Handshake

Summary of the Indian Trademarks Act

20 + years experience
Patent cases handled
Trademark cases handled

Summary of the Indian Trademarks Act with all amendments up to 2024

Including all amendments made by the Trademarks Amendment Act, 2010 and the Tribunal Reforms Act, 2021

This summary has been written by Mahesh Bhagnari, Patent & Trademark Attorney in India.

An example of a summarized section

The original Section 4: Without prejudice to the generality of the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under the said sub-section (2) and deal with such matter himself either de novo or from the stage it was so withdrawn or transfer the same to another officer so appointed who may, subject to special directions in the order of transfer, proceed with the matter either de novo or from the stage it was so transferred.

The summary of this section:

The Registrar has the power to take back or transfer any case that is currently being handled by an officer.

The Registrar can choose to handle the case personally, either from the beginning or from where it was left, or transfer it to another officer to continue or restart the case, depending on the specific instructions provided in the order of transfer.

Why is there a need to summarize?

Legal language aims to be precise and unambiguous to ensure that the law is applied consistently and fairly. The detailed wording helps cover various scenarios and nuances that might arise.

Legal writing has a long history of using formal, technical language. This tradition continues because it aligns with established legal practices and helps maintain consistency across different jurisdictions.

This then leads to a situation where a common person finds it difficult to comprehend and understand the actual meaning and intent of the provisions.

Summarizing is essential for presenting complex information into its simple core components, making it more accessible and easier to understand. It helps by highlighting key points and removing unnecessary details, which is beneficial for both professional and academic settings.

Effective summaries save time and enhance comprehension, ensuring that the reader grasps the main ideas without getting overwhelmed. This reduces cognitive load, allowing the reader to focus on understanding and retaining the most important aspects of the content without unnecessary details.

I’ve tried to create a clearer, more focused summary of the Act, making it easier to grasp and remember. While I have tried my best to provide an accurate summary, I am sure I must have made a few mistakes and I would be grateful if the reader can help me in correcting these.

I hope this is helpful.

Trademark attorney in India

I, Mahesh Bhagnari, am the Managing Principal of the firm:

  • I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
  • I am licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
  • I am licensed to practice as a Trademark attorney in India with Registration № 10742.
  • I have more than twenty years of professional experience working in the field of Intellectual property.
Patent attorney in India

Summary of the Indian Trademarks Act, 1999 (with all amendments)

CHAPTER I: PRELIMINARY

1. Short title, extent and commencement

    (1) This Act may be called the Trade Marks Act, 1999.

    (2) It extends to the whole of India.

    (3) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint:

    PROVIDED that different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

  1. This Act is called the Trade Marks Act, 1999.
  2. It applies to all of India.
  3. It will come into effect on a date set by the Central Government through a notification, and different parts of the Act may come into effect on different dates.
2. Definitions and interpretation

    (1) In this Act, unless the context otherwise requires, –

        (a) OMITTED

        (b) “assignment” means an assignment in writing by act of the parties concerned;

“Assignment” refers to a written agreement made by the involved parties.

        (c) “associated trade marks” means a trade marks deemed to be, or required to be, registered as associated trade marks under this Act;

“Associated trade marks” are trade marks that are considered or required to be registered together under this Act.

        (d) OMITTED

        (e) “certification trade mark” means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person;

A “certification trade mark” is a mark used to certify certain qualities of goods or services, such as origin, material, manufacturing method, performance, quality, or accuracy. It distinguishes certified goods or services from those that are not certified. This mark can be registered under Chapter IX by the party which owns it.

        (f) OMITTED

        (g) “collective mark” means a trade mark distinguishing the goods or services of members of an association of persons (not being. a partnership within the meaning of the Indian Partnership Act, 1932) which is the proprietor of the mark from those of others;

A “collective mark” is a trademark that distinguishes the goods or services of members of an association (which is not a partnership) from the goods or services of others. The association owns the mark.

        (h) “deceptively similar”-A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;

A mark is considered “deceptively similar” to another if it closely resembles it enough to potentially confuse or mislead.

        (i) “false trade description” means-

            (I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied”. or

            (II) any alteration of trade description as regards the goods or services to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect; or

            (III) any trade description which denotes or implies that there are contained, as regards the goods to which it is applied, more yards or metres than there are contained therein standard yards or standard metres; or

            (IV) any marks or arrangement or combination thereof when applied –

                (a) to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are;

                (b) in relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some person other than the person whose services they really are; or

            (V) any false name or initials of a person applied to goods or services in such manner as if such name or initials were a trade description in any case where the name or initials –

                (a) is or are not a trade mark or part of a trade mark; and

                (b) is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorised the use of such name or initials; and

                (c) is or are either the name or initials of a fictitious person or some person not bona fide carrying on business in connection with such goods or services,

and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Act;

A “false trade description” refers to:

  1. A description that is untrue or misleading about the goods or services.
  2. Any alteration to the description that makes it untrue or misleading.
  3. A description implying there are more yards/metres of goods than actually present.
  4. Any mark applied to goods/services to make people believe they come from a different source than they really do.
  5. Using a false name or initials on goods/services that resemble someone else’s without authorization.

Even if part of a trade mark, these misleading descriptions still qualify as “false trade descriptions.”

        (j) “goods” means anything which is the subject of trade or manufacture;

“Goods” refers to anything that can manufactured or traded.

        (k) OMITTED

        (l) “limitations” (with its grammatical variations) means any limitation of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode or area of use within India or outside India;

“Limitations” refer to restrictions on the exclusive right to use a trade mark, such as limiting how or where the trade mark can be used, either within or outside India.

        (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

“Mark” refers to any symbol like a device, brand, label, name, word, letter, number, shape, packaging, or color combination, or a mix of these, used to identify goods or services.

        (n) OMITTED

        (o) “name” includes any abbreviation of a name;

“Name” includes any shortened or abbreviated form of a name.

        (p) “notify” means to notify in the Trade Mark Journal published by the Registrar;

“Notify” means to publish information in the Trade Mark Journal 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;

“Package” includes any item used to contain or cover goods, such as a case, box, bottle, wrapper, label, or cap.

        (r) “permitted use”, in relation to a registered trade mark, means the use of trade mark –

            (i) by a registered user of the trade mark in relation to goods or services-

                (a) with which he is connected in the course of trade; and

                (b) in respect of which the trade mark remains registered for the time being; and

                (c) for which he is registered as registered user; and

                (d) which complies with any conditions or limitations to which the registration of registered user is subject; or

            (ii) by a person other than the registered proprietor and registered user in relation to goods or services –

                (a) with which he is connected in the course of trade; and

                (b) in respect of which the trade mark remains registered for the time being; and

                (c) by consent of such registered proprietor in a written agreement; and

                (d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject;

“Permitted use” of a registered trademark means:

  1. By a registered user:
  • For goods or services connected to them in trade.
  • While the trademark is still registered.
  • As long as they are registered to use it.
  • Following any conditions or limitations set for their registration.
  1. By others:
  • For goods or services connected to them in trade.
  • With the trademark still registered.
  • With written consent from the registered owner.
  • Following any conditions or limitations set for the trademark and the user.

        (s) “prescribed” means prescribed by rules made under this Act;

“Prescribed” means set by the rules created under this Act.

        (t) “register” means the Register of Trade Marks referred to in sub-section (1) of section 6;

“Register” refers to the official list of trade marks mentioned in section 6(1).

        (u) “registered” (with its grammatical variations) means registered under this Act;

“Registered” means officially listed under this Act.

        (v) “registered proprietor”, in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark;

“Registered proprietor” refers to the person currently listed in the register as the owner of the trade mark.

        (w) “registered trade mark” means a trade mark which is actually on the register and remaining in force;

A “registered trade mark” is a trade mark that is officially listed in the register and is still active.

        (x) “registered user” means a person who is for the time being registered as such under section 49;

A “registered user” is someone who is officially listed as a user of a trade mark under section 49.

        (y) “Registrar” means the Registrar of Trade Marks referred to in section 3;

“Registrar” refers to the person in charge of managing trade marks, as mentioned in section 3.

        (z) “service” means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;

“Service” covers any type of service offered to users, including those related to business and industrial matters like banking, communication, education, finance, insurance, real estate, transport, and more. It also includes services like entertainment, lodging, and advertising.

        (za) “trade description” means any description, statement or other indication, direct or indirect,-

            (i) as to the number, quantity, measure, guage or weight of any goods ; or

            (ii) as to the standard of quality of any goods or services according to a classification commonly used or recognised in the trade; or

            (iii) as to fitness for the purpose, strength, performance or behaviour of any goods, being “drug” as defined in the Drugs and Cosmetics Act, 1940, or “food” as defined in the Prevention of Food Adulteration Act, 1954; or

            (iv) as to the place or country in which or the time at which any goods or services were made, produced or provided, as the case may be; or

            (v) as to the name and address or other indication of the identity of the manufacturer or of the person providing the services or of the person for whom the goods are manufactured or services are provided; or

            (vi) as to the mode of manufacture or producing any goods or providing services; or

            (vii) as to the material of which any goods are composed; or

            (viii) as to any goods being the subject of an existing patent, privilege or copyright,

and includes –

                (a) any description as to the use of any mark which according to the custom of the trade is commonly taken to be an indication of any of the above matters;

                (b) the description as to any imported goods contained in any bill of entry or shipping bill;

                (c) any other description which is likely to be misunderstood or mistaken for all or any of the said matters;

“Trade description” refers to any statement or indication about:

  1. The amount, size, or weight of goods.
  2. The quality of goods or services.
  3. The suitability, strength, or performance of drugs or food.
  4. The origin or timing of production of goods or services.
  5. The identity of the manufacturer or service provider.
  6. The method of making goods or providing services.
  7. The materials used in goods.
  8. Whether goods are covered by a patent, copyright, or other rights.

It also includes trade descriptions on labels, bills of entry, or any misleading descriptions related to these matters.

        (zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and

            (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

            (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;

A “trade mark” is a symbol that can be visually represented and is used to distinguish one person’s goods or services from those of others. It can include shapes, packaging, and color combinations.

  1. For Chapter XII (except section 107), a trade mark is either a registered mark or one used to show a connection between the goods or services and the person who has the right to use it.
  2. For other parts of the Act, a trade mark is used or intended to show a connection between goods or services and the person who has the right to use it, whether they are the owner or a permitted user. This includes certification and collective marks.

        (zc) “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment;

“Transmission” refers to the transfer of rights or ownership of a trade mark by legal processes, such as inheritance to a deceased person’s representative, or other methods of transfer that are not assignments.

        (zd) “Technical Member” means a Member who is not a Judicial Member;

A “Technical Member” is a someone who is not a Judicial Member.

        (ze) OMITTED

        (zf) OMITTED

        (zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

A “well-known trade mark” is a mark that is widely recognized by the public in relation to specific goods or services. If the same mark is used for other goods or services, people would likely think it indicates a connection with the original goods or services.

    (2) In this Act, unless the context otherwise requires, any reference-

        (a) to “trade mark” shall include reference to “collective mark” or “certification trade mark”;

        (b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark;

        (c) to the use of a mark, –

            (i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;

            (ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;

        (d) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 3;

        (e) to the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry.

In this Act:

  • “Trade mark” includes “collective mark” and “certification trade mark.”
  • Using a mark refers to its visual representation, like printing.
  • For goods, using a mark means putting it on the goods or relating it to them in any way.
  • For services, it means using the mark to describe or advertise the services.
  • “Registrar” also includes any officer performing the Registrar’s duties.
  • “Trade Marks Registry” includes any of its offices.

    (3) For the purposes of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services.

Goods and services are considered associated if they are likely to be offered or sold by the same business. This means that the goods and services could be related or marketed together.

    (4) For the purposes of this Act, “existing registered trade mark” means a trade mark registered under the Trade and Merchandise Marks Act, 1958 immediately before the commencement of this Act.

An “existing registered trade mark” refers to a trade mark that was registered under the Trade and Merchandise Marks Act, 1958, right before this new Act started.

CHAPTER II: THE REGISTER AND CONDITIONS FOR REGISTRATION

3. Appointment of Registrar and other officers

    (1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.

The Central Government can appoint a person as the Controller-General of Patents, Designs, and Trade Marks, who will serve as the Registrar of Trade Marks.

    (2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge.

Additionally, the government can appoint other officers to help carry out the Registrar’s duties, under the Registrar’s supervision and direction. These officers will handle tasks assigned to them by the Registrar.

4. Power of Registrar to withdraw or transfer cases, etc.

Without prejudice to the generality of the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under the said sub-section (2) and deal with such matter himself either de novo or from the stage it was so withdrawn or transfer the same to another officer so appointed who may, subject to special directions in the order of transfer, proceed with the matter either de novo or from the stage it was so transferred.

The Registrar has the power to take back or transfer any case that is currently being handled by an officer.

The Registrar can choose to handle the case personally, either from the beginning or from where it was left, or transfer it to another officer to continue or restart the case, depending on the specific instructions provided in the order of transfer.

5. Trade Marks Registry and offices thereof

    (1) For the purposes of this Act, there shall be a trade marks registry and the Trade Marks Registry established under the Trade and Merchandise Marks Act, 1958 shall be the Trade Marks Registry under this Act.

The Trade Marks Registry set up under the 1958 Act will continue to be the Trade Marks Registry under this Act.

    (2) The head office of the Trade Marks Registry shall be at such place as the Central Government may specify, and for the purpose of facilitating the registration of trade marks, there may be established at such places as the Central Government may think fit branch offices of the Trade Marks Registry.

The head office of the Registry will be located where the Central Government decides, and branch offices may be set up to help with trademark registration.

    (3) The Central Government may, by notification in the Official Gazette, define the territorial limits within which an office of the Trade Marks Registry may exercise its functions.

The Central Government can define the territorial limits where each office can operate, through a notification.

    (4) There shall be a seal of the Trade Marks Registry.

The Trade Marks Registry will have its own official seal.

6. The Register of Trade Marks

    (1) For the purposes of this Act, a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trade marks with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the names, addresses and descriptions of registered users, conditions, limitations and such other matter relating to registered trade marks as may be prescribed.

The Register of Trade Marks will be kept at the head office of the Trade Marks Registry, listing all registered trademarks, their owners, assignments, limitations, and other details as required.

    (2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Registrar to keep the records wholly or partly in computer floppies diskettes or in any other electronic form subject to such safeguards as may be prescribed.

The Registrar can store these records electronically, like on computers or other devices, with necessary safeguards.

    (3) Where such register is maintained wholly or partly on computer under sub-section (2) any reference in this Act to entry in the register shall be construed as the reference to any entry as maintained on computer or in any other electronic form.

Any reference to the register in the Act includes both physical and electronic records.

    (4) No notice of any trust, express or implied or constructive, shall be entered in the register and no such notice shall be receivable by the. Registrar.

Trust notices (e.g., ownership held in trust) are not allowed in the register.

    (5) The register shall be kept under the control and management of the Registrar.

The Registrar manages and controls the register.

    (6) There shall be kept at each branch office of the Trade Marks Registry a copy of the register and such of the other documents mentioned in section 148 as the Central Government may, by notification in the Official Gazette, direct.

Copies of the register and certain documents will be kept at branch offices as directed by the government.

    (7) The Register of Trade Marks, both Part A and Part B, existing at the commencements of this Act, shall be incorporated in and form part of the register under this Act.

The existing Register of Trade Marks from previous laws will be part of the new register.

7. Classification of goods and services

    (1) The Registrar shall classify goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks.

The Registrar will classify goods and services based on the International classification system for trademark registration.

    (2) Any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final.

If there’s any doubt about which class a particular good or service belongs to, the Registrar will decide, and his decision shall be final.

8. Publication of alphabetical index

    (1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in section 7.

The Registrar may publish an alphabetical index of classified goods and services.

    (2) Where any goods or services are not specified in the alphabetical index of goods and services published under sub-section (1), the classification of goods or services shall be determined by the Registrar in accordance with sub-section (2) of section 7.

If a good or service is not listed in the index, the Registrar shall classify it, following the rules from section 7.

9. Absolute grounds for refusal of registration

    (1) The trade marks –

        (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

        (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

        (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,

shall not be registered:

    PROVIDED that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

Trade marks cannot be registered if these:

  1. Lack Distinctiveness: These don’t distinguish one person’s goods or services from another’s.
  2. Are Descriptive: These only describe the nature, quality, or other characteristics of the goods or services.
  3. Are Commonplace: These have become common terms in the language or trade.

However, a trade mark can still be registered if it has gained distinctiveness through use or is already well-known.

    (2) A mark shall not be registered as a trade mark if –

        (a) it is of such nature as to deceive the public or cause confusion;

        (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

        (c) it comprises or contains scandalous or obscene matter;

        (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

A mark cannot be registered as a trade mark if it:

  1. Misleads the public or causes confusion.
  2. Offends religious feelings of any group in India.
  3. Contains scandalous or obscene content.
  4. Violates the Emblems and Names (Prevention of Improper Use) Act, 1950.

    (3) A mark shall not be registered as a trade mark if it consists exclusively of –

        (a) the shape of goods which results from the nature of the goods themselves; or

        (b) the shape of goods which is necessary to obtain a technical result; or

        (c) the shape which gives substantial value to the goods.

Explanation : For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

A mark cannot be registered as a trade mark if it:

  1. Is the shape of the goods because of their natural form.
  2. Is the shape needed for a technical result.
  3. Is the shape that gives significant value to the goods.

However, the general nature of the goods or services is not a reason for refusing registration.

In summary the trademark would be refused under Section 9 due to the below reasons –

A trade mark cannot be registered if:

  1. Lack of Distinctiveness: It doesn’t clearly distinguish one person’s goods/services from another’s.
  2. Descriptive Marks: It only describes the type, quality, purpose, or origin of the goods/services.
  3. Common Terms: It uses terms that are commonly used in language or trade.

Exceptions: If the mark has gained distinctiveness through use, it may still be registered.

Additionally, a trade mark will be refused if it:

  1. Deceives or Confuses the public.
  2. Hurts Religious Sentiments.
  3. Contains scandalous or obscene content.
  4. Violates other laws, such as improper use of emblems.

Marks based solely on the shape of goods (if it’s essential to their function or adds value) are also not registrable.

10. Limitation as to colour

    (1) A trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.

A trade mark can be limited to specific colors, and this will be considered when evaluating its distinctiveness.

    (2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

If a trade mark is registered without any color limitations, it will be considered registered for all colors.

11. Relative grounds for refusal of registration

    (1) Save as provided in section 12, a trade mark shall not be registered if, because of –

        (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

        (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

A trade mark cannot be registered if it is either:

  • Identical to an earlier trade mark application which covers similar goods or services, or
  • Similar to an earlier trade mark and covers the same or similar goods or services,

and there is a risk that the public might confuse or associate it with the earlier trade mark.

    (2) A trade mark which –

        (a) is identical with or similar to an earlier trade mark; and

        (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

A trade mark cannot be registered if:

  • It is identical or similar to a well-known earlier trade mark,
  • Even if it is for different goods or services, and
  • Its use could unfairly benefit from or harm the reputation of the well-known earlier trade mark.

    (3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented –

        (a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or

        (b) by virtue of law of copyright.

A trade mark cannot be registered if its use in India would violate:

  • Laws protecting unregistered trade marks from being misused (passing off), or
  • Copyright laws.

    (4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.

A trade mark can still be registered even if it is similar to an existing one, provided the owner of the existing trade mark agrees to it.

Explanation : For the purposes of this section, earlier trade mark means –

    (a) a registered trade mark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;

    (b) a trade mark which, on the date of the application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark.

An “earlier trade mark” includes:

  • A registered trade mark or application with an earlier filing or priority date, or
  • A well-known trade mark recognized as such on the application date.

    (5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.

A trade mark won’t be refused registration based on certain grounds unless the owner of the earlier trade mark formally objects to it during the opposition process.

    (6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including –

        (i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

        (ii) the duration, extent and geographical area of any use of that trade mark;

        (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

        (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

        (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

When deciding if a trade mark is well-known, the Registrar will consider factors such as:

  • The trade mark’s legal history, including how it has been recognized by courts or the Registrar.
  • How well the trade mark is recognized by the public, including its promotion in India.
  • How long and where the trade mark has been used.
  • The extent and geography of the trade mark’s promotion and advertising.
  • The trade mark’s registration history and its reflection of use or recognition.

    (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account –

        (i) the number of actual or potential consumers of the goods or services;

        (ii) the number of persons involved in the channels of distribution of the goods or services;

        (iii) the business circles dealing with the goods or services,

to which that trade mark applies.

To determine if a trade mark is known or recognized by the relevant public, the Registrar will consider:

  • The business circles that handle the goods or services.
  • How many people buy or might buy the goods or services.
  • How many people are involved in distributing the goods or services.

    (8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

If a court or the Registrar has confirmed that a trade mark is well-known in at least one section of the public in India, he will treat it as a well-known trade mark for registration.

    (9) “The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: –

        (i) that the trade mark has been used in India;

        (ii) that the trade mark has been registered;

        (iii) that the application for registration of the trade mark has been filed in India;

        (iv) that the trade mark –

            (a) is well known in; or

            (b) has been registered in; or

            (c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

        (v) that the trade mark is well-known to the public at large in India.

To determine if a trade mark is well-known, the Registrar does not require:

  • Proof that the trade mark is known to the general public in India.
  • Proof that the trade mark has been used in India.
  • Proof that the trade mark is registered.
  • Proof that the trade mark’s registration application was filed in India.
  • Proof that the trade mark is well-known, registered, or applied for in any other country.

    (10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall –

        (i) protect a well-known trade mark against the identical or similar trade marks;

        (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

When reviewing a trade mark registration application and any opposition, the Registrar shall:

  • Protect well-known trade marks from being registered if they are identical or similar to existing well-known trade marks.
  • Consider any bad faith from either the applicant or the opponent that affects the trade mark rights.

    (11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in goods faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well known trade mark.

If a trade mark was registered or used in good faith before this Act came into effect, it won’t be invalidated simply because it is identical to or similar to a well-known trade mark.

In summary the trademark would be refused under Section 11 due to the below reasons –

Likelihood of Confusion: A trade mark cannot be registered if it is identical or similar to an earlier trade mark and could confuse the public or be associated with it, especially if the goods or services are similar.

Well-Known Trade Marks: A trade mark cannot be registered if it is identical or similar to a well-known trade mark and would unfairly benefit from or harm the reputation of the earlier mark, even if the goods or services are different.

Legal Protection: A trade mark cannot be registered if its use would be blocked by existing laws protecting unregistered trade marks or copyrights.

Consent: Registration is possible if the owner of the earlier trade mark agrees to it, and the Registrar can register it under special circumstances.

Definition of Earlier Trade Marks: Includes any earlier registered trade marks or well-known marks that had protection before the new mark’s application date.

Opposition: Objections to registration on these grounds must be raised during opposition proceedings by the earlier trade mark owner.

Determining Well-Known Status: The Registrar considers factors like public recognition, usage extent, promotion, and legal protection in determining if a trade mark is well-known.

Recognition in India: If a trade mark is recognized as well-known in any part of India by a court or Registrar, it is treated as well-known for registration purposes.

No Extra Conditions: The Registrar does not require the trade mark to have been used or registered in India, or known widely in India, to be considered well-known.

Protection Against Bad Faith: The Registrar will protect well-known trade marks from identical or similar marks and consider any bad faith in the application process.

Good Faith Registration: If a trade mark was registered or used in good faith before this Act began, its registration remains valid even if it is similar to a well-known trade mark.

12. Registration in the case of honest concurrent use, etc.

In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

If multiple people have been using similar or identical trade marks honestly and concurrently, or if there are special circumstances, the Registrar can allow these trade marks to be registered by different owners for the same or similar goods or services. The Registrar can set specific conditions or limitations for these registrations.

13. Prohibition of registration of names of chemical elements or international non-proprietary names

No word –

    (a) which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or

    (b) which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name,

shall be registered as a trade mark and any such registration shall be deemed for the purpose of section 57 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.

Names that are:

  1. Commonly used for a single chemical element or compound.
  2. Officially declared by the World Health Organization as international non-proprietary names, or are very similar to them.

cannot be registered as trade marks. If such names are registered, they will be considered invalid.

14. Use of names and representations of living persons or persons recently dead

Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.

For an application to register a trade mark that suggests a connection with a living person or someone who died within the last 20 years, the applicant must first get written consent from that person or their legal representative. The Registrar may refuse to process the application without this consent.

15. Registration of parts of trade marks and of trade marks as a series

    (1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.

To register both the whole trade mark and a part of it separately, the applicant can apply for both as independent trade marks.

    (2) Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark.

Each part must meet all the requirements for being a standalone trade mark.

    (3) Where a person claiming to be the proprietor of several trade marks in respect of the same or similar goods or services or description of goods or description of services, which, while resembling each other in the material particulars thereof, yet differ in respect of –

        (a) statement of the. goods or services in relation to which they are respectively used or proposed to be used; or

        (b) statement of number, price, quality or names of places; or

        (c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or

        (d) colour,

seeks to register those trade marks, they may be registered as a series in one registration.

If there are several similar trade marks for the same or related goods/services, but they differ in details like descriptions, prices, or colors, the applicant can register them as a series in one application.

16. Registration of trade, marks as associated trade marks

    (1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks.

If there are two trade marks that are either identical or very similar, and both are owned by the same applicant for the same goods or services, the Registrar may require that these trade marks be listed as associated trade marks on the register. This helps prevent confusion or deception if the trade marks are used.

    (2) Where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration in the name of the same proprietor, in respect of goods and in respect of services which are associated with those goods or goods of that description and with those services or services of that description, sub-section (1) shall apply as it applies as where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services.

If a trade mark is identical or very similar to another trade mark owned by the same person and both are related to the same goods and associated services (or services connected to those goods), the same rules apply as if the marks were for identical goods or services.

    (3) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1) of section 15, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.

If a trade mark and a part of it are registered separately but owned by the same person, they will be treated and registered as associated trade marks.

    (4) All trade marks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.

Trade marks registered as a series in one registration are considered and registered as associated trade marks.

    (5) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods or services or both in respect of which it is registered, and may amend the register accordingly.

If the owner of several associated trade marks applies to the Registrar, the Registrar can remove the association between them if it’s clear that separating them won’t cause confusion or deception. The Registrar will then update the register to reflect this change.

17. Effect of registration of parts of a mark

    (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

When a trade mark is made up of multiple elements, the registration gives the owner exclusive rights to use the entire trade mark as a whole.

    (2) Notwithstanding anything contained in sub-section (1), when a trademark-

        (a) contains any part –

            (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

            (ii) which is not separately registered by the proprietor as a trade mark; or

        (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,

the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

Even if a trade mark includes several parts, the registration only gives exclusive rights to the entire trade mark as a whole. It does not give exclusive rights to any part of the trade mark if:

  • That part isn’t registered separately,
  • Or if the part is common in trade or lacks distinctiveness.

CHAPTER III: PROCEDURE FOR AND DURATION OF REGISTRATION

18. Application for registration

    (1) Any person claiming to be the proprietor of a trade mark used or purposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

Anyone who is using or plans to use a trademark can apply to get it registered by filing an application in a proper way.

    (2) A single application may be made for registration of a trademark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services.

The applicant can file a single application for trademark for multiple classes of goods and services by paying a separate fee for each class.

    (3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate:

    PR0VIDED that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.

The applicant must file his application at the Trade Marks Registry office that covers the area where his main place of business in India is located.

If applicants don’t have a place of business in India, then the application is to be filed at the office within whose jurisdiction the address for service in India is located.

    (4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.

The Registrar can either reject the application, accept it as is, or accept it with changes, conditions, or limits as he see fit.

    (5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

If the Registrar refuses or conditionally accepts an application, he must write down the reasons for his decision and the information he used to make it.

Section 18 for application of a trademark can be summarized as below –

To apply for a trade mark registration:

  1. Application: File a written application with the Registrar to register a trade mark used or intended to be used.
  2. Multiple Classes: You can apply for different classes of goods and services in a single application, but you’ll need to pay a separate fee for each class.
  3. Filing Location: Submit the application to the Trade Marks Registry office where the principal place of business in India is located. If there is no business in India, file it at the office based on the address for service in India.
  4. Registrar’s Decision: The Registrar can either accept the application, reject it, or accept it with amendments or conditions.
  5. Grounds for Refusal: If the application is refused or accepted with conditions, the Registrar will provide written reasons and details used to make the decision.
19. Withdrawal of acceptance

Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied –

    (a) that the application has been accepted in error; or

    (b) that in the circumstances of the case the trade mark should not be registered. or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted,

the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

If the Registrar realizes after accepting a trade mark application that the acceptance was a mistake or that the trade mark should not have been registered (or should be registered with different conditions), he can withdraw the acceptance.

The Registrar shall give a hearing to the applicant before taking this step.

20. Advertisement of application

    (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:

    PROVIDED that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

Once a trade mark application is accepted, the Registrar shall advertise it along with any conditions or limitations if set.

The Registrar may choose to advertise the application before acceptance if he sees it necessary or due to special circumstances.

    (2) Where –

        (a) an application has been advertised before acceptance under sub-section (1) ; or

        (b) after advertisement of an application, –

            (i) an error in the application has been corrected; or

            (ii) the application has been permitted to be amended under section 22,

the Registrar may in his discretion cause the application to be advertised again or in any case falling under clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.

If an application was advertised before acceptance or if there was a correction or amendment after advertisement, the Registrar may choose to advertise the application again.

Alternatively, the Registrar might just notify the correction or amendment instead of re-advertising.

21. Opposition to registration

    (1) Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.

Anyone can oppose the registration of a trade mark within four months of its advertisement.

    (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

If someone opposes a trade mark application, the Registrar shall send a copy of the opposition notice to the applicant. The applicant then has two months to respond with a counter-statement, failing which the opposition shall prevail.

    (3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.

If the applicant provides a counter-statement in response to the opposition, the Registrar shall send a copy of that counter-statement to the opponent.

    (4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the   prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.

Both the opponent and the applicant must submit their evidence to the Registrar within the set time. The Registrar shall then give them a chance to present their case if they wish.

    (5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

After reviewing the evidence and hearing from both sides, the Registrar shall decide if the registration should be allowed and under what conditions. The Registrar can also consider any objections, even if those that the opponent did not initially take.

    (6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries. on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.

If an opponent or applicant does not have a presence in India, the Registrar may ask for a security deposit to cover the costs of the proceedings. If this deposit is not provided, the Registrar may consider the opposition or application as abandoned.

    (7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.

The Registrar can allow corrections or changes to a notice of opposition or a counter-statement if requested, and shall set the terms he considers fair.

22. Correction and amendment

The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application:

PROVIDED that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

The Registrar can allow corrections or changes to an application at any time, either before or after it is accepted. If an application is split into multiple applications, the original date of the application shall apply to all the new, divided applications.

23. Registration

    (1) Subject to the provisions of section 19, when an application for registration of trade mark has been accepted and either-

        (a) the application has not been opposed and the time for notice of opposition has expired; or

        (b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within eighteen months of the filing of the application and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration.

Once an application for a trademark is accepted and either:

  1. It hasn’t been opposed, and the time for opposition has passed, or
  2. It has been opposed, and the decision was in favor of the applicant,

the Registrar will register the trademark. The registration date will be the same as the date of the application.

    (2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

When a trademark is registered, the Registrar will issue a certificate of registration to the applicant. This certificate will be in a specified form and sealed with the Trade Marks Registry’s seal.

    (3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

If a trademark registration isn’t completed within twelve months due to the applicant’s fault, the Registrar shall notify the applicant to correct the defect within a set time, failing which the application will be treated as abandoned.

    (4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

The Registrar can correct clerical errors or obvious mistakes by amending the register or a registration certificate.

24. Jointly owned trade marks

    (1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

This Act does not allow the registration of two or more people as joint owners of a trade mark if they use it separately or plan to use it separately.

    (2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except-

        (a) on behalf of both or all of them; or

        (b) in relation to an article or service with which both or all of” them are connected in the course of trade,

those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

Two or more people can be registered as joint owners only if they use a trade mark together or for a shared product or service.

The law will treat their rights to the trade mark as if they were held by one person.

25. Duration, renewal, removal and restoration of registration

    (1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

Once a trade mark is registered, it is valid for ten years. It can be renewed for additional periods of ten years as needed.

    (2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

To renew a trade mark for a further period of then years, the owner must apply to the Registrar, pay the required fee before the due date.

    (3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:

    PROVIDED that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).

Before a trade mark’s registration expires, the Registrar will notify the owner about the expiration date and renewal conditions. If the owner doesn’t meet these conditions by the deadline, the Registrar may remove the trade mark from the register.

However, if the owner applies and pays the required fee and surcharge within six months after the registration expires, the trade mark can still be renewed for another ten years.

    (4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

If a trade mark is removed from the register due to non-payment of fees, the Registrar can restore it within one year of its expiration. The owner must apply in the prescribed form and pay the required fee. If the Registrar finds it fair, he shall restore and renew the trade mark for another ten years, with or without additional conditions

26. Effect of removal from register for failure to pay fee for renewal

Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the Registrar or the High Court as the case may be is satisfied either-

    (a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or

    (b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

If a trade mark is removed for not paying renewal fees, it will still be treated as if it were on the register for one year after its removal when considering new trade mark applications.

However, this does not apply if:

  • There is no risk of confusion or deception from using the new trade mark due to the previous use of the removed trade mark.
  • The removed trade mark was not genuinely used in the last two years before its removal.

CHAPTER IV: EFFECT OF REGISTRATION

27. No action for infringement of unregistered trade mark

    (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

No one can file a lawsuit to stop or claim damages for the infringement of a trade mark that is not registered.

    (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

This Act does not affect anyone’s right to take legal action against someone for “passing off” goods or services as those of another person, or the remedies available for such actions.

28. Rights conferred by registration

    (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

If a trade mark is validly registered, the owner has the exclusive right to use it for the goods or services it is registered for and can seek legal remedies if someone infringes on that right, as outlined in this Act.

    (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

The exclusive right to use a trade mark is limited by any conditions or restrictions set during its registration.

    (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

If two or more people own identical or similar registered trade marks, none of them has an exclusive right over the other just because of registration. However, each owner still has the same rights as if they were the only registered owner when dealing with others, except for permitted users.

29. Infringement of registered trade marks

    (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

A trade mark is infringed if someone, who is not the registered owner or authorized user, uses a mark in business that is identical or confusingly similar to the registered trade mark for the same goods or services, in a way that could be seen as using it as a trade mark.

    (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

        (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

        (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

        (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

A registered trade mark is infringed if someone, who is not authorized, uses a mark in business that:

  • (a) is identical to the registered trade mark and covers similar goods or services;
  • (b) is similar to the trade mark and covers the same or similar goods or services; or
  • (c) is identical to the trade mark and covers the same goods or services,

in a way that is likely to confuse the public or create an association with the registered trade mark.

    (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

In cases where the mark is identical to the registered trade mark and covers the same goods or services, the court will assume it is likely to confuse the public.

    (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person. using by way of permitted use, uses in the course of trade, a mark which-

        (a) is identical with or similar to the registered trade mark; and

        (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

        (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

A registered trade mark is infringed if someone, who isn’t the owner or permitted user, uses a similar or identical mark for unrelated goods or services, and the registered trade mark is well-known in India.

If this use unfairly benefits from or harms the distinctive character or reputation of the registered trade mark, it is considered an infringement.

    (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

A registered trade mark is considered infringed if someone uses it, or part of it, as their business name or as part of their business name for goods or services covered by the trade mark.

    (6) For the purposes of this section, a person uses a registered mark, if, in particular, he-

        (a) affixes it to goods or the packaging thereof;

        (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark;

        (c) imports or exports goods under the mark; or

        (d) uses the registered trade mark on business papers or in advertising.

A person uses a registered mark if he:

  • Display the mark on business documents or in ads.
  • Attach it to goods or their packaging.
  • Sell, market, or stock goods under the mark, or provide services under it.
  • Import or export goods with the mark.

    (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

A registered trade mark is infringed if someone uses it on labels, packaging, business papers, or advertising materials, and he knows or should have known that this use was not authorized by the mark’s owner or licensee.

    (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

        (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

        (b) is detrimental to its distinctive character; or

        (c) is against the reputation of the trade mark.

A registered trade mark is infringed if advertising:

  • Unfairly benefits from the trade mark or goes against fair business practices,
  • Harms the trade mark’s unique identity,
  • Damages the trade mark’s reputation.

    (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

If a registered trade mark includes distinctive words, it can be infringed not only by how the words look but also by how they are spoken. So, both written and spoken use of those words can lead to an infringement.

30. Limits on effect of registered trade mark

    (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-

        (a) is in accordance with honest practices in industrial or commercial matters, and

        (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

Section 29 does not stop someone from using a registered trade mark to identify goods or services as belonging to the trade mark owner, as long as:

  • The use does not unfairly benefit from or harm the trade mark’s unique character or reputation.
  • The use is honest in business or commercial practices.

    (2 ) A registered trade mark is not infringed where-

        (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

        (b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;

        (c) the use by a person of a trade mark-

            (i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

            (ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark;

        (d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;

        (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.

A registered trade mark is not infringed in the following cases:

    (a) When the mark is used to describe characteristics like type, quality, quantity, purpose, value, origin, or production time of goods or services.
    (b) If the mark has specific conditions or limitations, and its use falls outside of what the registration covers.
    (c) If the trade mark is used by someone in connection with goods or services where:
        (i) The owner or authorized user has applied the mark and allowed its use without removing or changing it.
        (ii) The use indicates the services were provided by the trade mark owner or an authorized user.
    (d) When the trade mark is used for goods that are part of or accessories to other goods or services already using the trade mark without infringement. This is allowed as long as the use is necessary to show the connection, and it doesn’t mislead people into thinking there’s a different business connection.
    (e) When two or more identical or similar trade marks are registered, the use of any of them is allowed according to the rights granted by registration.

    (3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of-

        (a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

        (b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

If someone lawfully buys goods with a registered trade mark, selling or dealing with those goods is not considered trademark infringement simply because:

  • The goods were originally put on the market by the trademark owners or with their consent.
  • The trade mark was assigned to someone else after the goods were purchased.

    (4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.

The exception mentioned in Sub-section (3) does not apply if the trademark owner has valid reasons to oppose further sales, especially if the goods’ condition has been altered or damaged after they were first sold.

31. Registration to be prima facie evidence of validity

    (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof;

In legal cases involving a registered trademark, the original registration and any later transfers or assignments of the trademark are considered as initial proof of its validity.

    (2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

In legal proceedings, a registered trademark cannot be declared invalid for not meeting registration requirements under section 9 unless it’s proven that evidence of its distinctiveness wasn’t given to the Registrar before registration. However, if the trademark had already become distinctive through use before registration, it remains valid.

32. Protection of registration on ground of distinctiveness in certain cases

Where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered.

If a trademark was registered improperly but has gained distinctiveness through use before any legal challenge, it shall not be declared invalid.

33. Effect of acquiescence

    (1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark-

        (a) to apply for a declaration that the registration of the later trade mark is invalid, or

        (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.

If the owner of an older trademark has known about and allowed the use of a newer trademark for five years, they cannot:

  • Ask for the newer trademark to be declared invalid, or
  • Oppose the use of the newer trademark for the goods or services it has been used for, unless the newer trademark was registered in bad faith.

    (2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.

If the owner of a newer trademark is unable to challenge an older trademark due to acquiescence, they also cannot stop the older trademark from being used or exploited, even if the older trademark could no longer be used against their newer trademark.

34. Saving for vested rights

Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior-

    (a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

    (b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only to the registration of the first-mentioned trade mark.

If someone has been using a trademark similar to a registered one before the registered trademark was used or registered, they cannot be stopped from continuing to use it.

The owner of the registered trademark cannot interfere with this earlier use, and the earlier trademark can still be registered even though the newer one is already registered.

35. Saving for use of name, address or description of goods or services

Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.

The owner of a registered trademark cannot stop someone from honestly using their own name, their business’s name, or a truthful description of their goods or services.

36. Saving for words used as name or description of an article or substance or service

    (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance or service:

A trademark won’t be considered invalid just because a word in it is used as a name or description for a product or service after the trademark is registered, unless:

    PROVIDED that, if it is proved either-

        (a) that there is a well known and established use of the said word as the name or description of the article or substance or service by a person or persons carrying on trade therein, not being use in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified by the proprietor; or

(a) The word is widely used by others for that product or service, and it’s not related to the trademark owner’s business or the certification of the product.

the provisions of sub-section (2) shall apply.

        (b) that the article or substance was formerly manufactured under a patent that a period of two years or more after the cesser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance,

(b) The product was previously covered by a patent, and the word is the only practical name or description for it after the patent has expired for at least two years.

    (2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-section (1) are proved with respect to any words, then,-

        (a) for the purposes of any proceedings under section 57 if the trade mark consists solely of such words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, or of the services or of any services of the same description, as the case requires, shall be deemed to be an entry wrongly remaining on the register;

In legal proceedings under section 57, if a trademark is made up only of words that are widely used or necessary names (as described earlier), the registration of that trademark for those goods or services will be considered an error and wrongly kept on the register.

        (b) for the purposes of any other legal proceedings relating to the trade mark,-

            (i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or any other law to the use of the trade mark; or

            (ii) if the trade mark contains such words and other matter, all such right of the proprietor to the use of such words,

in relation to the article or substance or to any goods of the same description, or to the services or to any services of the same description as the case requires, shall be deemed to have ceased on the date on which the use mentioned in clause (a) of the proviso to sub-section (1) first became well known and established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.

If a trademark consists only of widely used or necessary words, the owner’s rights to use that trademark for those goods or services will end when the words become widely known or after two years have passed.

If the trademark includes those words along with other elements, the owner’s rights to use those specific words will end under the same conditions.

CHAPTER IVA: SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL

36A. Application of Act in case of international registration under Madrid Protocol.

The provisions of this Chapter shall apply to international applications and international registrations under the Madrid Protocol.

This section applies to international applications and registrations that follow the Madrid Protocol

36B. Definitions

In this Chapter, unless the context otherwise requires,
      (a) “application”, in relation to a Contracting State or a Contracting Organisation, means an application made by a person who is a citizen of, or is domiciled in, or has a real and effective industrial or commercial establishment in, that Contracting State or a State which is a member of that Contracting Organisation, as the case may be.

      Explanation.—For the purposes of this clause, “real and effective industrial or commercial establishment” means and includes any establishment where some bona fide industrial or commercial activity takes place and need not necessarily be the principal place of business;

An “application” refers to a request made by someone who is either a citizen of, living in, or has a genuine business presence in a country that is part of a specific group or organization.

Explanation: A “real and effective industrial or commercial establishment” is any place where genuine business activities are conducted, not just the main business location.

      (b) “basic application” means an application for the registration of a trade mark filed under section 18 and which is used as a basis for applying for an international registration;

A “basic application” is the initial application that is filed for a trade mark under section 18. This application is then used as the foundation for applying for international trade mark registration.

      (c) “basic registration” means the registration of a trade mark under section 23 and which is used as a basis for applying for an international registration;

A “basic registration” is the official registration of a trade mark under section 23. This registration serves as the foundation for applying for international trade mark registration.

      (d) “Common Regulations” means the Regulations concerning the implementation of the Madrid Protocol;

“Common Regulations” are the rules that guide how the Madrid Protocol is put into practice

      (e) “Contracting Organisation” means a Contracting Party that is an inter-governmental organisation;

A “Contracting Organisation” is an international organization made up of governments that is part of the Madrid Protocol.

      (f) “Contracting Party” means a Contracting State or Contracting Organisation party to the Madrid Protocol;

A “Contracting Party” is either a country (Contracting State) or an organization (Contracting Organisation) that is part of the Madrid Protocol.

      (g) “Contracting State” means a country party to the Madrid Protocol;

A “Contracting State” is a country that has agreed to the Madrid Protocol.

      (h) “international application” means an application for international registration or for extension of the protection resulting from an international registration to any Contracting Party made under the Madrid Protocol;

“International application” is a request to register a trademark internationally or to extend its protection to other countries under the Madrid Protocol.

      (i) “International Bureau” means the International Bureau of the World Intellectual Property Organisation;

“International Bureau” refers to the office of the World Intellectual Property Organization (WIPO) that handles international trademark registrations.

      (j) “international registration” means the registration of a trade mark in the register of the International Bureau effected under the Madrid Protocol;

“International registration” refers to the registration of a trademark with the International Bureau according to the Madrid Protocol.

      (k) “Madrid Agreement” means the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on the 14th day of April, 1891, as subsequently revised and amended;

The “Madrid Agreement” is the international treaty for trademark registration, adopted in Madrid on April 14, 1891, and later revised and updated.

      (l) “Madrid Protocol” means the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on the 27th day of June, 1989, as amended from time to time.

The “Madrid Protocol” is the international agreement for registering trademarks, adopted in Madrid on June 27, 1989, and updated periodically.

36C. Trade Marks Registry to deal with international applications

Notwithstanding anything contained in sub-section (3) of section 5, an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

Notwithstanding section 5(3), international applications will be handled by the main office or a branch office of the Trade Marks Registry, as specified by the Central Government.

36D. International application originating from India

      (1) Where an application for the registration of a trade mark has been made under section 18 or a trade mark has been registered under section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the Common Regulations for international registration of that trade mark.

For a mark applied for or registered as trademark in India, the applicant can apply for international registration using the form specified.

      (2) A person holding an international registration may make an international application on the form prescribed by the Common Regulations for extension of the protection resulting from such registration to any other Contracting Party.

For international trademark registration, the applicant can apply to extend its protection to other participating countries using the official form.

      (3) An international application under sub-section (1) or sub-section (2) shall designate the Contracting Parties where the protection resulting from the international registration is required.

The applicant needs to specify which countries he wants trademark protection to cover.

      (4) The Registrar shall certify in the prescribed manner that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the application under section 18 or the registration under section 23, and shall indicate the date and number of that application or the date and number of that registration as well as the date and number of the application from which that registration resulted, as the case may be, and shall within the prescribed period, forward the international application to the International Bureau for registration, also indicating the date of the international application.

The Registrar will check that the details in international application match those in the local trademark application or registration. He will record and send this information, including relevant dates and numbers, to the International Bureau for registration.

      (5) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the application under section 18 or the registration under section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration shall cease to have effect:

Provided that where an appeal is made against the decision of registration and an action requesting for withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting into withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration.

If, within five years of an international registration, the related local application or registration is withdrawn, cancelled, expires, or is refused for any goods or services, the international registration’s protection in India will end.

However, if there is an appeal or opposition filed before the five-year period ends, and a final decision results in withdrawal, cancellation, expiration, or refusal, it will be considered as having happened within the five-year period.

      (6) The Registrar shall, during the period of five years beginning with the date of international registration, transmit to the International Bureau every information referred to in sub-section (5).

For five years from the date of international registration, the Registrar must send all relevant information to the International Bureau as required.

      (7) The Registrar shall notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be.

The Registrar will inform the International Bureau about any cancellation of an international registration, based on the current status of the original application or registration.

36E. International registrations where India has been designated

      (1) The Registrar shall, after receipt of an advice from the International Bureau about any international registration where India has been designated, keep a record of the particulars of that international registration in the prescribed manner.

When the Registrar receives details about an international registration designating India, he will record this information as required.

      (2) Where, after recording the particulars of any international registration referred to in sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark in India should not be granted or such protection should be granted subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the international registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of protection and inform the International Bureau in the prescribed manner within eighteen months from the date on which the advice referred to in sub-section (1) was received.

If the Registrar believes that a trade mark’s protection in India should be refused or granted with different conditions than those of the international registration, he may refuse protection after hearing from the applicant. He must inform the International Bureau about this within eighteen months of receiving the details of the international registration.

      (3) Where the Registrar finds nothing in the particulars of an international registration to refuse grant of protection under sub-section (2), he shall within the prescribed period cause such international registration to be advertised in the prescribed manner.

If the Registrar sees no reason to refuse protection for an international registration, he shall advertise the registration within the required time frame.

      (4) The provisions of sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in relation to an international registration as if such international registration was an application for registration of a trade mark under section 18.

The rules for trademark registration (sections 9 to 21, 63, and 74) will apply to international registrations as if they were regular trademark applications under section 18.

      (5) When the protection of an international registration has not been opposed and the time for notice of opposition has expired, the Registrar shall within a period of eighteen months of the receipt of advice under sub-section (1) notify the International Bureau its acceptance of extension of protection of the trade mark under such international registration and, in case the Registrar fails to notify the International Bureau, it shall be deemed that the protection has been extended to the trade mark.

If no one opposes the protection of an international trademark registration within the allowed time, the Registrar must notify the International Bureau within eighteen months that the protection is accepted. If the Registrar does not notify the Bureau in time, it will be assumed that the protection has been extended.

      (6) Where a registered proprietor of a trade mark makes an international registration of that trade mark and designates India, the international registration from the date of the registration shall be deemed to replace the registration held in India without prejudice to any right acquired under such previously held registration and the Registrar shall, upon request by the applicant, make necessary entry in the register referred to in sub-section (1) of section 6.

If a trademark owner registers his trademark internationally and includes India, the international registration will replace the previous Indian registration from the date it is registered. However, any rights gained under the old registration shall be still valid. The Registrar will update the register as requested by the applicant.

      (7) A holder of international registration of a trade mark who designates India and who has not been extended protection in India shall have the same remedy which is available to any person making an application for the registration of a trade mark under section 18 and which has not resulted in registration under section 23.

If someone has an international trademark registration that includes India but hasn’t been granted protection in India, they can use the same legal remedies as someone who applied for a trademark registration in India but hasn’t yet received it.

      (8) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the related basic application or, as the case may be, the basic registration in a Contracting Party other than India has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration in India shall cease to have effect.

If the original trademark application or registration, which the international registration was based on, is withdrawn, canceled, expired, or refused even for a part of goods or services within five years of the international registration, the trademark’s protection in India shall end. This applies whether or not the international registration has been transferred to someone else.

36F. Effects of international registration

      (1) From the date of the international registration of a trade mark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trade mark to India, the protection of the trade mark in India shall be the same as if the trade mark had been registered in India.

Once an international trade mark is registered or its protection is extended to India, it will have the same legal status and protection as if it were registered directly in India.

      (2) The indication of classes of goods and services given by the applicant shall not bind the Registrar with regard to the determination of the scope of the protection of the trade mark.

The classes of goods and services listed by the applicant do not limit the Registrar’s decision on how broadly the trade mark will be protected.

36G. Duration and renewal of international registration

      (1) The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period.

An international trade mark registration lasts for ten years and can be renewed for another ten years when it expires.

      (2) Subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration.

After expiry, the international trade mark registration can still be renewed within a grace period of six months by paying additional fee.

CHAPTER V: ASSIGNMENT AND TRANSMISSION

37. Power of registered proprietor to assign and give receipts

The person for the time being entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.

The person currently listed as the owner of a trademark in the register has the right to transfer (assign) the trademark and accept payment for the transfer. If a part of the rights are vested in someone else then the owner can transfer only the part vested in himself.

38. Assignability and transmissibility of registered trade marks

Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.

Notwithstanding what other laws may say, a registered trademark can be transferred (assigned or passed on), with or without the business’s reputation (goodwill). It can be transferred for all the goods or services it’s registered for, or just some of them, depending on the rules in this chapter.

39. Assignability and transmissibility of unregistered trade marks

An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.

An unregistered trademark can be transferred (assigned or passed on), with or without the business’s reputation (goodwill).

40. Restriction on assignment or transmission where multiple exclusive rights would be created

    (1) Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to-

        (a) same goods or services;

        (b) same description of goods or services;

        (c) goods or services or description of goods or services which are associated with each other,

of trade marks nearly resembling each other or of identical trade mark, if having regard to the similarity of the goods and services and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion:

Despite sections 38 and 39, a trademark cannot be transferred if the result would be that more than one person has exclusive rights to use similar or identical trademarks for:

  • the same goods or services,
  • goods or services of the same type, or
  • goods or services that are related to each other.

If the similarity between the goods, services, and trademarks could mislead or confuse people, the transfer is not allowed.

    PROVIDED that an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within India otherwise than for export therefrom, or in relation to goods to be exported to the same market outside India or in relation to services for use at any place in India or any place outside India in relation to services available for acceptance in India.

An assignment or transfer of a trademark won’t be considered invalid under this rule if the exclusive rights given to different people are limited in such a way that:

  • Two or more people cannot use those rights for goods sold or traded within India (except for exports), or
  • For goods exported to the same market outside India, or
  • For services used in India or abroad, where those services are available for acceptance in India.

These limitations prevent overlapping use in specific situations.

    (2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1),and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.

The owner of a registered trademark who wants to transfer it can submit a case to the Registrar explaining the details. The Registrar may then issue a certificate stating whether the proposed transfer would be valid or invalid, considering the similarity of goods or services and trademarks involved.

This certificate will be final on the validity of the transfer unless it’s proven to be obtained by fraud or misrepresentation. However, for a certificate that confirms the transfer is valid, the new owner must apply for registration within six months of the certificate’s issue date.

41. Restriction on assignment or transmission when exclusive rights would be created in different parts of India

Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law-

    (a) an exclusive right in one of the persons concerned, to the use of the trade mark limited to use in relation to goods to be sold or otherwise traded in, in any place in India, or in relation to services for use, or services available for acceptance in any place in India; and

Despite sections 38 and 39, a trademark cannot be transferred if it would result in one person having an exclusive right to use the trademark only for goods sold or traded in India or for services used or offered in India, and

    (b) an exclusive right in another of these persons concerned, to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to-

        (i) the same goods or services; or

        (ii) the same description of goods or services; or

        (iii) services which are associated with those goods or goods of that description or goods which are associated with those services or services of that description,

limited to use in relation to goods to be sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India:

if it would result in another person having an exclusive right to use a similar or identical trademark for:

  • the same goods or services,
  • goods or services of the same type, or
  • related goods or services,

for use in a different part of India than where the first trademark is used.

    PROVIDED that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 40 if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.

If the owner of a trademark wants to transfer it, or if someone claims that a trademark has been transferred to him or his predecessor, he can apply to the Registrar. If the Registrar agrees that the transfer won’t harm the public interest, he shall approve it. Once approved, the transfer is valid unless it’s shown that the approval was obtained by fraud or misrepresentation. However, for the transfer to be valid, the new owner must apply for registration within six months of the approval date or before the transmission if it was already completed.

42. Conditions for assignment otherwise than in connection with the goodwill of a business

Where an assignment of a trade mark, whether registered or unregistered is made otherwise than in connection with the goodwill of the business in which the mark has been or is used, the assignment shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.

If a trademark is transferred without the associated business reputation (goodwill), the transfer won’t be valid unless the new owner applies to the Registrar within six months (or up to nine months with an extension) for instructions on how to advertise the transfer. The new owner must then advertise the transfer according to the Registrar’s directions.

Explanation : For the purposes of this section, an assignment of a trade mark of the following description shall not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in which the mark is used, namely:-

    (a) an assignment of a trade mark in respect only of some of the goods or services for which the trade mark is registered accompanied by the transfer of the goodwill of the business concerned in those goods or services only; or

    (b) an assignment of a trade mark which is used in relation to goods exported from India or in relation to services for use outside India if the assignment is accompanied by the transfer of the goodwill of the export business only.

An assignment of such a trademark is considered to be connected with the business’s reputation (goodwill) if:

  • The trademark is transferred for only some of the goods or services it covers, and the goodwill related to those specific goods or services is also transferred, or
  • The trademark is used for goods exported from India or services used outside India, and the goodwill of the export business is transferred.
43. Assignability and transmissibility of certification trade marks

A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which application shall be made in writing in the prescribed manner.

A certification trademark can only be transferred with the Registrar’s permission. To get this permission, the applicant needs to apply in writing following the required process.

44. Assignability and transmissibility or associated trade marks

Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trade marks.

Associated trademarks must be transferred together as a group and cannot be transferred individually. However, for most other purposes, they are treated as if they were registered as separate trademarks.

45. Registration of assignments and transmissions

        (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of such assignment or transmission to be entered on the register.

If someone gains ownership of a registered trademark through assignment or transfer, he must apply to the Registrar to officially update the trademark’s ownership. The Registrar will then register the new owner and update the details in the trademark register.

    (2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished.

The Registrar can ask for more proof of ownership if there are reasonable doubts about the accuracy of the information or documents provided by the applicant.

    (3) Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.

If there’s a dispute over the validity of an assignment or transmission, the Registrar may hold off on registering it until a court resolves the issue. In other cases, the Registrar will handle the application within the set time frame.

    (4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.

The Registrar will only ask for additional proof of title if there’s a reasonable doubt about the accuracy of the information or documents provided.

CHAPTER VI: USE OF TRADE MARK AND REGISTERED USERS

46. Proposed use of trade mark by company to be formed, etc.

    (1) No application for the registration of a trade mark in respect of any goods or services shall be refused nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark if the Registrar is satisfied that-

        (a) a company is about to be formed and registered under the Companies Act, 1956 and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods or services by the company, or

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

A trademark application cannot be rejected just because the applicant doesn’t currently use or plan to use the trademark, as long as:

  • The applicant is forming a company that will use the trademark for certain goods or services, or
  • The applicant plans to let someone else use the trademark once it is registered.

    (2) The provisions of section 47 shall have effect, in relation to trade mark registered under the powers conferred by this sub-section, as if for the reference, in clause (a) of sub-section (1) of that section, to the intention on the part of an applicant for registration that a trade mark should be used by him there were substituted a reference to the intention on his part that it should be used by the company or registered user concerned.

For trademarks registered under this rule, the rules in section 47 will apply as if the requirement for the applicant’s intention to use the trademark is replaced with the intention for the company or registered user to use it.

    (3) The Registrar or the High Court as the case may be may, in case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relating to any opposition or appeal, and in default of such security being duly given, may treat the application as abandoned.

In cases covered by this rule, the Registrar or the High Court can ask the applicant to provide security for the costs of any opposition or appeal. If the applicant doesn’t provide this security, the Registrar/Court may consider the application abandoned.

    (4) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods or services is registered in the name of an applicant who, relies on intention to assign the trade mark to a company, then, unless within such period as may be prescribed or within such further period not exceeding six months as the Registrar may, on application being made to him in the prescribed manner, allow, the company has been registered as the proprietor of the trade mark in respect of those goods or services, the registration shall cease to have effect in respect thereof at the expiration of that period and the Registrar shall amend the register accordingly.

If a trademark is registered by someone who plans to transfer it to a company, and the company is not registered as the trademark owner within the prescribed time (or an extended period of up to six months), the trademark registration will expire for those goods or services. The Registrar will then update the register to reflect this.

47. Removal from register and imposition of limitations on ground of non-use

    (1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the High Court by any person aggrieved on the ground either-

        (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

        (b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:

A trademark can be removed from the register for certain goods or services if someone affected applies to the Registrar or the High Court, and:

  • The trademark was registered without genuine plans to use it for those goods or services, and it hasn’t been used in a genuine way for at least three months before the application, or
  • It has been registered for at least five years (or more) without any genuine use for those goods or services, up until three months before the application.

    PROVIDED that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the Registrar or the High Court as the case may be is of opinion that he might properly be permitted so to register such a trade mark, the Registrar or the High Court as the case may be may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to-

        (i) goods or services of the same description; or

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

An application to remove a trademark from the register can be denied if it’s shown that the trademark has been genuinely used before the relevant date or period for:

  • Goods or services of the same type, or
  • Goods or services related to those goods or services,

unless the applicant has been allowed to register a similar trademark or the High Court thinks he should be allowed to.

    (2) Where in relation to any goods or services in respect of which a trade mark is registered-

        (a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for acceptance in a particular place in India or for use in a particular market outside India; and

If a trademark is not being used for goods sold or traded in a specific place in India (other than for exports), or for goods exported to a particular market outside India, or for services used or accepted in a specific place in India or abroad, then:

        (b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the Registrar or the High Court as the case may be is of opinion that he might properly be permitted so to register such a trade mark,

If someone has been allowed to register a similar trademark for the same goods or services in a specific place, or if the Registrar or the High Court believes they should be allowed to, they can apply to the High Court or Registrar.

on application by that person in the prescribed manner to the High Court or to the Registrar, the Registrar or the High Court as the case may be may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use.

The High Court or Registrar may then limit the original trademark’s registration to ensure it does not cover that specific use.

    (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.

An applicant cannot claim non-use of a trademark, if such non-use was due to special circumstances like legal restrictions, to support his case.

The non-use must be the result of an intention to stop using the trademark for the relevant goods or services.

48. Registered users

    (1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trade mark is registered.

Anybody except the trademark owner can be registered as a user of the trademark for any or all of the goods or services it covers.

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

When a trademark is used by someone who has permission to do so, it counts as if the trademark owner is using it.

49. Registration as registered user

    (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be accompanied by-

        (a) the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark; and

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

            (i) giving particulars of the relationship, existing or proposed, between the registered proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made;

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

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

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

        (c) such further documents or other evidence as may be required by the Registrar or as may be prescribed.

To register someone as a user of a trademark, both the trademark owner and the person wanting to be registered must apply together in writing. They need to provide:

  1. The written agreement or a copy of it that outlines how the trademark will be used.
  2. An affidavit from the trademark owner or an authorized representative that includes:
    • Details about their relationship and control over the trademark use.
    • The goods or services for which registration is requested.
    • Any conditions or restrictions on the use of the trademark.
    • Whether the use is for a set period or indefinitely, and if for a period, the length of time.

Additionally, they must provide any other documents or evidence required by the Registrar.

    (2) When the requirements of sub-section (1) have been complied with, the Registrar shall register the proposed registered user in respect of the goods or services as to which he is so satisfied.

Once all the requirements are met, the Registrar shall register the proposed user for the specified goods or services.

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

The Registrar will notify other registered users of the trademark when a new person is registered as a user.

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

If asked by the applicant, the Registrar will take steps to keep information from their application private and not disclose it to competitors.

50. Power of Registrar for variation or cancellation of registration as registered user

    (1) Without prejudice to the provisions of section 57, the registration of a person as registered user-

        (a) may be varied by the Registrar as regards the goods or services in respect of which it has effect on the application in writing in the prescribed manner of the registered proprietor of the trade mark;

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

        (c) may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following, rounds, namely:-

            (i) that the registered user has used the trade mark otherwise than in accordance with the agreement under clause (a) of sub-section (1) of section 49 or in such way as to cause or to be likely to cause, deception or confusion;

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

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

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

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

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

Without affecting section 57:

  1. Changing Registration:
    The Registrar can change the details of a registered user’s permission to use the trademark (for certain goods or services) if the trademark owner requests it in writing.
  2. Cancelling Registration:
    The Registrar can cancel a registered user’s permission to use the trademark if requested in writing by:
    • The trademark owner,
    • The registered user themselves, or
    • Any other registered user of the trademark.
  3. Improper Use: The registered user used the trademark in a way that goes against the agreement or causes confusion or deception.
  4. Misrepresentation: The trademark owner or user either lied or left out important information during the registration process, which would have prevented the registration.
  5. Changed Circumstances: The situation has changed since the registration, and if the current circumstances existed at the time of registration, the user wouldn’t have been approved.
  6. Conflict with Other Rights: The registration shouldn’t have been allowed because it conflicts with the legal rights of the person applying for cancellation, based on a contract they are involved in.

    (2) The Registrar shall issue notice in the prescribed manner in respect of every application under this section to the registered proprietor and each registered user (not being the applicant) of the trade mark.

The Registrar shall notify the trademark owner and all registered users (except the applicant) about every application made under this section.

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

    PROVIDED that before cancelling of registration, the registered proprietor shall be given a reasonable opportunity of being heard.

To cancel a registration, the prescribed procedure must be followed. The trademark owner must be given a fair chance to present his case before the registration is cancelled.

51. Power of Registrar to call for information relating to agreement in respect of registered users

    (1) The Registrar may, at any time during the continuance of the registration of the registered user, by notice in writing, require the registered proprietor to confirm to him within one month that the agreement filed under clause (a) of sub-section (1) of section 49 continues to be in force.

The Registrar may, at any time during the registration of a registered user, ask the registered owner to confirm within one month that the agreement between them (filed under section 49) is still valid.

    (2) If the registered proprietor fails to furnish the confirmation within one month as required under sub-section (1), the registered user shall cease to be the registered user on the day immediately after the expiry of the said period and the Registrar shall notify the same.

If the registered owner does not provide the required confirmation within one month, the registered user’s status will automatically end the day after the deadline. The Registrar shall then notify this change.

52. Right of registered user to take proceedings against infringement

    (1) Subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered proprietor a defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered proprietor.

A registered user can file an infringement lawsuit in his own name, as if he were the owner of the trademark. However, the registered owner must be included as a defendant, and both of them have the same rights and responsibilities in the case.

    (2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

Even when the registered owner is named as a defendant in an infringement case, he won’t be responsible for any legal costs unless he actively participates in the proceedings.

53. No right of permitted user to take proceeding against infringement

A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding for any infringement.

A permitted user as defined in section 2(1)(ii)(r) does not have the right to start legal proceedings for trademark infringement.

54. Registered user not to have right of assignment or transmission

Nothing in this Act shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.

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

    (a) where the registered user being an individual enters into a partnership with any other person for carrying on the business concerned; but in any such case the firm may use the trade mark, if otherwise in force, only for so long as the registered user is a member of the firm;

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

Explanation II: For the purposes of Explanation I, “firm” has the same meaning as in the Indian Partnership Act, 1932.

A registered user of a trademark does not have the right to transfer or assign his right to use the trademark.

Explanation 1:

  • (a) If the registered user (an individual) forms a partnership, the firm can use the trademark only as long as the individual remains a partner.
  • (b) If the registered user is a firm and its structure changes, the restructured firm can use the trademark only as long as any original partner remains part of the firm.

Explanation 2: “Firm” follows the definition in the Indian Partnership Act, 1932.

55. Use of one of associated or substantially identical trade marks equivalent to use of another

    (1) Where under the provisions of this Act, use of a registered trade mark is required to be proved for any purpose, the Registrar or the High Court as the case may be may, if and, so far as it shall think right, accept use of a registered associate trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.

If proof of the use of a registered trademark is needed under the Act, the High Court may accept the use of an associated trademark or a version of the trademark with minor changes that doesn’t significantly alter its identity as valid proof.

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

Using the entire registered trademark is considered the same as using any part of that trademark, as long as the part is also registered under the same proprietor according to section 15(1).

    (3) Notwithstanding anything in section 32, the use of part of the registered trade mark in sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act.

Even though part of a registered trademark is used, it does not automatically prove that it is distinctive for any legal purpose under this Act, despite what is stated in section 32.

56. Use of trade mark for export trade and use when form of trade connection changes

    (1) The application in India of trade mark to goods to be exported from India or in relation to services for use outside India and any other act done in India in relation to goods to be so exported or services so rendered outside India which, if done in relation to goods to be sold or services provided or otherwise traded in within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods or services for any purpose for which such use is material under this Act or any other law.

Applying a trademark to goods meant for export or to services for use outside India, and any related actions done in India, will be considered as using the trademark for those goods or services. This counts as valid use under the law, just as if the trademark were used for goods sold or services provided within India.

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

Using a registered trademark for goods or services connected with the person using the mark will not be considered deceptive or confusing just because there was a different kind of connection between the mark and those goods or services in the past.

CHAPTER VII: RECTIFICATION AND CORRECTION OF THE REGISTER

57. Power to cancel or vary registration and to rectify the register

    (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court as the case may be may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

On an application by an aggrieved person the Registrar/High Court can order the cancellation or modification of a trademark registration if there’s a violation or failure to follow conditions listed in the register.

    (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court as the case may be may make such order for making, expunging or varying the entry as it may think fit.

On an application by an aggrieved person about missing entries, incorrect entries, or errors in the trademark register the High Court or Registrar can order changes, removals, or corrections as needed.

    (3) The High court may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

In proceedings for correcting the register, the High Court can address any relevant questions needed to resolve the issue

    (4) The Registrar or the High Court as the case may be, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

The Registrar/High Court can, on its own initiative, decide about correcting the register after notifying the parties involved and giving them a chance to present their views.

    (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

When the High Court orders a change to the register a notice of this change shall be sent to the Registrar who must then put this into effect.

58. Correction of register

    (1) The Registrar may, on application made in the prescribed manner by the registered proprietor,-

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

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

        (c) cancel the entry of a trade mark on the register;

        (d) strike out any goods or classes of goods or services from those in respect of which a trade mark is registered,

and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

The Registrar can make changes to the trade mark register based on an application from the registered owner. These changes include:

  • Correcting errors in the owner’s name, address, or other details.
  • Updating changes to the owner’s name, address, or details.
  • Removing a trade mark from the register.
  • Removing specific goods or services from the registration.

The Registrar may also update the registration certificate and might ask to see the certificate for this purpose.

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

The Registrar can, upon a request from a registered user of a trade mark and after notifying the trade mark’s owner, correct or update any errors in the registered user’s name, address, or details.

59. Alteration of registered trade marks

    (1) The registered proprietor of a trademark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit

The owner of a trade mark can request permission from the Registrar to make changes to the trade mark, as long as the changes do not significantly alter its identity. The Registrar can either approve or deny the request, and if approved, may impose certain conditions or limitations.

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

The Registrar may choose to advertise an application for changes to a trade mark if it seems necessary. If someone opposes the change within a set time, the Registrar shall hear both sides and then decide.

    (3) Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).

If permission is granted to alter a trade mark, the altered trade mark must be advertised, unless it has already been advertised before.

60. Adaptation of entries in register to amended or substituted classification of goods or services

    (1) The Registrar shall not make any amendment of the register which would have the effect of adding any goods or classes, of goods or services to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods or services:

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

The Registrar cannot make changes that would add new goods or services to the trade mark registration or backdate the registration unless it is too complex to do otherwise and such change doesn’t significantly affect or harm the rights of others.

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

When proposing an amendment to the register, the registered proprietor shall be notified, and the proposal shall be advertised. Any person who believes the amendment violates the rules can oppose it.

CHAPTER VIII: COLLECTIVE MARKS

61. Special provisions for collective marks

    (1) The provision of this Act shall apply to collective marks subject to the provisions contained in this Chapter.

All rules for trademarks apply to collective marks, with specific provisions outlined in this chapter.

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

For collective marks, distinguishing goods or services means separating those of the association’s members from others.

62. Collective mark not to be misleading as to character or significance

A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of public in particular if it is likely to be taken to be something other than a collective mark, and in such case the Registrar may require that a mark in respect of which application is made for registration comprise some indication that it is a collective mark.

A collective mark cannot be registered if it might mislead or confuse the public into thinking it’s something other than a collective mark. The Registrar may require the mark to include a clear indication that it is a collective mark.

63. Application to be accompanied by regulations governing use of collective marks

    (1) An application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark.

When applying to register a collective mark, the application must include the rules for using the mark.

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

These rules must provide detail who can use the mark, membership conditions, usage rules, and penalties for misuse.

64. Acceptance of application and regulations by Registrar

If it appears to the Registrar that the requirements for registration are satisfied, he shall accept the application together with the regulations, either unconditionally or subject to such conditions including amendments of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted shall notify the regulations.

If the Registrar finds the registration requirements met, he shall accept the application and rules, possibly with conditions or amendments. The Registrar shall notify the accepted regulations.

65. Regulations to be open to inspection

The regulations referred to in sub-section (1) of section 63 shall be open to public inspection in the same way as the register as provided in section 148.

The rules for using a collective mark shall be available for public inspection just like the trademark register.

66. Amendment of regulations

Any amendment of regulations referred to in sub-section (1) of section 63 shall not be effective unless the amended regulations are filed with the Registrar, and accepted and published by him in accordance with section 64.

Amendments to the rules are only effective if they are filed with the Registrar and accepted and published according to the specified process.

67. Infringement proceedings by registered proprietor of collective mark

In a suit for infringement instituted by the registered proprietor of a collective mark as plaintiff the court shall take into account any loss suffered or likely to be suffered by authorised users and may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such authorised users.

In an infringement lawsuit involving a collective mark, the court shall consider the impact on authorized users and may direct how the plaintiff should handle any financial remedies on behalf of these users.

68. Additional grounds for removal of registration of collective mark

The registration of a collective mark may also be removed from the register on the ground-

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

    (b) that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark.

Explanation I : For the purposes of this Chapter, unless the context otherwise requires, “”authorised user” means a member of an association authorised to use the registered collective mark of the association.

Explanation II: For the purposes of this Act, use of a collective mark by an authorised user referred to in Explanation I shall be deemed to be the use by the registered proprietor thereof.

A collective mark may be removed from the register if:

  • (a) The use of the mark misleads the public about it being a collective mark.
  • (b) The proprietor fails to follow or enforce the rules for using the mark.
  • Explanation I: “Authorized user” means a member of the association allowed to use the collective mark.
  • Explanation II: The use of a collective mark by an authorized user is considered as use by the registered proprietor.

CHAPTER IX: CERTIFICATION TRADE MARKS

69 Certain provisions of this Act not applicable to certification trade marks

The following provisions of this Act shall not apply to certification trade marks, that is to say,-

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

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

    (c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56;

    (d) Chapter XII, except section 107.

Some rules in this Act don’t apply to certification trade marks. These include specific sections and chapters unless they are specifically mentioned in this chapter.

70. Registration of certification trade marks

A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the provision of services of the kind certified.

A person who sells or provides the services that the certification trade mark certifies cannot himself be the owner of that mark.

71. Applications for registration of certification trade marks

    (1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 74.

To register a certification trade mark, the applicant need to apply to the Registrar in the prescribed way. The application must also include a draft of the rules for using the mark.

    (2) Subject to the provisions of section 70, the provisions of sections l8, 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that reference therein to acceptance of an application shall be construed as reference to authorisation to proceed with an application.

For certification trade mark applications, the rules from sections 18, 19, and 22 apply similarly to those in section 18. However, instead of “acceptance” there will be authorisation to move forward with the application.

    (3) In dealing under the said provisions with an application under this section, the Registrar or the High Court as the case may be shall have regard to the like considerations, so far as relevant, as if the application were applications under section 18 and to any other considerations relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark.

When reviewing an application for a certification trade mark, the Registrar/High Court will consider the same factors as for other trade mark applications, and make sure the mark clearly shows it is a certification trade mark.

72. Consideration of application for registration by the Registrar

    (1) The Registrar shall consider the application made under section 71 with regard to the following matters, namely:-

        (a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;

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

        (c) whether in all the circumstances the registration applied for would be to the public advantage,

and may either-

        (i) refuse the application; or

        (ii) accept the application and approve the said draft of the regulations either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he thinks requisite having regard to any of the said matters.

The Registrar will review the application to check:

  1. If the applicant is qualified to certify the goods.
  2. If the draft rules for using the mark are acceptable.
  3. If registering the mark benefits the public.

Based on this review, the Registrar can either:

  • Reject the application, or
  • Approve it, possibly with changes or conditions.

    (2) Except in the case of acceptance and approval without modification and unconditionally, the Registrar shall not decide any matter under sub-section (1) without giving the applicant an opportunity of being heard.

Unless the application is approved exactly as it is, the Registrar must allow the applicant to respond before making a decision.

73. Opposition to registration of certification trade marks

When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the provisions of section 21 shall apply in relation to the registration of the mark as they apply in relation to an application under section 18.

Once a trademark application is accepted, the Registrar shall gets it advertised. The rules in section 21shall then apply to the registration, just like they do for applications under section 18.

74. Filing of regulations governing the use of a certification trade mark

    (1) There shall be filed at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods or services and to authorise the use of the certification trade mark, and may contain any other provisions which the Registrar may by general or special order, require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the certification trade mark in accordance with the regulations); and regulations so filed shall be open to inspection in like manner as the register as provided in section 148.

For every certification trade mark registered, rules must be filed with the Trade Marks Registry that explain how the mark will be used. These rules should include when the owner will certify goods or services and allow others to use the mark. They can also include other details required by the Registrar, such as the right to appeal if the owner refuses to certify goods or allow the mark’s use. These rules will be publicly available, just like the register under section 148.

    (2) The regulations so filed may, on the application of the registered proprietor, be altered by the Registrar.

The rules that were filed can be changed by the Registrar if the registered owner requests it.

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

The Registrar can choose to advertise an application if he think it’s necessary. If someone opposes the application within the time mentioned in the advertisement, the Registrar shall not make a decision without giving both sides a chance to be heard.

75. Infringement of certification trade marks

The right conferred by section 78 is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorised by him in that behalf under the regulations filed under section 74, using it in accordance therewith, uses in the course of trade, a mark, which is identical with, or deceptively similar to the certification trade mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being a use as a trade mark.

The right given by section 78 is violated if someone, who is not the owner or authorized user of a certification trade mark, uses a similar or identical mark in business for the same goods or services and which would make people take it as a certification mark.

76. Acts not constituting infringement of certification trade marks

    (1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered certification trade mark-

Despite what this Act says, the following actions do not count as a violation of the right to use a registered certification trade mark.

        (a) where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, or in relation to goods to be exported to any market or in relation to services for use or available for acceptance in any place, country or territory or in any other circumstances, to which having regard to any such limitations, the registration does not extend;

If a certification trade mark is registered with specific conditions or limits, using the mark in ways or places not covered by those conditions (such as for certain goods, locations, or services) does not count as a violation of the registration.

        (b) the use of a certification trade mark in relation to goods or services certified by the proprietor of the mark if, as to those goods or services or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied the mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the mark;

It is not a violation to use a certification trade mark on goods or services if the owner of the mark, or someone authorized by them, has already applied the mark and hasn’t removed it, or if the owner has given permission (directly or indirectly) for its use.

        (c) the use of a certification trade mark in relation to goods or services adapted to form part of, or to be accessory to, other goods in relation to which the mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods or services are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods or services are certified by the proprietor.

It’s not a violation to use a certification trade mark on goods or services that are meant to be part of, or accessories to, other goods where the mark was legally used. The mark can be used if it’s necessary to show the goods or services fit with the certified ones, as long as it doesn’t falsely suggest certification by the owner.

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

Clause (b) of sub-section (1) does not apply when a certification trade mark is used on goods or services in a way that goes against the rules set out, even if the goods or services are covered by that clause.

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

If there are two or more similar or identical trade marks registered, using any one of them won’t be considered a violation of the rights associated with the others.

77. Cancellation or varying of registration of certification trade marks

The Registrar may, on the application in the prescribed manner of any person aggrieved and after giving the proprietor an opportunity of opposing the application, make such order as he fit for expunging or varying any entry in the register to a certification trade mark, or for varying the regulations, on any of the following grounds, namely:-

    (a) that the proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services;

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

    (c) that it is no longer to the public advantage that the mark should remain registered;

    (d) that it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.

The Registrar can make changes or remove a certification trade mark from the register if someone affected files an application. The owner will be given a chance to oppose it. This can happen for the following reasons:

  1. The owner can no longer certify the goods or services.
  2. The owner hasn’t followed the required regulations.
  3. Keeping the mark registered is no longer beneficial to the public.
  4. The regulations need to be changed for public benefit if the mark stays registered.
78. Rights conferred by registration of certification trade marks

    (1) Subject to the provisions of sections 34, 35 and 76, the registration of a person as a proprietor of certification trade mark in respect of any goods or services shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services.

    (2) The exclusive right to the use of a certification trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

If a person is registered as the owner of a certification trade mark for certain goods or services, they have the exclusive right to use the mark for those goods or services, as long as the registration is valid.

This exclusive right is subject to any conditions or limitations specified in the registration.

CHAPTER XI: APPEALS

91. Appeals to High Court

    (1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder may prefer an appeal to the High Court within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal.

Anyone affected by a decision or order from the Registrar can appeal to the High Court within three months of being notified.

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

    PROVIDED that an appeal may be admitted after the expiry of the period specified therefor, if the appellant satisfies the High Court that he had sufficient cause for not preferring the appeal within the specified period.

High Court may allow the appeal after three months if the appellant can show a valid reason for missing the deadline.

    (3) An appeal to the High Court shall be in the prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the order or decision appealed against and by such fees as may be prescribed.

Such an appeal must be proper in all respects, include a copy of the order being appealed, and the correct fee.

97. Procedure for application for rectification, etc., before High Court

    (1) An application for rectification of the register made to the High Court under section 57 shall be in such form as may be prescribed.

An application to the High Court for correcting the trade mark register under section 57 must be submitted in a prescribed format.

    (2) A certified copy of every order or judgement of the High Court relating to a registered trade mark under this Act shall be communicated to the Registrar by the Court and the Registrar shall give effect to the order of the Court and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

The High Court must send a certified copy of any order or judgment related to a registered trade mark to the Registrar and he shall update the register accordingly.

98. Appearance of Registrar in legal proceedings

    (1) The Registrar shall have the right to appear and be heard-

        (a) in any legal proceedings before the High Court in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;

        (b) in any appeal to the High Court from an order of the Registrar on an application for registration of a trade mark-

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

            (ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest,

and the Registrar shall appear in any case if so directed by the High Court.

The Registrar has the right to appear and be heard in legal proceedings before the High Court when:

  1. The case involves altering or rectifying the trade mark register, or a question about Trade Marks Registry practices arises.
  2. In an appeal to the High Court involving:
    • An unopposed trade mark application that the Registrar either refused or accepted with changes.
    • A trade mark application that was opposed, and the Registrar believes it’s necessary to appear in the public interest.

The Registrar must appear if the High Court directs it.

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

The Registrar may choose not to appear in person in High Court proceedings unless the court directs otherwise. Instead, the Registrar can submit a signed written statement providing details about the proceedings, the reasons for his decision, relevant trade mark registry practices, or other relevant matters. This written statement will be considered as evidence in the case.

CHAPTER XII: OFFENCES, PENALTIES AND PROCEDURE

101. Meaning of applying trade marks and trade descriptions

    (1) A person shall be deemed to apply a trade mark or mark or trade description to goods or services who-

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

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

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

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

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

A person is considered to apply a trade mark or description to goods or services if they:

  • (a) Put the mark directly on the goods or use it for services.
  • (b) Apply the mark to any packaging used for selling or displaying the goods.
  • (c) Place goods in packaging that has the mark on it.
  • (d) Use the mark in a way that could make people think it represents the goods or services.
  • (e) Use the mark in signs, ads, invoices, or other business documents related to the goods or services.

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

A trade mark or description is considered applied to goods if it’s woven, stamped, attached, or otherwise included on the goods or their packaging.

102 Falsifying and falsely applying trade marks

    (1) A person shall be deemed to falsify a trade mark who, either,-

        (a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or

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

A person is considered to falsify a trade mark if he:

  • (a) Creates that trade mark or a similar one without the owner’s permission, or
  • (b) Changes or tampers with a genuine trade mark in any way.

    (2) A person shall be deemed to falsely apply to goods or services a trademark who, without the assent of the proprietor of the trademark,-

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

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

A person is considered to falsely apply a trade mark if he:

  • (a) Use the trade mark or a similar one on goods or their packaging without the owner’s permission, or
  • (b) Use packaging with a mark that is identical or similar to the owner’s trade mark for goods that are not the owner’s genuine products.

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

A “false trade mark” in this Act refers to any trade mark that has been falsified or wrongly applied as described earlier.

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

In cases where someone is charged with falsifying or wrongly using a trade mark, it’s up to the accused to prove that he had permission to use it from the trade mark owner.

103. Penalty for applying false trade marks, trade descriptions, etc.

Any person who-

    (a) falsifies any trade mark; or

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

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

    (d) applies any false trade description to goods or services; or

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

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

    (g) causes any of things above-mentioned in this section to be done,

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

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

Anyone who:

  • (a) Falsifies a trade mark,
  • (b) Wrongly applies a trade mark to goods or services,
  • (c) Possesses tools for falsifying a trade mark,
  • (d) Uses a false trade description,
  • (e) Applies a false country of origin or manufacturer’s details to goods,
  • (f) Tampers with origin markings on goods, or
  • (g) Causes any of these actions,

will be punished with imprisonment from six months to three years and a fine between fifty thousand and two lakh rupees, unless he can prove he acted without intent to deceive.

The court may, for special reasons which must be mentioned in the judgement, impose a lesser sentence or fine.

104. Penalty for selling goods or providing services to which false trade mark or false trade description is applied

Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied or which, being required under section 139 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or services provided, as the case may be, are without the indications so required, shall, unless he proves,-

    (a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods or services; or

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

    (c) that otherwise he had acted innocently,

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

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

Anyone who sells or provides goods or services with a false trade mark, false trade description, or missing required information about origin or manufacturer, will be punished with imprisonment from six months to three years and a fine between fifty thousand and two lakh rupees.

He can avoid this punishment if he:

  • (a) Took reasonable precautions and had no reason to suspect the goods or services were fraudulent,
  • (b) Provided information about the source of the goods or services when asked, or
  • (c) Acted innocently.

The court can impose a lesser sentence or fine for special reasons.

105. Enhanced penalty on second or subsequent conviction

Whoever having already been convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees:

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

PROVIDED FURTHER that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.

If someone is convicted again of an offence under sections 103 or 104 after a previous conviction for the same type of offence, he shall face a minimum of one year and up to three years in prison and a fine of at least one lakh rupees and up to two lakh rupees.

The court can give a shorter prison term or lower fine for special reasons.

However, convictions before this Act started are not considered for this rule.

106. Penalty for removing piece goods, etc., contrary to section 81

If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 81 or sells or exposes for sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees.

If someone removes, tries to remove, or sells piece goods, cotton yarn, or cotton thread that isn’t marked as required, all those items and their packaging will be seized by the government. The person involved may also face a fine of up to one thousand rupees.

107. Penalty for falsely representing a trade mark as registered

    (1) No person shall make any representation-

        (a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; or

        (b) with respect to a part of a registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or

        (c) to the effect that a registered trade mark is registered in respect of any goods services in respect of which it is not in fact registered; or

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

No one is allowed to:

  • (a) Claim that an unregistered mark is a registered trade mark,
  • (b) Claim that a part of a registered trade mark is separately registered,
  • (c) Misrepresent that a registered trade mark covers goods or services it doesn’t,
  • (d) Mislead that a trade mark registration provides exclusive rights where it doesn’t due to limitations.

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

If someone breaks any of the rules mentioned, he can be punished with up to three years in prison, a fine, or both.

    (3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered”, or of any other expression, symbol or sign referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except-

        (a) where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or

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

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

In India, using the word “registered” or similar terms with a trade mark usually means the mark is registered in India. However, this doesn’t apply if:

  • (a) The term is clearly linked to a foreign trade mark registration, with the foreign country’s name also mentioned in the same size text.
  • (b) The term itself indicates it refers to a foreign registration.
  • (c) The term is used only for goods meant for export to or services for use in a foreign country where the trade mark is registered.
108. Penalty for improperly describing a place of business as connected with the Trade Marks Office

If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

If someone uses words that make it seem like his business is officially connected to the Trade Marks Office, he can be punished with up to two years in prison, a fine, or both.

109. Penalty for falsification of entries in the register

If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

If someone uses words that make it seem like his business is officially connected to the Trade Marks Office, he can be punished with up to two years in prison, a fine, or both.

110. No offence in certain cases

The provisions of sections 102, 103, 104 and 105 shall, in relation to a registered trade mark or proprietor of such mark, be subject to the rights created or recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections if,-

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

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

Sections 102, 103, 104, and 105 apply to registered trade marks and their owners, but if an act is allowed by this Act or by any other law, it won’t be considered an offence under these sections.

111. Forfeiture of goods

    (1) Where a person is convicted of an offence under section 103 or section 104 or section 105 or is acquitted of an offence under section 103 or section 104 on proof that he acted without intent to defraud, or under section 104 on proof of the matters specified in clause (a), clause (b) or clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed, or but for such proof as aforesaid would have been committed.

If someone is convicted or acquitted of an offence under sections 103, 104, or 105 (falsify a trademark), the court can order that all goods and items involved in the offence be seized by the government. This applies whether there wan an intent to falsify or not.

    (2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.

If someone is convicted and their goods are seized, they can appeal both the conviction and the seizure.

    (3) When a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thirty days from the date of the direction, to the court to which in appealable cases appeals lie from sentences of the court which directed the forfeiture.

If goods are seized after someone is acquitted, and those goods are worth more than fifty rupees, an appeal against the seizure can be made within thirty days to a higher court.

    (4) When a forfeiture is directed on a conviction, the court, before whom the person is convicted, may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.

When goods are seized after a conviction, the court can decide to destroy or handle them in any way it sees fit.

112 Exemption of certain persons employed in ordinary course of business

Where a person accused of an offence under section 103 proves

    (a) that in the ordinary course of his business he is employed on behalf of other persons to apply trade marks or trade descriptions, or as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making, trade marks; and

    (b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other thing by way of profit or commission dependent on the sale of such goods or providing of services, as the case may be; and

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

    (d) that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the trade mark or trade description was applied,

he shall be acquitted.

If someone accused of an offense under section 103 can show that

  • he were just working for others,
  • without a personal stake in the goods or services,
  • took all reasonable precautions,
  • and provided all necessary information about his employer,

he will be cleared of the charges.

113. Procedure where invalidity of registration is pleaded by the accused

    (1) Where the offence charged under section 103 or section 104 or section 105 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed:-

If someone charged with an offense related to a registered trademark argues that the trademark registration is invalid:

        (a) If the court is satisfied that such defence is prima facie tenable, it shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act, for the rectification of the register on the ground that the registration is invalid.

If the court believes the defense has some merit, it will delay the proceedings for three months, and give the accused time to apply to the High Court to challenge the trademark’s registration.

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

If the accused shows that he has applied to challenge the trademark registration within the allowed time, the court will pause the prosecution until the challenge is resolved.

        (c) If within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the High Court for rectification of the register, the court shall proceed with the case as if the registration were valid.

If the accused doesn’t apply for trademark rectification within three months or any extended time given by the court, the case will proceed as if the trademark registration is valid.

    (2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the High Court, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.

If, before a complaint is made about an offense related to a trademark, there is already an ongoing application to challenge the trademark’s registration, the court will:

  • Pause the Case: Stop further proceedings in the prosecution until the tribunal decides on the application.
  • Follow the High Court’s Decision: Base the decision on the charges against the accused on the outcome of the trademark rectification application, especially if the complainant’s case depends on the trademark’s registration.
114 Offences by companies

    (1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

    PROVIDED that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

If a company commits an offence under this Act, both the company and the person responsible for the company’s business at the time are considered guilty and can be punished.

However, the person can avoid punishment if he can prove he didn’t know about the offence or that he took all reasonable steps to prevent it.

    (2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of, any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

Explanation : For the purpose of this section-

    (a) “company” means any body corporate and includes a firm or other association of individuals; and

    (b) “director”, in relation to a firm, means a partner in the firm.

If a company commits an offence and it’s shown that a director, manager, secretary, or other officer was involved, either by giving consent, being complicit, or neglecting their duties, that person can also be held responsible and punished.

Explanation:

  • “Company” includes any organization, firm, or group of people.
  • For a firm, a “director” means a partner.
115. Cognizance of certain offences and the powers of police officer for search and seizure

    (1) No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar or any officer authorised by him in writing:

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

A court can only hear cases for offences under sections 107, 108, or 109 if a written complaint is made by the Registrar or an authorized officer.

However, for offences under section 107(c), the court can also take action based on a certificate from the Registrar stating that a trademark was falsely represented as registered for goods or services where it is not actually registered.

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

Court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall not try an offence under this Act.

    (3) The offences under section 103 or section 104 or section 105 shall be cognizable.

Offenses under sections 103, 104, and 105 are considered serious, and police can arrest without a warrant and start an investigation on its own.

    (4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles of seized shall, as soon as practicable, be produced before a judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:

    PROVIDED that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so obtained.

A police officer of at least deputy superintendent rank can search and seize items related to the offence without a warrant if he believe an offence has occurred or is likely to occur. The seized items must be shown to a judicial Magistrate or Metropolitan Magistrate as soon as possible.

Before conducting the search, the officer must get the Registrar’s opinion on the trade mark-related facts of the case.

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

If someone has an interest in an article seized, he can apply to the Magistrate within 15 days to have it returned. The Magistrate will hear both the applicant and the prosecution before deciding whether to return the article.

116. Evidence of origin of goods imported by sea

In the case of goods, brought into India by sea, evidence of the port of shipment shall, in a prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962, relating to confiscation of goods under clause (d) of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of the said Act for the protection of trade marks relating to import of goods, be prima facie evidence of the place or country in which the goods are made or produced.

In cases where goods are imported into India by sea and there’s a legal issue related to these goods, evidence showing the port where the goods were shipped from can be used as initial proof of the place or country where the goods were made or produced.

117. Costs of defence or prosecution

In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deems reasonable having regard to all the circumstances of the case and the conduct of the parties and the costs so awarded shall be recoverable as if they were a fine.

In any legal case under this Act, the court can order one party to pay costs to the other based on the case’s details and the parties’ actions. These costs will be treated like a fine and can be collected in the same way.

118. Limitation of prosecution

No prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962, relating to confiscation of goods under clause (d) of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of the said Act for the protection of trade marks, relating to import of goods shall be commenced after expiration of three years next after the commission of the offence charged, or two years after the discovery thereof by the prosecutor, whichever expiration first-happens.

Legal action for an offence under this Act or related to the Customs Act, 1962, involving goods confiscation and trademark protection must start within three years of the offence or two years after it is discovered by the prosecutor, whichever comes first.

119. Information as to commission of offence

An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.

A government officer enforcing this Act does not have to reveal the source of his information about any alleged offence in court.

120. Punishment of abetment in India of acts done out of India

If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in that place the act which he abetted.

If someone in India helps or encourages a crime that happens outside India, and that crime would be illegal if committed in India, he can be tried and punished in India as if he had committed the crime there themselves.

121. Instructions of Central Government as to permissible variation to be observed by criminal courts

The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, guage or weight which are to be recognised by criminal courts as permissible in the case of any goods.

The Central Government can set rules, announced in the Official Gazette, about the acceptable limits of variations in number, quantity, measure, gauge, or weight of goods that criminal courts should recognize.

CHAPTER XIII: MISCELLANEOUS

122. Protection of action taken in good faith

No suit or other legal proceedings shall lie against any person in respect of anything which is in good faith done or intended to be done in pursuance of this Act.

No one can be sued or face legal action for actions taken in good faith while following this Act.

123. Certain persons to be public servants

Every person appointed under this Act shall be deemed to be a public servant within the meaning of section 21 of the Indian Penal Code.

Everyone appointed under this Act is considered a public servant according to Indian law.

124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

    (1) Where in any suit for infringement of a trade mark-

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

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

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

            (i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;

            (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.

If the defendant claims the plaintiff’s trademark is invalid or if the plaintiff argues that the defendant’s trademark is invalid:

  • If there are ongoing proceedings to rectify the trademark registration, the court will pause the suit until those proceedings are resolved.
  • If there are no such proceedings, but the court finds the claim of invalidity to be reasonable, it will raise the issue and pause the case for three months. This allows the party to apply to the High Court to rectify the trademark registration.

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

If a party proves to the court that they applied for rectification of the trademark registration within the specified time or any extended time granted by the court, the trial of the suit will be put on hold until the rectification proceedings are completed.

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

If the party does not apply for rectification within the specified time or any extended time granted by the court, the issue of trademark validity will be considered abandoned. The court will then continue with the suit, focusing on the remaining issues.

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

The final decision in the rectification proceedings will be binding on both parties. The court will then handle the suit based on that decision, specifically regarding the validity of the trademark registration.

    (5) The stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit.

Even if a trademark infringement lawsuit is paused, the court can still make interim orders, such as granting an injunction, directing account-keeping, or appointing a receiver.

125. Application for rectification of register to be made to High Court in certain cases

    (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant’s trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the High Court and not to the Registrar.

In a trademark infringement lawsuit, if either party challenges the validity of the other’s trademark registration, the issue will only be decided through a rectification application to the High Court, not the Registrar. This applies even if other sections of the law suggest otherwise.

    (2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the High Court.

If an application for rectification of the trademark register is made to the Registrar under sections 47 or 57, the Registrar has the option to refer the application to the High Court at any point during the proceedings.

126. Implied warranty on sale of marked goods

Where a mark or a trade mark or trade description has been applied to the goods on sale or in the contract for sale of any goods or in relation to any service, the seller shall be deemed to warrant that the mark is a genuine mark and not falsely applied, or that the trade description is not a false trade description within the meaning of this Act unless the contrary is expressed in writing signed by or on behalf of the seller and delivered at the time of the sale of goods or providing of services on contract to and accepted by the buyer.

When a mark, trademark, or trade description is used on goods for sale or in a service contract, the seller guarantees that the mark is genuine and not falsely applied, unless a written statement signed by the seller says otherwise and is given to the buyer at the time of sale or service.

127. Powers of Registrar

In all proceedings under this Act before the Registrar,-

    (a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;

In proceedings under this Act, the Registrar has the same powers as a civil court to:

  • Issue orders for examining witnesses.
  • Receive evidence
  • Administer oaths
  • Enforce the attendance of witnesses
  • Compel the production of documents

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

    PROVIDED that the Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or provision of services or to authorise the use of the mark;

The Registrar can order reasonable costs in proceedings, and these orders are enforceable like a court decree.

However, the Registrar cannot award costs in appeals related to the refusal of a certification trade mark owner to certify goods or services or authorize the use of the mark.

    (c) the Registrar may, on an application made in the prescribed manner, review his own decision.

The Registrar can review his own decision on request.

128. Exercise of discretionary power by Registrar

Subject to the provisions of section 131, the Registrar shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within the prescribed time) giving to the person an opportunity of being heard.

The Registrar cannot make a decision against someone without giving him a chance to be heard, if requested in time.

129. Evidence before Registrar

In any proceeding under this Act before the Registrar, evidence shall be given by affidavit:

PROVIDED that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit.

Evidence is usually provided by an affidavit. However, the Registrar may accept oral evidence in addition to or in its place.

130. Death of party to a proceeding

If a person who is a party to a proceeding under this Act (not being a proceeding before a court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of the transmission of the interest of the deceased person, substitute in the proceeding his successor in interest in his place, or, if the Registrar is of opinion that the interest of the deceased person is sufficiently represented by the surviving parties, permit the proceeding to continue without the substitution of his successor in interest.

If a person involved in a non-court proceeding under this Act dies during the process, the Registrar can either replace him with his successor, if requested, or allow the proceeding to continue with the remaining parties if the deceased’s interests are already represented.

131. Extension of time

    (1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.

On good reasons the Registrar may extend a deadline (if not barred by the Act) and notify the parties involved.

    (2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.

The parties have no say and can’t appeal his decision on this extension.

132. Abandonment

Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.

Registrar may issue a notice asking the applicant to remedy his default within a specified time. Failing which the Registrar may abandon the case, after giving the applicant a change to explain.

133. Preliminary advice by the Registrar as to distinctiveness

    (1) The Registrar may, on application made to him in the prescribed manner by any person who proposes to apply for the registration of a trade mark, give advice as to whether the trade mark appears to him prima facie to be distinctive.

Before filing, the applicant can ask the Registrar if the trademark seems distinct enough.

    (2) If, on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative made within three months after the advice was given, the Registrar, after further investigation or consideration, gives notice, to the applicant of objection on the ground that the trade mark is not distinctive, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.

If the Registrar subsequently objects to the mark, the applicant can withdraw the application and get a refund.

134. Suit for infringement, etc., to be instituted before District Court

    (1) No suit-

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

        (b) relating to any right in a registered trade mark; or

        (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered,

shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

You cannot start a lawsuit related to:

  1. Infringement of a registered trademark,
  2. Rights associated with a registered trademark, or
  3. Passing off claims involving trademarks that are identical or similar to the plaintiff’s trademark (registered or not),

in any court lower than a District Court.

    (2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.

    Explanation : For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.

Despite Code of Civil Procedure, cases involving trademark infringement are to be filed in a District Court within the area where the trademark owner or user lives, works, or does business at the time when the suit is filed.

135. Relief in suits for infringement or for passing off

    (1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringement labels and marks for destruction or erasure.

In a trademark infringement or passing off case, the court can grant relief that includes:

  • Destruction or Erasure: The court may also order the defendant to hand over and destroy or remove any infringing labels or marks.
  • Injunction: An order to stop the defendant from continuing the infringing activity, possibly with conditions.
  • Damages or Account of Profits: The plaintiff can choose to receive compensation for losses or profits made by the defendant from the infringement.

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

        (a) for discovery of documents;

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

        (c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

An injunction order in a trademark case can include:

  • Ex Parte Injunction: An order given without the defendant’s presence.
  • Interlocutory Orders: Temporary orders for:
    • Document Discovery: Requiring the defendant to reveal relevant documents.
    • Preservation: Keeping infringing goods or evidence safe.
    • Asset Restraint: Preventing the defendant from selling or handling assets in a way that could make it hard for the plaintiff to recover damages or costs.

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

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

        (b) where in a suit for infringement the defendant satisfies the court-

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

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

        (c) where in a suit for passing off, the defendant satisfies the court-

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

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

The court will not award damages (except nominal damages) or account for profits in these cases:

  1. Certification or Collective Marks: If the infringement involves a certification or collective mark.
  2. Infringement Defense: If the defendant proves:
    • He did not know and had no reason to believe the plaintiff’s trademark was registered when he started using their mark.
    • He stopped using the mark as soon as he became aware of the plaintiff’s trademark rights.
  3. Passing Off Defense: If the defendant proves:
    • He did not know and had no reason to believe the plaintiff’s trademark was in use when they started using his mark.
    • He stopped using the mark as soon as thhe became aware of the plaintiff’s trademark.
136. Registered user to be impleaded in certain proceedings

    (1) In every proceeding under Chapter VII or under section 91, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, shall be made a party to the proceeding.

A registered user of a trademark must always be included as a party in the proceedings.

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

Such a user won’t be responsible for any costs unless he actively participates in the case.

137. Evidence of entries in register, etc., and things done by the Registrar

    (1) A copy of any entry in the register or of any document referred to in sub-section (1) of section 148 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original.

A certified copy of any entry or document issued by the Registrar can be used as an evidence in court.

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

A certificate signed by the Registrar, showing any entry or action taken, is sufficient evidence.

138. Registrar and other officers not compellable to produce register, etc.

The Registrar or any officer of the Trade Marks Registry shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special cause.

For a third party case the certified copy is taken as sufficient evidence and The Registrar or any officer of the Registry do not need to present any original document nor do they need to appear as a witness unless a court orders for special reasons.

139. Power to require goods to show indication of origin

    (1) The Central Government may, by notification in the Official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of India and imported into India, or, which are made or produced within the limits of India, shall, from such date as may be appointed by the notification not being less than three months from its issue, have applied to them an indication of the country or place in which they were made or produced, or of the name and address of the manufacturer or the person for whom the goods were manufactured.

The Central Government can issue a notification requiring that certain imported or domestically produced goods display the name and address of the manufacturer or ordering person. This rule will come into effect at least three months after the notification is issued.

    (2) The notification may specify the manner in which such indication shall be applied that is to say, whether to goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessary, that is to say, whether on importation only, or also at the time of sale, whether by wholesale or retail or both.

The notification may also describe and specify how and when the required information should be displayed on the goods.

    (3) No notification under this section shall be issued, unless application is made for its issue by persons or associations substantially representing the interests of dealers in, or manufacturers, producers, or users of, the goods concerned, or unless the Central Government is otherwise convinced that it is necessary in the public interest to issue the notification, with or without such inquiry, as the Central Government may consider necessary.

A notification shall be issued only if requested by relevant dealers, manufacturers, producers, or users of the goods, or if the Central Government believes it’s necessary for the public interest.

    (4) The provisions of section 23 of the General Clauses Act, 1897 shall apply to the issue of a notification under this section as they apply to the making of a rule or bye-law the making of which is subject to the condition of previous publication.

Notification under this section must follow the same procedures outlined in section 23 of the General Clauses Act, 1897.

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

Such a notification won’t apply to imported goods if the Customs Commissioner is satisfied that the goods are intended for re-export.

140. Power to require information of imported goods bearing false trade marks

    (1) The proprietor or a licensee of a registered trade mark may give notice in writing to the Collector of Customs to prohibit the importation of any goods if the import of the said goods constitute infringement under clause (c) of sub-section (6) of section 29.

The owner or licensee of a registered trademark can notify the Customs Collector to stop allowing import of goods which infringe on his trademark rights.

    (2) Where goods, which are prohibited to be imported into India by notification of the Central Government under clause (n) of sub-section (2) of section 11 of the Customs Act, 1962, for the protection of trade marks, and are liable to confiscation on importation under that Act, are imported into India, the Commissioner of Customs if, upon representation made to him, he has reason to believe that the trade mark complained of is used as a false trade mark, may require the importer of the goods, or his agent, to produce any documents in his possession relating to the goods and to furnish information as to the name and address of the person by whom the goods were consigned to India and the name and address of the person to whom the goods were sent in India.

If goods that are banned from import into India to protect trademarks are brought into the country, the Customs Commissioner can ask the importer to provide further details if he suspects the trademark is being used falsely.

    (3) The importer or his agent shall, within fourteen days, comply with the requirement as aforesaid, and if he fails to do so, he shall be punishable with fine which may extend to five hundred rupees.

The importer is liable to be penalized up to 500 Rupees on failing to provide this information within 14 days.

    (4) Any information obtained from the importer of the goods or his agent under this section may be communicated by the Commissioner of Customs to the registered proprietor or registered user of the trade mark which is alleged to have been used as a false trade mark.

The Customs Commissioner may share any such information received with the registered owner or user of the original trade mark.

141. Certificate of validity

If in any legal proceeding for rectification of the register before the High Court a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect, and if such a certificate is granted, then, in any subsequent legal proceeding in which the said validity comes into question the said proprietor on obtaining a final order or judgement in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgement for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.

If, in a legal case before the High Court, a decision is made in favor of the trade mark owner regarding the validity of the registration, the court may issue a certificate confirming this. In any future legal cases questioning the same validity, if the owner wins again, he will generally be entitled to full legal costs unless the court specifies otherwise.

142. Groundless threats of legal proceedings

    (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.

If someone threatens another person with legal action for trade mark infringement (whether or not the trade mark is actually registered), the person being threatened can file a lawsuit. He can seek a court declaration that the threats are unjustified, an injunction to stop the threats, and compensation for any damages caused. However, if the person making the threats can prove that the trade mark is registered and the alleged actions do constitute infringement, the lawsuit shall not succeed.

    (2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.

The previous rule (about unjustified threats) does not apply if the owner of the registered trade mark, or an authorized user, promptly takes legal action for trade mark infringement against the person who was threatened.

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

A lawyer or registered trade mark agent won’t be held liable under this rule for actions taken on behalf of a client.

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

A lawsuit about unjustified threats over a trade mark must be filed in a District or a higher Court.

143. Address for service

An address for service stated in an application or notice of opposition shall for the purposes of the application or notice of opposition be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.

The address provided in an application or notice of opposition will be used for sending all related documents.

144. Trade usages, etc., to be taken into consideration

In any proceeding relating to a trade mark, the Registrar or the High Court as the case may be shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons.

In trade mark proceedings, the Registrar or the High Court can accept evidence showing how the trade mark or similar marks and trade names are used by others.

145. Agents

Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is-

    (a) a legal practitioner, or

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

    (c) a person in the sole and regular employment of the principal.

For any action that needs to be performed before the Registrar (other than making an affidavit), the applicant can authorise:

  • A legal practitioner,
  • A registered trade marks agent, or
  • A person who is employed by him,

to represent him as long as the action is done according to the rules.

146. Marks registered by an agent or representative without authority

If an agent or a representative of the proprietor of a registered trade mark, without authority uses or attempts to register or registers the mark in his own name, the proprietor shall be entitled to oppose the registration applied for or secure its cancellation or rectification of the register so as to bring him as the registered proprietor of the said mark by assignment in his favour:

PROVIDED that such action shall be taken within three years of the registered proprietor of the trade mark becoming aware of the conduct of the agent or representative.

If an agent or representative uses or tries to register a trade mark without authorization, the true owner of the mark can oppose the registration or seek its cancellation. He can also correct the register to show thimself as the rightful owner if the mark is registered.

However, he must take action within three years of discovering the agent’s unauthorized conduct.

147. Indexes

There shall be kept under the direction and supervision of the Registrar-

    (a) an index of registered trade marks;

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

    (c) an index of the names of the proprietors of registered trade marks; and

    (d) an index of the names of registered users.

The Registrar will maintain several indexes, including:

  • A list of registered trade marks.
  • A list of trade marks with pending registration applications.
  • A list of names of trade mark owners.
  • A list of names of registered users.
148. Documents open to public inspection

    (1) Save as otherwise provided in sub-section (4) of section 49,-

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

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

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

        (d) the indexes mentioned in section 147; and

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

shall, subject to such conditions as may be prescribed, be open to public inspection at the Trade Marks Registry:

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

Certain documents at the Trade Marks Registry are open for public inspection, including:

  • The register and documents related to it.
  • Notices of opposition, counter-statements, affidavits, and documents from proceedings before the Registrar.
  • Regulations and applications related to those regulations.
  • Indexes of trade marks and registered users.
  • Any other documents specified by the Central Government.

If the register is maintained on a computer, inspection will be done via computer print-outs.

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

Anyone can apply to the Registrar and pay the required fee to get a certified copy of any entry in the register or related documents.

149. Reports of Registrar to be placed before Parliament

The Central Government shall cause to be placed before both Houses of Parliament once a year a report respecting the execution by or under the Registrar of this Act.

An annual report of the Registrar must be presented to both the houses of the Parliament by the Central Government.

150. Fees and surcharge

    (1) There shall be paid in respect of applications, international applications and registration and other matters under this Act such fees and surcharge as may be prescribed by the Central Government.

Fees and surcharges for applications, international applications, registrations, and other matters under this Act will be set by the Central Government.

    (2) Where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fees has been paid.

The Registrar will not perform an action if the required fee hasn’t been paid.

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

A document is not considered filed with the Trade Marks Registry until the required fee is paid.

151. Savings in respect of certain matters in Chapter XII

Nothing in Chapter XII shall-

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

    (b) entitle any person to refuse to make a complete discovery, or to answer any question or interrogatory in any suit or other proceeding, but such discovery or answer shall not be admissible in evidence against such person in any such prosecution for an offence under that Chapter or against clause (h) of section 112 of the Customs Act, 1962 relating to confiscation of goods under clause (d) of section 111 of that Act and notified by the Central Government under clause (n) of sub-section (2) of section 11 thereof for the protection of trade marks relating to import of goods, or

    (c) be construed so as to render liable to any prosecution or punishment any servant of a master resident in India who in good faith acts in obedience to the instructions of such master, and, on demand made by or on behalf of the prosecutor, has given full information as to his master and as to the instructions which he has received from his master.

Chapter XII does not:

  • Protect someone from legal action that could be taken against him.
  • Allow someone to refuse to provide complete information or answer questions in a legal case, though such information cannot be used against him in certain prosecutions or customs matters.
  • Make a servant liable for prosecution if he act in good faith following his master’s instructions, provided he give full information about his master and instructions when requested.
152. Declaration as to ownership of trade mark not registrable under the Registration Act, 1908

Notwithstanding anything contained in the Registration Act, 1908, no document declaring or purporting to declare the ownership or title of a person to a trade mark other than a registered trade mark shall be registered under that Act.

Any document claiming ownership of a mark unregistrable under the Registration Act, 1908 shall not be entered into the Register maintained under that Act.

153. Government to be bound

The provisions of this Act shall be binding on the Government.

The rules in this Act also apply to the Government

154. Special provisions relating to applications for registration from citizens of convention countries

    (1) With a view to the fulfilment of a treaty, convention or arrangement with any country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation outside India which affords to citizens of India similar privileges as granted to its own citizens, the Central Government may, by notification in the Official Gazette, declare such country or group of countries or union of countries or Inter-Governmental Organisation to be a convention country or group of countries or union of countries, or Inter-Governmental Organisations, as the case may be, for the purposes of this Act.

To honor international agreements with other countries or organizations, the Central Government can announce, through an official notice, which countries or organizations are recognized under this Act. This declaration means that citizens of these countries or members of these organizations will get similar rights as Indian citizens under this Act.

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

If someone applies to register a trade mark in a convention country or similar international organization, and then applies to register the same mark in India within six months, the Indian registration will be backdated to the date of the original application in the convention country. This means the Indian registration will be considered as if it happened on the same date as the initial application abroad.

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

If a trade mark is applied for in multiple convention countries or international organizations, the six-month period for applying in India starts from the date of the earliest application made in any of those countries or organizations.

    (4) Nothing in this Act shall entitle the proprietor of a trade to recover damages for infringement which took place prior to the date of application for registration under this Act.

The owner of a trade mark cannot claim damages for infringement that happened before the date of his application for registration.

155. Provision as to reciprocity

Where any country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation specified by the Central Government in this behalf by notification in the Official Gazette does not accord to citizens of India the same rights in respect of the registration and protection of trade marks as it accords to its own nationals, no national of such country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation, as the case may be, shall be entitled, either solely or jointly with any other person,-

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

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

    (c) to apply for registration or be registered as a registered user of a trade mark under section 49.

If a country or international group does not give Indian citizens the same trade mark registration and protection rights as it gives to its own nationals, then people from that country or group cannot:

  • Apply for or be registered as the owner of a trade mark,
  • Be registered as the assignee of a registered trade mark, or
  • Apply for or be registered as a registered user of a trade mark.
156. Power of Central Government to remove difficulties

    (1) If any difficulty arises in giving effect to the provisions of this Act, the Central Government may, by order published in the Official Gazette, make such provisions not inconsistent with the provisions of this Act as may appear to be necessary for removing the difficulty:

    PROVIDED that no order shall be made under this section after the expiry of five years from the commencement of this Act.

    (2) Every order made under this section shall, as soon as may be after it is made, be laid before each House of Parliament.

If there are issues in implementing this Act, the Central Government can issue orders to address these difficulties, as long as the orders align with the Act.

However, no such orders can be made more than five years after the Act starts.

Once made, these orders must be presented to both Houses of Parliament.

157. Power to make rules

    (1) The Central Government may, by notification in the Official Gazette and subject to the condition of previous publication, make rules to carry out the provisions of this Act.

The Central Government can create rules to implement this Act by publishing a notification in the Official Gazette, but must first make the rules available for public review.

    (2) In particular, and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:-

These rules can cover any or all of the following topics:

        (i) the matters to be included in the Register of Trade Marks under sub-section (1) of section 6, and the safeguards to be observed in the maintenance of records on computer floppies or diskettes or in any other electronic form under sub-section (2) of that section;

how to properly protect and manage records stored electronically, such as on computer disks and what details must be listed in the Register of Trade Marks

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

how to publish the alphabetical index that classifies goods and services

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

how the Registrar will announce a word as an international non-proprietary name

        (iv) the manner of making an application for dissolution of an association under sub-section (5) of section 16;

how to file an application for dissolution of an association

        (v) the manner of making an application for registration of a trade mark under sub-section (1) of section 18;

how to file an application registration of a trademark

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

how to advertise an application for trade mark registration and how to notify any corrections or changes to the application

        (vii) the manner of making an application and the fee payable for such application, giving notice under sub-section (1) and sending counter-statements under sub-section (2) and submission of evidence and the time therefor under sub-section (4) of section 21;

how to apply for a trade mark, the fee required, how to give notice, send counter-statements, and submit evidence, including the deadlines for each step

        (viii) the manner of giving a notice of opposition and the fee payable for such notice under sub-section (1) and sending counter-statement under sub-section (2) and submission of evidence and the time therefor under sub-section (4) of section 21;

how to apply for a trade mark, the fee for the application, how to give notice, send counter-statements, and submit evidence, including deadlines for these processes

        (ix) the forms of application for renewal and restoration the time within which such application is to be made and fee and surcharge if any payable with each application, under section 25 and the time within which the Registrar shall send a notice and the manner of such notice under sub-section (3) of that section;

the forms for renewing or restoring a trade mark, the deadlines for these applications, any applicable fees or surcharges, and how and when the Registrar must send a notice about these applications

        (ix-a) the time within which the international application is to be forwarded to the International Bureau and the manner of certifying the particulars by the Registrar under sub-section (4) of section 36D;

how soon the Registrar must send an international application to the International Bureau and how the Registrar should certify the details of the application

        (ix-b) the manner of keeping a record of particulars of an international registration under sub-section (1) of section 36E;

how to maintain records of details for international registrations

        (ix-c) the manner of informing the International Bureau under sub-section (2) of section 36E;

how to notify the International Bureau about international registrations

        (ix-d) the manner of advertising the international registration and the time within which the international registration shall be advertised under sub-section (3) of section 36E;

how to advertise international registrations and specify the timing for when this advertising must occur

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

how to submit statements of cases, as required by section 40

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

how the owner of a trademark should apply, as described in section 41

        (xii) the manner of making an application for assignment or transmission of a certification trade mark under section 43;

how to apply for transferring or assigning a certification trademark, as outlined in section 43

        (xiii) the manner of making an application to the Registrar to register title under sub-section (1) of section 45;

how to apply for registering a title under section 45(1)

        (xiii-a)the period within which the Registrar shall dispose of an application under sub-section (3) of section 45;

the time frame within which the Registrar must make a decision on an application under section 45(3)

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

how to submit an application and the deadline for doing so, as described in section 46(4)

        (xv) the manner of marking an application under sub-section (2) of section 47;

how to make an application under section 47(2)

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

how to submit an application, the required documents and evidence, and how to issue a notice, as described in section 49(1) and (3)

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

how to apply for something under section 50(1), issue a notice under section 50(2), cancel a registration under section 50(3)

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

how to make applications under section 57(1) and (2), give notice as required by section 57(4), serve a notice of rectification as specified in section 57(5)

        (xix) the manner of making an application under section 58;

how to make applications under section 58

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

how to apply for something under section 59, advertise that application, provide notice and handle objections to the application

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

how to advertise according to the rules specified in section 60

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

to any additional details or requirements that need to be included in the regulations as specified in section 63

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

        (xxiv) the manner of advertising an application under section 73;

how to make applications under section 73

        (xxv) the manner of making an application under section 77;

how to make applications under section 77

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

how much the Chairman, Vice-Chairman, and other Members get paid, along with their working conditions, as described in section 88

        (xxx) the procedure for investigation of misbehaviour or incapacity of the Chairman, Vice-Chairman and other Members under sub-section (3) of section 89;

the process for looking into cases where the Chairman, Vice-Chairman, or other Members are suspected of misbehaving or being unable to perform their duties, as outlined in section 89

        (xxxiii) the form in which and the particulars to be included in the application to the High Court under sub-section (1) of section 97;

the format and information that must be included in an application to the High Court under section 97

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

how to make applications for review under section 127(c)

        (xxxv) the time within which an application is to be made to the Registrar for exercising his discretionary power under section 128;

the deadline for submitting an application to the Registrar when requesting the exercise of discretionary power under section 128

        (xxxvi) the manner of making an application and the fee payable therefore under sub-section (1) of section 131;

how to apply and the fee required for making an application under section 131(1)

        (xxxvii) the manner of making an application under sub-section (1) and the period for withdrawal of such application under sub-section (2) of section 133;

how to submit an application under section 133 and the time allowed for withdrawing that application

        (xxxviii) the manner of authorising any person to act and the manner of registration as a trade mark agent under section 145;

how to authorize someone to act on behalf of another and how to register them as a trademark agent

        (xxxix) the conditions for inspection of documents under sub-section (1) and the fee payable for obtaining a certified copy of any entry in the register under sub-section (2) of section 148;

the rules for inspecting documents and the fees required to get a certified copy of any entry from the register

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

the fees and extra charges for making applications, registering trademarks, and other related tasks

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

any additional topics or details that need to be set out by regulations or rules

    (3) The power to make rules conferred by this section shall include the power to give retrospective effect in respect of the matters referred to in clause (xxix) and (xxxi) of sub-section (2) from a date not earlier than the date of commencement of this Act, but no retrospective effect shall be given to any such rule so as to prejudicially affect the interests of any person to whom sub-rule may be applicable.

The power to make rules includes the ability to apply some rules retroactively, but only from the start date of the Act. However, these rules cannot negatively impact anyone’s interests.

    (4) Every rule made by the Central Government under this Act shall be laid, as soon as may be after it is made, before each House of Parliament, while it is in session for a total period of thirty days which may be comprised in one session or in two or more successive sessions, and if, before the expiry of the session immediately following the session or the successive sessions aforesaid, both Houses agree in making any modification in the rule or both Houses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no effect, as the case may be; so however, that any such modification or annulment shall be without prejudice to the validity of anything previously done under that rule.

After the Central Government makes a rule, it must be presented to both Houses of Parliament within 30 days. If both Houses agree to change or reject the rule before the end of the next session, the rule will only be effective in its modified form or not at all. However, actions taken under the rule before any changes or rejection remain valid.

158. Amendments

The enactment specified in the Schedule shall be amended in the manner specified therein.

The laws listed in the Schedule will be changed according to the details provided in that Schedule.

159. Repeal and saving

    (1) The Trade and Merchandise Marks Act, 1958 is hereby repealed.

   This Act repeals the Trade and Merchandise Marks Act, 1958.

    (2) Without prejudice to the provisions 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 and Merchandise Marks Act, 1958 shall, if in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.

Any rules, registrations, or other actions from the Trade and Merchandise Marks Act, 1958 that were in effect when this Act started will continue to be valid and enforceable under this new Act, as if they were issued under it.

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

This Act applies to all trade mark registration applications and related proceedings that were ongoing when the Act started, as well as to any registrations granted as a result.

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

Even with the new Act in place, any legal cases related to trade marks that were already in court when the Act started can continue in the same court as if the new Act hadn’t been introduced.

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

Even with the new Act in place, any legal cases related to trade marks that were already in court when the Act started can continue in the same court as if the new Act hasn’t been introduced.

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

If using a registered trade mark wasn’t considered an infringement before this Act started, then continuing to use that mark won’t be considered an infringement under this Act either.

    PROVIDED that the registration of a defensive trade mark referred to in section 47 of the Trade and Merchandise Marks Act, 1958 shall cease to have effect on the date immediately after the expiry of five years of such commencement or after the expiry of the period for which it was registered or renewed, whichever is earlier.

A defensive trade mark registered under the old Trade and Merchandise Marks Act, 1958 will stop being valid either five years after the start of this Act or after its registration or renewal period ends, whichever comes first.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.

Trademark attorney in India

I, Mahesh Bhagnari, am the Managing Principal of the firm:

  • I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
  • I am licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
  • I am licensed to practice as a Trademark attorney in India with Registration № 10742.
  • I have more than twenty years of professional experience working in the field of Intellectual property.
Patent attorney in India

Contact Us

You can get in touch with us on address, emails and phone numbers given here.

Phone: +91.9860588440
email: info@bhagnari.com

You may make a phone call between 11:00 am and 11:00 pm India time.

Send all post and documents to the ULHASNAGAR office.

+91.9860588440

Call us now

info@bhagnari.com

Send us an email