apply to the issue of anotification under this section as they apply to the making of a rule orbye-law the making of which is subject to the condition of previouspublication.

(5) A notification under thissection shall not apply to goods made or produced beyond the limits of Indiaand imported into India, if in respect of those goods, the Commissioner ofCustoms is satisfied at the time of importation that they are intended for exportationwhether after transhipment in or transit through India or otherwise.

140.Power to requireinformation of imported goods bearing false trade marks: (1) The proprietor or alicensee of a registered trade mark may give notice in writing to the Collectorsof Customs to prohibit the importation of any goods if the import of the saidgoods constitute infringement under clause (c) of sub-section (6) of section29.

(2) Where goods, which areprohibited to be imported into India by notification of the Central Governmentunder clause (n) of sub-section (2) of section 11 of the Customs 52 of 1962 (52of 1962) for the protection of trade marks, and are liable to confiscation onimportation under that Act, are imported into India, the Commissioner ofCustoms if, Upon representation made to him, he has reason to believe that thetrade mark complained of is used as a false trade mark, may require theimporter of the goods, or his agent, to produce any documents m his possessionrelating to the goods and to furnish information as to the name and address ofthe person by whom the goods were consigned to India and the name and addressof the person to whom the goods were sent in India.

(3) The importer or his agentshall, within fourteen days. Comply with the requirement as aforesaid, and ifhe fails to do so, he shall be punishable with fine which may extend to fivehundred rupees.

(4) Any information obtainedfrom the importer of the goods or his agent under this section may becommunicated by the Commissioner of Customs to the registered proprietor orregistered user of the trade mark which is alleged to have been used as a falsetrade mark.

141.Certificate of validity: If in any legal proceeding forrectification of the register before the Appellate Board a decision is oncontest given in favour of the registered proprietor of the trade mark on theissue as to the validity of the registration of the trade mark, the AppellateBoard may grant a certificate to that effect, and if such a certificate isgranted, then, in any subsequent legal proceeding in which the said validitycomes into question the said proprietor on obtaining a final order or judgmentin his favour affirming validity of the registration, of the trade mark shall,unless the said final order of judgement for sufficient reason directsotherwise, be entitled to his full cost charges and expenses as between legalpractitioner and client.

142.Groundless threats of legalproceedings: (1) Wherea person, by means of circulars, advertisements or otherwise threatens a personwith an action or proceeding for infringement of a trade mark which isregistered, or alleged by the first-mentioned person to be registered, or withsome other like proceeding, a person aggrieved may, whether the person makingthe threats is or is not the registered proprietor or the registered user ofthe trade mark, being a suit against the first-mentioned person and may obtaina declaration to the effect that the threats are unjustifiable, and aninjunction against the continuance of the threats and may recover such damages(if any) as he has sustained, unless the first-mentioned person satisfies thecourt that the trade mark is registered and that the acts in respect of whichthe proceedings were threatened, constitute, or, if done, would constitute, aninfringement of the trade mark.

(2) The last precedingsub-section does not apply if the registered proprietor of the trade mark, or aregistered user acting in pursuance of sub-section (1) of section 52 with duediligence commences and prosecutes an action against the person threatened forinfringement of the trade mark.

(3) Nothing in this sectionshall render a legal practitioner or a registered trade marks agent liable toan action under this section in respect of an act done by him in hisprofessional capacity on behalf of a client.

(4) A suit under sub-section(1) shall not be instituted in any court inferior to a District Court.

143.Address for service: An address for service statedin an application or notice of opposition shall for the purposes of theapplication or notice Of opposition be deemed to be the address of theapplicant or opponent, as the case may be, and all documents in relation to theapplication or notice of opposition may be served by leaving them at or sendingthem by post to the address for service of the applicant or opponent, as thecase may be.

144.Trade usages, etc., to be taken intoconsideration: In anyproceeding relating to a trade mark, the tribunal shall admit evidence of theusages of the trade concerned and of any relevant trade mark or trade name orget up legitimately used by other persons.

145.Agents: Where, by or under this Act, any act, other than the making of an affidavit, isrequired to be done before the Registrar by any person, the act may; subject tothe rules made in this behalf, be done instead of by that person himself, by aperson duly authorised in the prescribed manner, who is –

(a) a legal practitioner, or

(b) a person registered in theprescribed manner as a trade marks agent, or

146.Marks registered by anagent or representative without authority: If an agent or a representative of the proprietor ofa registered trade mark, without authority uses or attempts to register orregisters the mark in his own name, the proprietor shall be entitled to opposethe registration applied for or secure its cancellation or rectification of theregister so as to bring him as the registered proprietor of the said mark byassignment in his favour:

Provided that such action shallbe taken within three years of the registered proprietor of the trade markbecoming aware of the conduct of the agent or representative.

147.Indexes: There shall be kept under thedirection and supervision of the Registrar –

(a) an index of registeredtrade marks;

(b) an index of trade marks inrespect of which applications for registration are pending;

(d) an index of the names ofregistered users.

148.Documents open to publicinspection: (1) Saveas otherwise provided in sub-section (4) of section 49, –

(a) the register and anydocument upon which any entry in the register is based;

(b) every notice of oppositionto the registration of a trade mark application for rectification before theRegistrar, counter-statement thereto, and any affidavit or document filed bythe parties in any proceedings before the Registrar;

(c) all regulations depositedunder section 63 or section 74, and all applications under section 66 orsection 77 for varying such regulations;

(d) the indexes mentioned insection 147; and

(e) such other documents as theCentral Government may, by notification in the Official Gazette, specify,

shall, subject to suchconditions as may be prescribed, be open to public inspection at the TradeMarks Registry:

Provided that when suchregister is maintained wholly or partly on computer, the inspection of suchregister under this section shall be made by inspecting the computer print outof the relevant entry in the register so maintained on computer.

(2) Any person may, on anapplication to the Registrar and on payment of such fees as may be prescribed,obtain a certified copy of any entry in the register or any documents referredto in sub-section (1).

149.Reports of Registrar to beplaced before Parliament: The Central Government shall cause to be placed before both Housesof Parliament once a year a report respecting the execution by or under theRegistrar of this Act.

150.Fees and surcharge: (1) There shall be paid inrespect of applications and registration and other matters under this Act suchfees and surcharge as may be prescribed by the Central Government.

(2) Where a fee is payable inrespect of the doing of an act by the Registrar, the Registrar shall not dothat act until the fee has been paid.

(3) Where a fee is payable inrespect of the filing of a document at the Trade Marks Registry, the documentshall be deemed not to have been filed at the registry until the fee has beenpaid.

151.Savings in respect ofcertain matters in Chapter XII: Nothing in Chapter XII shall –

(a) exempt any person from anysuit or other proceeding which might, but for anything in that Chapter, bebrought against him; or

(b) entitle any person torefuse to make a complete discovery, or to answer any question or interrogatoryin any suit or other proceeding, but such discovery or answer shall not beadmissible in evidence against such person in any such prosecution for an offenceunder 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 section111 of that Act and notified by the Central Government under clause (n) ofsub-section (2) of section 11 thereof for the protection of trade marksrelating to import of goods; or

(c) be construed so as torender liable to any prosecution or punishment any servant of a master residentin India who in good faith acts in obedience to the instructions of suchmaster, and, on demand made by or on behalf of the prosecutor, has given fullinformation as to his master and as to the instructions which he has receivedfrom his master.

152.Declaration as to ownershipof trade mark not registrable under the Registration Act, 1908: Notwithstanding anythingcontained in the Registration Act, 1908 (16 of 1908), no document declaring orpurporting to declare the ownership or title of a person to a trade mark otherthan a registered trade mark shall be registered under that Act.

153.Government to be bound: The provisions of this Actshall be binding on the Government.

154.Special provisions relatingto applications for registration from citizens of convention countries: (1) With a view to thefulfillment of a treaty, convention or arrangement with any country or countrywhich is a member of a group of countries or union of countries orInter-governmental Organisation outside India which affords to citizens ofIndia similar privileges as granted to its own citizens, the Central Governmentmay, by notification m the Official Gazette, declare such country or group ofcountries or union of countries or Inter-Governmental Organisation to be aconvention country or group of countries or union of countries or Inter-GovernmentalOrganisations, as the case may be, for the purposes of this Act.

(2) Where a person has made anapplication for the registration of a trade mark in a convention country orcountry which is a member of a group of countries or union of countries or Inter-GovernmentalOrganisation and that person, or his legal representative or assignee, makes anapplication for the registration of the trade mark in India within six monthsafter the date on which the application was made in the convention country orcountry which is a member of a group of countries or union of countries orInter-Governmental Organisations, the trade mark shall, if registered underthis Act, be registered as of the date on which the application was made in the convention country orcountry which is a member of a group of countries or union of countries orInter-Governmental Organisation and that date shall be deemed for the purposesof this Act to be the date of registration.

(3) Where applications havebeen made for the registration of a trade mark in two or more conventioncountries or country which are members of group of countries or union ofcountries or Inter-Governmental Organisation, the period of six months referredto in the last preceding sub-section shall be reckoned from the date on which the earlier orearliest of those applications was made.

(4) Nothing in this Act shallentitle the proprietor of a trade mark to recover damages for infringementWhich took place prior to the date of application for registration under thisAct.

155.Provision as toreciprocity: Where anycountry or country which is a member of a group of countries or union ofcountries or Inter-Governmental Organisation specified by the CentralGovernment in this behalf by notification in the Official Gazette does riotaccord to citizens of India the same rights in respect of the registration andprotection of trade marks as it accords to its own "nationals, no nationalof such country or country who is a member of a group of countries or union ofcountries or Inter-Governmental Organisation, as the case may be, shall beentitled, either solely or jointly with any other person,

(a) to apply for theregistration of, or be registered as the proprietor of a trade mark;

(b) to be registered as theassignee of the proprietor of a registered trade mark; or

156.Power of Central Governmentto remove difficulties: (1) If any difficulty arises in giving effect to the provisions ofthis Act, the Central Government may, by order published in the OfficialGazette, make such provisions not inconsistent with the provisions of this Actas may appear to be necessary for removing the difficulty:

Provided that no order shall bemade under this section after the expiry of five years from the commencement ofthis Act.

(2) Every order made under thissection shall, as soon as may be after it is made, be laid before each House ofParliament.

157.Power to make rules: (1) The Central Government may,by notification in the Official Gazette and subject to the conditions ofprevious publication, make rules to carry out the provisions of this Act.

(2) In particular, and withoutprejudice to the generality of the foregoing power, such rules may provide forall or any of the following matters, namely:

(i) the matters to be includedin the Register of Trade Marks under subsection (1) of section 6, and thesafeguards to be observed in the maintenance of records on computer floppies ordiskettes or in any other electronic form under sub-section (2) of thatsection;

(ii) the manner of publicationof alphabetical index of classification of goods and services under sub-section(1) of section 8;

(iii) the manner in which theRegistrar may notify a word as an international non-proprietary name undersection 13;

(iv) the manner of making anapplication for dissolution of an association under sub-section (5) of section16;

(v) the manner of making anapplication for registration of a trade mark under sub-section (1) of section18;

(vi) the manner of advertisingof an application for registration under sub-section (1) and the manner ofnotifying corrections or amendments under subsection (2), of section 20;

(vii) the manner of making anapplication and the fee payable for such application giving notice undersub-section (1) and sending counter-statements under subsection (2) andsubmission of evidence and the time therefor under subsection (4) of section21;

(viii) the form of certificateof registration under sub-section (2), and the manner of giving notice to theapplicant under sub-section (3) of section 23;

(ix) the forms of applicationfor renewal and restoration the time within which such application is to bemade and fee and surcharge if any payable with each application, under section25 and the time within which the Registrar shall send a notice and the mannerof such notice under sub-section (3) of that section;

(x) the manner of submitting statement of cases under sub-section(2) of section 40;

(xi) the manner of making anapplication by the proprietor of a trade mark under section 41;

(xii) the manner of making anapplication for assignment or transmission of a certification trade mark undersection 43;

(xiii) the manner of making anapplication to the Registrar to register title under sub-section (1) of section43;

(xiv) the manner in which andthe period within which an application is to be made under sub-section (4) ofsection 46;

(xv) the manner of making anapplication under sub-section (2) of section 47;

(xvi) the manner of making anapplication, documents and other evidence to accompany such application undersub-section (1) and the manner in which notice is to be issued undersub-section (3) of section 49;

(xvii) the manner of making anapplication under sub-section (1), the manner of issuing a notice undersub-section (2) and the procedure for canceling a registration undersub-section (3) of section 50;

(xviii) the manner of makingapplications under sub-sections (1) and (2), the manner of giving notice undersub-section (4) and the manner of service of notice of rectification undersub-section (5) of section 57;

(xix) the manner of making anapplication under section 58;

(xx) the manner of making anapplication under sub-section (1), the manner of advertising an application,time and manner of notice by which application may be opposed undersub-sections (2) and (3) of section 59;

(xxi) the manner ofadvertisement under sub-section (2) of section 60;

(xxii) the other matters to bespecified in the regulations under sub-section (2) of section 63;

(xxiii) the manner of making anapplication under sub-section (1) of section 71;

(xxiv) the manner ofadvertising an application under section 73;

(xxv) the manner of making anapplication under section 77;

(xxvi) the classes of goodsunder section 79;

(xxvii) the conditions andrestrictions under sub-section (2) of section 80;

(xxviii) determination of character of textile goods bysampling under section 82;

(xxix) the salaries andallowances payable to, and the other terms and conditions of service of, theChairman, Vice-Chairman and other Members under sub-section (1) of section 88;

(xxx) the procedure forinvestigation of misbehaviour or incapacity of the Chairman, Vice-Chairman andother Members under sub-section [3) of section 89;

(xxxi) the salaries andallowances and other conditions of service of the officers and other employeesof the Appellate Board under sub-section (2), and the manner in which theofficers and other employees of the Appellate Board shall discharge theirfunctions under sub-section (3), of section 90;

(xxxii) the form of making anappeal, the manner of verification and the fee payable under sub-section (3) ofsection 91;

(xxxiii) the form in which andthe particulars to be included in the application to the Appellate Board undersub-section (1) of section 97;

(xxxiv) the manner of making anapplication for review under clause (c) of section 127;

(xxxv) the time within which anapplication is to be made to the Registration for exercising his discretionarypower under section 128;

(xxxvi) the manner of making anapplication and the fee payable therefor under sub-section (1) of section 131;

(xxxvii) the manner of makingan application under sub-section (1) and the period for withdrawal of suchapplication under sub-section (2) of section 133;

(xxxviii) the manner ofauthorising any person to act and the manner of registration as a trade markagent under section 145;

(xxxix) the conditions for inspectionof documents under sub-section (1) and the fee payable for obtaining acertified copy of any entry in the register under sub-section (2) of section148;

(xl) the fees and surcharge payable for makingapplications and registration and other matters under section 150;

(xli) any other matter which is required to be or may beprescribed.

(3) The power to make rulesconferred by this section shall include the power to give retrospective effectin respect of the matters, referred to in clauses (xxix) and (xxxi) of sub-section (2) from a date notearlier than the date of commencement of this Act, but no retrospective effectshall be given to any such rule so as to prejudicially affect the interests ofany person to whom sub-rule may be applicable.

(4) Every rule made by theCentral Government under this Act shall be laid, as soon as may be after it ismade, before each House of Parliament, while it is in session for a totalperiod of thirty days which may be comprised in one session or in two or moresuccessive sessions, and if, before the expiry of the session immediatelyfollowing the session or the successive sessions aforesaid, both Houses agreein making any modification in the rule or both Houses agree that the rule shouldnot be made, the rule shall thereafter have effect only in such modified formor be of no effect, as the case may be; so, however, that any such modificationor annulment shall be without prejudice to the validity of anything previouslydone under that rule.

158.Amendments: The enactment specified in theSchedule shall be amended in the manner specified therein.

159.Repeal and savings: (1) The Trade and MerchandiseMarks Act, 1958 (43 of 1958) is hereby repealed.

(2) Without prejudice to theprovisions contained in the General Clauses Act, 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 andMerchandise Marks Act, 1958 (43 of 1958) shall, if in force at the commencementof this Act, continue to be in force and have effect as if made, issued, givenor done under the corresponding provisions of this Act.

(3) The provisions of this Actshall apply to any application for registration of a trade mark pending at thecommencement of this Act and to any proceedings consequent thereon and to anyregistration granted in pursuance thereof.

(4) Subject to the provisionsof section 100 and notwithstanding anything contained in any other provision ofthis Act, any legal proceeding pending in any court at the commencement of thisAct may be continued in that court as if this Act had not been passed.

(5) Notwithstanding anythingcontained in this Act, where a particular use of a registered trade mark is notan infringement of a trade mark registered before the commencement of this Act,then, the continued use of that mark shall not be an infringement under thisAct.

(6) Notwithstanding anythingcontained in sub-section (2), the date of expiration of registration of a trademark registered before the commencement of this Act shall be the dateimmediately after the period of seven years for which it was registered or renewed:

Provided that the registrationof a defensive trade mark referred to in section 47 of the Trade andMerchandise Marks Act, 1958 (43 of 1958) shall cease to have effect on the dateimmediately after the expiry of five years of such commencement or after theexpiry of the period for which it was registered or renewed, whichever isearlier.

THE SCHEDULE

(Seesection 158)

Amendments

_______________________________________________________________________________________________

Year Act No. Short title Amendment

_______________________________________________________________________________________________

1956 1 TheCompanies Act, 1956 (I) Insection 20, for sub-section (2), the following sub-

sectionsshall be substituted, namely: –

"(2)Without prejudice to the generality of the foregoing power, a

namewhich 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

applicationfor registration, of any other person under the

TradeMarks Act, 1999.

maybe deemed to be undesirable by the Central Government within

themeaning of sub-section (1).

(3)The Central Government may, before deeming a name as

undesirableunder clause (ii) of sub-section (2), consult the Registrar of

TradeMarks".

(II)In section 22, in sub-section (1), –

(i)for the portion beginning with "if, through" and ending with the

first-mentionedcompany -" the following shall be

substituted,namely: –

"If,through inadvertence or otherwise, a company on its first

registrationor on its registration by a new name, is registered by a

namewhich, –

(i)in the opinion of the Central Government, is identical with, or too

nearlyresembles, the name by which a company in existence has been

previouslyregistered, whether under this Act or any previous

companieslaw, the first mentioned company, or

(ii)on an application by a registered proprietor of a trade mark, is in

theopinion of the Central Government identical with, or too nearly

resembles,registered trade mark of such proprietor under the Trade

MarksAct, 1999, such company,"

(iii)the following proviso shall be added, namely: –

"Providedthat no application under clause (ii) made by a registered

proprietorof a trade mark after five years of coming to notice of

registrationof the company shall be considered by the Central

Government".

_______________________________________________________________________________________________

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