The Trade Marks Act, 1999
Administered Ministry: Ministry of Commerce and Industry / Department of Promotion of Industry and Internal Trade
Section
Section 74 Filing of regulations governing 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.
(2) The regulations so filed may, on the application of the registered proprietor, be altered by the Registrar.
(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.
(2) The regulations so filed may, on the application of the registered proprietor, be altered by the Registrar.
(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.
Section 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.
Section 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--
(a) where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, or in relation to goods to be exported to any market or in relation to services for use or available for acceptance in any place, country or territory or in any other circumstances, to which having regard to any such limitations, the registration does not extend;
(b) the use of a certification trade mark in relation to goods or services certified by the proprietor of the mark if, as to those goods or services or a bulk of which they form part, the 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;
(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.
(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.
(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.
(a) where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, or in relation to goods to be exported to any market or in relation to services for use or available for acceptance in any place, country or territory or in any other circumstances, to which having regard to any such limitations, the registration does not extend;
(b) the use of a certification trade mark in relation to goods or services certified by the proprietor of the mark if, as to those goods or services or a bulk of which they form part, the 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;
(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.
(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.
(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.
Section 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 thinks fit for expunging or varying any entry in the register to a certification trade mark, or for varying the regulations, on any of the following grounds, namely:--
(a) that the proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services;
(b) that the proprietor has failed to observe any provisions of the regulations to be observed on his part;
(c) that it is no longer to the public advantage that the mark should remain registered;
(d) that it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.
(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.
Section 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.
(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.
Section 79 [Omitted.].
[79. Textile goods.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013).
Section 80 [Omitted.].
[80. Restriction on registration of textile goods.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013).
Section 81 [Omitted.].
[81. Stamping of piece goods, cotton yarn and thread.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013).
Section 82 [Omitted.].
[82. Determination of character of textile goods by sampling.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013).
Section 83 Establishment of Appellate Board.
Omitted by The Tribunal Reforms Act, 2021 (33 of 2021), s. 21 (w.e.f. 4-4-2021).
Section 84 Composition of Appellate Board.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 85 Qualifications for appointment as Chairperson, Vice-Chairperson, or other Members.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 86 Term of office of Chairperson, Vice-Chairperson and other Members.
Omitted by s. 21,ibid. (w.e.f. 4-4-2021).
Section 87 Vice-Chairperson or senior-most Member to act as Chairperson or discharge his functions in certain circumstances.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 88 Salaries, allowances and other terms and conditions of service of Chairperson, Vice-Chairperson and other Members.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 89 Resignation and removal.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 89A. Qualifications, terms and conditions of service of Chairperson, Vice-Chairperson and member.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 90 Staff of Appellate Board.
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Section 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 1[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.
(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 1[High Court] that he had sufficient cause for not preferring the appeal within the specified period.
(3) An appeal to the 1[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.
(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 1[High Court] that he had sufficient cause for not preferring the appeal within the specified period.
(3) An appeal to the 1[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.
1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021).
Section 92 Procedure and powers of Appellate Board.
Omitted by The Tribunal Reforms Act, 2021 (33 of 2021), s. 21 (w.e.f. 4-4-2021).