The Trade Marks Act, 1999
Administered Ministry: Ministry of Commerce and Industry / Department of Promotion of Industry and Internal Trade
Section
Section 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 (9 of 1932).
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 (9 of 1932).
Section 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 1[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 associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.
(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, be deemed to be also use of any trade mark being a part thereof and registered in accordance with sub-section (1) of section 15 in the name of the same proprietor.
(3) Notwithstanding anything in section 32, the use of part of the registered trade mark in sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act.
(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, be deemed to be also use of any trade mark being a part thereof and registered in accordance with sub-section (1) of section 15 in the name of the same proprietor.
(3) Notwithstanding anything in section 32, the use of part of the registered trade mark in sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act.
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021).
Section 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.
(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.
(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.
Section 57 Power to cancel or vary registration and to rectify the register.
(1) On application made in the prescribed manner to the 1[High Court] or to the Registrar by any person aggrieved, the 2[Register 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.
(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 1[High Court] or to the Registrar, and the 2[Register 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.
(3) The 2[Register or the High Court, as the case may be,] 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.
(4) The 2[Register 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).
(5) Any order of the 1[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.
(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 1[High Court] or to the Registrar, and the 2[Register 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.
(3) The 2[Register or the High Court, as the case may be,] 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.
(4) The 2[Register 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).
(5) Any order of the 1[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.
1. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021).
2. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021).
2. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021).
Section 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.
(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.
(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.
(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.
Section 59 Alteration of registered trade marks.
(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of 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.
(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).
(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.
(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).
Section 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.
(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).
Provided that this sub-section, shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods or services and would not substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be brought to the notice of the registered proprietor of the trade mark affected and advertised in the prescribed 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).
Section 61 Special provisions for collective marks.
(1) The provisions of this Act shall apply to collective marks subject to the provisions contained in this Chapter.
(2) In relation to a collective mark the reference in clause (zb) of sub-section (1) of section 2 to distinguishing the goods or services of one person from those of others shall be construed as a reference to distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.
(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.
Section 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.
Section 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.
(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.
(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.
Section 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.
Section 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.
Section 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.
Section 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.
Section 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) 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.
Section 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.
(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.
Section 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.
Section 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 for the regulations to be deposited under section 74.
(2) Subject to the provisions of section 70, the provisions of sections 18, 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that references therein to acceptance of an application shall be construed as references to authorisation to proceed with an application.
(3) In dealing under the said provisions with an application under this section, the 1[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.
(2) Subject to the provisions of section 70, the provisions of sections 18, 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that references therein to acceptance of an application shall be construed as references to authorisation to proceed with an application.
(3) In dealing under the said provisions with an application under this section, the 1[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.
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021).
Section 72 Consideration of application for registration by 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.
(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.
(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.
(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.
Section 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.