The Trade Marks Act, 1999
Administered Ministry: Ministry of Commerce and Industry / Department of Promotion of Industry and Internal Trade
Section
Section 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 (52 of 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.
(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 (52 of 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.
Section 152 Declaration as to ownership of trade mark not registrable under the Registration Act, 1908.
Notwithstanding anything contained in the Registration Act, 1908 (16 of 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.
Section 153 Government to be bound.
The provisions of this Act shall be binding on the Government.
Section 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 Organisation, as the case may be, for the purposes of 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.
(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.
(4) Nothing in this Act shall entitle the proprietor of a trade mark to recover damages for infringement which took place prior to the date of application for registration 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.
(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.
(4) Nothing in this Act shall entitle the proprietor of a trade mark to recover damages for infringement which took place prior to the date of application for registration under this Act.
Section 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 InterGovernmental 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.
(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.
Section 156 Power of Central Government to remove difficulties. 1 docs
(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.
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.
Section 157 Power to make rules. 5 docs
(1) The Central Government may, by notification in the Official Gazette and subject to the conditions of previous publication, make rules to carry out the provisions of this Act.
(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:---
(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;
(ii) the manner of publication of alphabetical index of classification of goods and services under sub-section (1) of section 8;
(iii) the manner in which the Registrar may notify a word as an international non-proprietary name under section 13;
(iv) the manner of making an application for dissolution of an association under sub-section (5) of section 16;
(v) the manner of making an application for registration of a trade mark under sub-section (1) of section 18;
(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;
1[(vii) 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;]
(viii) the form of certificate of registration under sub-section (2), and the manner of giving notice to the applicant under sub-section (3) of section 23;
(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;
2[(ixa) 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;
(ixb) the manner of keeping a record of particulars of an international registration under sub-section (1) of section 36E;]
(ixc) the manner of informing the International Bureau under sub-section (2) of section 36E;
(ixd) 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;]
(x) the manner of submitting statement of cases under sub-section (2) of section 40;
(xi) the manner of making an application by the proprietor of a trade mark under section 41;
(xii) the manner of making an application for assignment or transmission of a certification trade mark under section 43;
(xiii) the manner of making an application to the Registrar to register title under sub-section (1) of section 45;
2[(xiiia) the period within which the Registrar shall dispose of an application under sub-section (3) of section 45;]
(xiv) the manner in which and the period within which an application is to be made under sub-section (4) of section 46;
(xv) the manner of making an application under sub-section (2) of section 47;
(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;
(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;
(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;
(xix) the manner of making an application 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;
(xxi) the manner of advertisement under sub-section (2) of section 60;
(xxii) the other matters to be specified in the regulations under sub-section (2) of 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;
(xxv) the manner of making an application under section 77;
3* * * * *
(xxix) the salaries and allowances payable to, and the other terms and conditions of service of, the 4[Chairperson], 5[Vice-Chairperson] and other Members under sub-section (1) of section 88;
(xxx) the procedure for investigation of misbehavior or incapacity of the 4[Chairperson], 5[Vice-Chairperson] and other Members under sub-section (3) of section 89;
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(xxxiii) the form in which and the particulars to be included in the application to the 7[High Court] under sub-section (1) of section 97;
8[(xxxiiia) the manner of holding inquiry and imposing penalty under Section 112A;
(xxxiiib) the form and manner of preferring appeal under sub-section (2) of Section 112B;]
(xxxiv) the manner of making an application for review under clause (c) of section 127;
(xxxv) the time within which an application is to be made to the Registrar for exercising his discretionary power under section 128;
(xxxvi) the manner of making an application and the fee payable therefor under sub-section (1) of section 131;
(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;
(xxxviii) the manner of authorising any person to act and the manner of registration as a trade mark agent under section 145;
(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;
(xl) the fees and surcharge payable for making applications and registration and other matters under section 150;
(xli) any other matter which is required to be or may be prescribed.
(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 clauses (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.
(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.
(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:---
(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;
(ii) the manner of publication of alphabetical index of classification of goods and services under sub-section (1) of section 8;
(iii) the manner in which the Registrar may notify a word as an international non-proprietary name under section 13;
(iv) the manner of making an application for dissolution of an association under sub-section (5) of section 16;
(v) the manner of making an application for registration of a trade mark under sub-section (1) of section 18;
(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;
1[(vii) 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;]
(viii) the form of certificate of registration under sub-section (2), and the manner of giving notice to the applicant under sub-section (3) of section 23;
(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;
2[(ixa) 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;
(ixb) the manner of keeping a record of particulars of an international registration under sub-section (1) of section 36E;]
(ixc) the manner of informing the International Bureau under sub-section (2) of section 36E;
(ixd) 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;]
(x) the manner of submitting statement of cases under sub-section (2) of section 40;
(xi) the manner of making an application by the proprietor of a trade mark under section 41;
(xii) the manner of making an application for assignment or transmission of a certification trade mark under section 43;
(xiii) the manner of making an application to the Registrar to register title under sub-section (1) of section 45;
2[(xiiia) the period within which the Registrar shall dispose of an application under sub-section (3) of section 45;]
(xiv) the manner in which and the period within which an application is to be made under sub-section (4) of section 46;
(xv) the manner of making an application under sub-section (2) of section 47;
(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;
(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;
(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;
(xix) the manner of making an application 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;
(xxi) the manner of advertisement under sub-section (2) of section 60;
(xxii) the other matters to be specified in the regulations under sub-section (2) of 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;
(xxv) the manner of making an application under section 77;
3* * * * *
(xxix) the salaries and allowances payable to, and the other terms and conditions of service of, the 4[Chairperson], 5[Vice-Chairperson] and other Members under sub-section (1) of section 88;
(xxx) the procedure for investigation of misbehavior or incapacity of the 4[Chairperson], 5[Vice-Chairperson] and other Members under sub-section (3) of section 89;
6*****
(xxxiii) the form in which and the particulars to be included in the application to the 7[High Court] under sub-section (1) of section 97;
8[(xxxiiia) the manner of holding inquiry and imposing penalty under Section 112A;
(xxxiiib) the form and manner of preferring appeal under sub-section (2) of Section 112B;]
(xxxiv) the manner of making an application for review under clause (c) of section 127;
(xxxv) the time within which an application is to be made to the Registrar for exercising his discretionary power under section 128;
(xxxvi) the manner of making an application and the fee payable therefor under sub-section (1) of section 131;
(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;
(xxxviii) the manner of authorising any person to act and the manner of registration as a trade mark agent under section 145;
(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;
(xl) the fees and surcharge payable for making applications and registration and other matters under section 150;
(xli) any other matter which is required to be or may be prescribed.
(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 clauses (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.
(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.
1. Subs. by Act 40 of 2010, s. 9, for clause (vii) (w.e.f. 8-7-2013).
2. Ins. by s. 9, ibid. (w.e.f. 8-7-2013).
3. Cls. (xxvi), (xxvii) and (xxviii) omitted by Act 40 of 2010, s. 9 (w.e.f. 8-7-2013).
4. Subs. by Act 7 of 2017, s. 161, for Chairman (w.e.f. 26-5-2017).
5. Subs. by s. 161, ibid., for Vice-Chairman (w.e.f. 26-5-2017).
6. Clauses (xxxi) and (xxxii) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021).
7.Subs. by s. 21, ibid., for Appellate Board (w.e.f. 4-4-2021).
8. Ins. by Act 18 of 2023, s. 2 and Schedule (w.e.f. 1-8-2024).
2. Ins. by s. 9, ibid. (w.e.f. 8-7-2013).
3. Cls. (xxvi), (xxvii) and (xxviii) omitted by Act 40 of 2010, s. 9 (w.e.f. 8-7-2013).
4. Subs. by Act 7 of 2017, s. 161, for Chairman (w.e.f. 26-5-2017).
5. Subs. by s. 161, ibid., for Vice-Chairman (w.e.f. 26-5-2017).
6. Clauses (xxxi) and (xxxii) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021).
7.Subs. by s. 21, ibid., for Appellate Board (w.e.f. 4-4-2021).
8. Ins. by Act 18 of 2023, s. 2 and Schedule (w.e.f. 1-8-2024).
Section 158 Amendments.
The enactment specified in the Schedule shall be amended in the manner specified therein.
Section 159 Repeal and savings.
(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1987), 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 (43 of 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.
(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.
(4) Subject to the provisions of section 100 and notwithstanding anything contained in any other provision 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.
(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.
(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:
Provided that the registration of a defensive trade mark referred to in section 47 of the Trade and Merchandise Marks Act, 1958 (43 of 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.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1987), 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 (43 of 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.
(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.
(4) Subject to the provisions of section 100 and notwithstanding anything contained in any other provision 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.
(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.
(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:
Provided that the registration of a defensive trade mark referred to in section 47 of the Trade and Merchandise Marks Act, 1958 (43 of 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.