 clauses85  qualifications for appointment as chairman, vice-chairman or other members 86 term of office of chairman, vice-chairman and other members 87 vice-chairman or senior-most member to act as chairman or discharge his functions in certain circumstances 88 salaries, allowances and other terms and conditions of service of chairman, vice- chairman and other members 89 resignation and removal 90 staff of appellate board 9f appeals to appellate board 92 procedure and powers of appellate board 93 bar of jurisdiction of courts, etc 94 bar to appear before appellate board 95 conditions as to making of interim orders 96 power of chairman to transfer cases from one bench to another, 97 procedure for application for rectification, etc,, before appellate board 98 appearance of registrar in legal proceedings 99 costs of registrar in proceedings before appellate board 100 transfer of pending proceedings to appellate board  chapter xii offences, penaliies and proceduri101 meaning of applying trade marks and trade descriptions falsitying and falsely applying trade matks 102 penalty for applying false trade marks tadv descriptions, etc 103 penalty for seiling goods or providing services to which false trade mark or false 104 trade descripuion is applied 105 enhanced penalty on second or subsequent conviction penalty for removing piece goods, etc, contrary to section 81 106 penalty for falsely representing a trade mark as registered 107 108 penalty for improperly describing a place of business as connected with the trade marks office penalty for falsification of entries in the register 109 110 no offence in certain cases 111 forfeiture of goods 112,,exemption of certain persons employed in ordinary course of business 113 procedure where invalidity of registration is pleaded by the accused 114 offences by companies 115 cognizance of certain offences and the powers of police officer for search and seizure 116 evidence of origin of goods imported by sea  costs of defence or prosecution hi7  limitation of prosecution 118  information as to commission of offence 119  punishment of abetment in india of acts done out of india 120 121  instructions of central government as to permissible variation to be observed by criminal courts chapter xii miscellaneous clauses122 protection of action taken in good faith certain persons to be public servants 123 124, stay of proceedings where the validity of registration of the trade mark is questioned, etc 125 application for rectification of register to be made to appellate board in certain cases implied warranty on sale of marked goods 126 127 powers of registrar exercise of discretionary power by registrar 128 evidence before registrar 129 death of party to a proceeding 130 131 extension of time abandonment 132 preliminary advice by the registrar as to distinctiveness 133 suit for infringement, etc, to be instituted before district court 134 relief in suits for infringement or for passing off —_, 135 registered user to be impleaded in certain proceedings 136 137, evidence of entries in register, etc, and things done by the registrar registrar and other officers not compellable to produce register, etc 138 power to require goods to show indication of origin 139 140 power to require information of imported goods bearing false trade marks certificate of validity 141 groundless threats of legal proceedings 142, 143 address for service trade usages, etc, to be taken into consideration 144 agents 145 146 marks registered by an agent or representative without authority indexes 147, documents open to public inspection 148 reports of registrar to be placed before parliament 149 fees and surcharge 150 savings in respect of certain matters in chapter xii 151 declaration as to ownership of trade mark not registrable under the registration 152 act, 1908 government to be bound 153 154 special provisions relating to applications for registration from citizens of convention countries provision as to reciprocity 155 power of central government to remove difficulties 156 power to make rules 157 amendments 158 repeal and savings 159 the schedule bill no xxxiii of 1999 the trade marks bill, 1999 a billto amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks bz it enacted by parliament in the fiftieth year of the republic of india as follows:—  chapter i f preliminary1 (1) this act may be called the trade marks act, 1999 5 (2) it extends to the whole of india short title, extent and commencement (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 10 as areference to the coming into force of that provision 2, (1) in this act, unless the context otherwise requires,— definitions and interpretation(a) "appellate board" means the appellate board established under section 83; (b) "assignment" means an assignment in writing by act of the parties concerned; (c) "associated trade marks" means trade marks deemed to be, or required to be, registered as associated trade marks under this act; " (d) "bench" means a bench of the appellate board; (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 10 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; (f) "chairman" means the chairman of the appellate board; (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 15 9 of 1932 of the indian partnership act, 1932) which is the proprietor of the mark from those of others; (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;  20 s (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 (if) any alteration of a trade description as regards the goods or services 25 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 (iit) 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 30 (1v) 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 35 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 40 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 45use 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 carriyng 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; (j) "goods" means anything which is the subject of trade or manufacture; (k) "judicial member" means a member of the appellate board appointed as such under this act, and includes the chairman and the vice-chairman; (i) "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; 10 (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; (n) "member" means a judicial member or a technical member of the appellate board and includes the chairman and the vice-chairman; 15 (o) "name" includes any abbreviation of a name; (p) "notify" means to notify in the trade mark journal published by the registrar; (q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reef, frame, capsule, cap, lid, stopper 29 and cork; (r) "permitted use", in relation to a registered trade mark, means the use of trade mark— (i) by aregistered user of the trade mark in relation to goods or services (a) with which he is connected in the course of trade; and 25 (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  30 (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 35 (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; (s) "prescribed" means prescribed by rules made under this act; (t) "register" means the register of trade marks referred to in sub-section (1) of section 6; (u) "registered" (with its grammatical variations) means registered under this act;(v) "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; (w) "registered trade mark" means a trade mark which is actually on the register and remaining in force; (x) "registered user" means a person who is for the time being registered as such under section 49; (y) "registrar" means the registrar of trade marks referred to 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 10 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; 15 (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 20 of any goods, being "drug" as defined in the drugs and cosmetics act, 1940, 23 of 1940 37 of 1954 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 25 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 30 (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 35 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 40 for all or any of the said 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— 45(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 acf, 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; (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; 10 (zd) ''technical member'? means a member who is not a judicial member; (ze) "tribunal" means the registrar or, as the case may be, the appellate board, before which the proceeding concerned is pending; (2f) "vice-chairman" means a vice-chairman of the appellate board 15 (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; 20 (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 25 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; 30 (e) to the trade marks registry shall be construed as including a reference to any office of the trade marks registry 35 (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 servies and a person using the mark in relation to the first-mentioned goods or services (3) for the purposes of this act, goods and services are associated with each other 40 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 43 of 1958 (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 45  chapter ii the register and conditions for registrationappointment of registrar 50 3 (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 and other officersact (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 5 power of registrar to withdraw or transfer cases, etc, 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 10 the order of transfer, proceed with the matter either de novo or from the stage it was so transferred 43 of 1958trade marks registry and offices thereof 5 () 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 (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 (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 20 its functions (4) there shall be a seal of the trade marks registry the register of trade marks 6 (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 25 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 (2) notwithstanding anything contained in sub-section (/), it shall be lawful for the registrar to keep the records wholly or partly in computer floppies diskattes or in any 30 other electronic form subject to such safeguards as may be prescribed (3) where such register is maintained wholly or partly on computer under subsection (j) 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 _ 4) no notice of any trust, express or implied or constructive, shall be entered in 35 thé register and no such notice shall be receivable by the registrar (5) the register shall be kept under the control and management of the registrar 40 (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 (7) the register of trade marks, both part a and part b, existing at the commencement of this act, shall be incorporated in and form part of the register under this act classification of goods and 45 7 (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 services, of trade marks (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 publication of alphabetical 8 (1) the registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in section 7 index (2) where any goods or services are not specified in the alphabetical index of goods and services published under sub-section (/), the classification of goods or services 5 shall be determined by the registrar in accordance with sub-section (2) of section 7 9, (1) the trade marks— absolute grounds for (a) which are devoid of any distinctive character, that is to say, not capable refusal of of distinguishing the goods or services of one person from those of another person; registration (6) which consist exclusively of marks or indications which may serve in 10 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 cystomary in the current language or in the bona fide and established practices of is the trade, os 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 20 (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 obcene matter; 25 (a) its use is prohibited under the emblems and names (prevention of improper 12 of 1950 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 30 (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 / limitation as to colour 35 10 (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 (2) so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours 40 11 (j) save as provided in section 12, a trade mark shall not be registered if, because of - relative grounds for refusal of registration(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 45 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 (2) a trade mark which— (a) is identical with or similar to an earlier trade mark; and 50 (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 cause would take unfair advantage of or be detrimental to the distinctive character or repute of the 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 (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 10 in such case the registrar may register the mark under special circumstances under section 12 explanation—for the purposes of this section, earlier trade mark means— 15 (a) a registered trade mark 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 20 (5) a trade mark shall not be refused registration on the grounds specified in subsections (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 25 (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; 30 (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 35 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 40 (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; 45(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 (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 (9) the registrar shall not require as a condition, for determining whether a trade 5 mark is a well-known trade mark, the any of the following, namely:— (é) 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; 10 (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 file in, any jurisdiction other than india; or 15 (v) that the trade mark is well-known to the public at large in india (j0) 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; 20 (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark (11) where a trade mark has been registered in good faith disclosing the material informations to the registrar of where right to a trade mark has been acquired through use in good faith before the commencement of this act, then, nothing in this act shall 25 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 12 in the case of honest concurrent use or of other special circumstances which in registration in the case of honest concurrent use, ete the opinion of the registrar, make it proper so to do, he may permit the registration by 30 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 13 no word— ny prohibition of 35 (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 | registration    | of    ||-----------------|-------|| names           | of    || chemical        |       || elements        | or    || international   |       || non-proprietary |       || names,          |       |(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- 40 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 sufficiefit cause or an entry wrongly remaining on the register, as the circumstances may require 14 where an application is made for the registration of a trade mark which falsely 45 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 | use      | of          | names    ||----------|-------------|----------|| and      | representa- |          || tions    | of          | living   || persons  | or          |          || persons  |             |          || recently | dead       |          |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 15, (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 tradé marks  registration of parts of trade marks and of trade marks as aseries,(2) each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark (3) where a person claiming to be the proprietor of several trade marks in respect 10 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 relatidn to which they are respectively used or proposed to be used; or (b) statement of number, price, quality or names of places; or 15 (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 20 16 (j) 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 regisirar may, at any time, require that 25 the trade marks shall be entered on the register as associated trade marks (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  30 of that description and with those services or services of that description, sub-section (/) 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 (3) where a trade mark and any part thoreof are, in accordance with the provisions 35 of sub-section (/) 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 (4) all trade marks registered in accordance with the provisions of sub-section (3) 40 of section 15 as a series in one registration shall be deemed to be, and shall be 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 45in relation to any of the goods or services or both in respect of which it is registered, and may amend the register accordingly 17 (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 (2) notwithstanding anything contained in sub-section (/), when a trade mark— (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 10  chapter iii procedure for and duration of registration18 (/) any person claiming to be the proprietor of a trade mark used or proposed application tor registration 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 15 (2) asingle application may be made for registration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services (3) every application under sub-section (/) shall be filed in the office of the trade marks registry within whose territorial limits the principal place of business in india of 20 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: 25 provided 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 (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 30 (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 19, where, after the acceptance of an application for registration of a trade mark withdrawal of acceptance, but before its registration, the registrar is satisfied— 35 (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, 40 the registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted advertisement 20 (1) when an application for registration of a trade mark has been accepted of applicationwhether absolutely or subject to conditions or limitations, the registrar shail, as soon as may be after acceptance, cause the application as accepted together with the 45 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 (/) of section 9 and subsections (/) 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 (2) where— (a) an application has been advertised before acceptance under sub-section ();or (b) after advertisement of an application,— 10 (i) an error in the application has been corrected; or n (ii) the application has been permitted to be amended under section 22, 15 the registrar may in his discretion cause the applicativn 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 amendmént made in the application 21 (/) any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the registrar, on application made to him in 20 the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the registrar, of opposition to the registration 25 (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 counterstatement 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 (3) if the applicant sends such counter-statement, the registrar shall serve a copy thereof on the person giving notice of opposition 30 (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 35 (5) the registrar shall, after hearing the partics, 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 (6) where a person giving notice of opposition or an applicant sending a counterstatement 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 (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 4522 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 subsection (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 registration 23 (/) subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either— (a) the application has not been opposed and the time for notice of opposition has expired; or 10 (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 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 15 (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 (3) where registration of a trade mark is not completed within twelve months from 20 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 (4) the registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake 24 (1) save as provided in sub-section (2), nothing in this act shall authorise the jointly owned trade marks 25 registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof (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 30 (6) 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 trage mark vested in those persons as if those rights had been vested in a single person 35 25 (/) 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 + (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 40 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) 45 (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) (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 10 of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment ot 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 26 where a trade mark has been removed from the register for failure to pay the fee 15 effect of removal from register for failure to pay for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next alter the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal 1s satisfied either-— fee for renewal (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 20 (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  chapter iv efrect of registration25 27 (1) no person shall be entitled to institute any proceeding to prevent, or to recovet damages for, the infringement of an unregistered trade mark no action for infringement of unregistered trade mark (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 remedics in respect thereof 30 rights conferred by registration 28 (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 (2) the exclusive right to the use of a trade mark given under sub-section (/) shall 35 be subject to any conditions and limitations to which the registration is subject (3) where two or more persons are registered proprietors of trade marks, which ate 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 40 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 edch 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 45infringement of registered trade 29 (1) a registered tratle iark is infringed by a person wtio, not being a registered proprietot or a person using by way of permitted use, uses in the course of trade, a mark which is idetitical with, or deceptively similar to, the trade inark in relation to goods or services in respect of which the trade itiark is registered and in such masiner as to render the use of the mark likely to be taken as being used 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, uscs 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, 10 is likely to cause confusion on the part of the public, or which 1s likely to have 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 (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 idenucal 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 20 (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 (5) a registered trade miark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or pame of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the 25 trade mark is registered (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 30 for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or expotts goods under the mark; or (d) uses the registered trade mark on busiriess papers or in advertising 35 (7) a registered trade mark is infringed by a person who applics such registered trade mark to a material intended to be used for labelling of 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 thark was not duly authorised by the proprietot or a licensee (8) a registered trade matk is infringed by any advertising of that trade mark if such advertising— (a) takes urifair advantage of and is contraty 10 honest practices in industrial of commercidl matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark45 (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 limits on effect 30 (/) 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 of registered trade mark 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 (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 me 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 goads to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relatiun to services for use or available or acceptance in any place or country outside india or 20 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 proprictor or the registered user conforming to 25 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 {0 the permitted use has applied the mark, where 30 ,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 35 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 40 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 45 (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 50(b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent (4) sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particulai, where the condition of the goods, has been changed or impaired after they have been put on the market registration to 31 (/) 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 | be        | prima    ||-----------|----------|| evidence  | of       || validity |          |of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof; 10 (2) in all legal procecdings 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, 32 where a trade mark is registered in breach of sub-section (/) of section 9, it 15 | protection      | of      ||-----------------|---------|| registration    | on      || ground          | of      || distinctiveness |         || in              | certain |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 20 effect of acquiescence 33 (/) 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  (5) to oppose the use of the later trade mark in relation to the goods or services 25 in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith (2) where sub-section (/) applies, the proprictor 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 30 his later trade mark saving for vested rights 34, 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— 35 (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; 40 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 of the registration of the firstmentioned trade mark saving for use 45 | of          | name,    ||-------------|----------|| address     | or       || description | of       || goods       | or       || services   |          |35 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 36 (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 saving for words used as name or description of the trade mark contains or of which it consists as the name or description of an article or substance or service: provided that, if it is proved either— an article or substance or service (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 ; (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 clapsed and that the said word is the only practicable name or description of the article or substance, the provisions of sub-section (2) shall apply 15 (2) where the facts mentioned in clause (a) or clause (b) of the proviso to subsection (/) are proved with respect to any words, then,— 20 (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; (b) for the purposes of any other legal proceedings relating to the trade mark,— (é 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 25 (ii) if the trade mark contains such words and other matter, all such right of the proprietor to the use of such words, 30 in relation to the article or substance or to any goods of the same description, or to the service 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 subsection (/) first became well known and established or at the expiration of the period of two years mentioned in clause (b) of the said proviso  chapter v assignment and transmission35 37 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 | power      | of    ||------------|-------|| registered |       || proprietor | to    || assign     | and   |effectual receipts for any consideration for such assignment receipts assignability and transmissi- 40 38 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 | bility     | of    ||------------|-------|| registered | trade || marks,     |       |of those goods or services assignability and transmissi- 4539 an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned bility of unregistered trade marks 40 (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— restriction on assignment or transmission where multiple exclusive rights would be (a) same goods or services; created (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 10 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: 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 15 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 (2) the proprietor of a registered trade mark who proposes to assign it may submit 20 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 (/), and a certificate 25 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 subsection (/) 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 30 41 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— | restriction    | on        ||----------------|-----------|| assignment     | or        || transmission   |           || when           | exclusive || rights         | would     || created        | in        || different      | parts     |(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 of india35 in any place 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 40 (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, 45 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: 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 10 42 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 | conditions    | for    ||---------------|--------|| assignment    |        || otherwise     | than   |has been or is used, the assignment shall not take effect unless the assignee, not later than |           | in    | connection    ||-----------|-------|---------------|| with      | the   | good-         || willofa   |       |               || business |       |               || 15        |       |               |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 explanation—for the purposes of this section, an assignment of a trade mark of 20 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 25 (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 assignability and transmissi- 43 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 30 bility of cestification trade marks assignability and transmissibility or 44 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 trade marks registration of 45 (1) where a person becomes entitled by assignment or transmission to a registered 35 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 and on proof of title to his satisfaction, transmissions 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 the assignment or transmission to be entered on the register: 40 provided that 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 (2) except for the purpose of an application before the registrar under sub-section 45(1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (/), shall not be admitted in evidence by the registrar or the appellate board or any court in proof of title to the trade mark by assignment or transmission unless the registrar or the appellate board or the court, as the case may be, otherwise directs  chapter vi use of trade marks and registered users46 (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 5 ground only that it appears that the applicant does not use or propose to use the trade | proposed    | use    | of    ||-------------|--------|-------|| trade       | mark   | by    || company     | to     | be    || formed,     | etc   |       |mark if the registrar is satisfied that— 1 of 1956 (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 10 (b) the proprietor intends it to be used by a person, as a registered user after the registration of the trade mark (2) the provisions of section 47 shall have effect, in relation to a trade mark registered under the powers conferred by this sub-section, as if for the reference, in clause 15 (a) of sub-section (/) 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 (3) the tribunal may, in a case to which sub-section (/) applies, require thie 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 20 (4) where in a case to which sub-section (/) applies, a trade mark in respect of any goods or servicesis registered in the name of an applicant who, relies on intention to assign the trade mark to a company, then, unless within such period asymay 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 25 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 47 (1) aregistered trade mark may be taken off the register in respect of the goods removal from 30 or services in respect of which it is registered on application made in the prescribed manner to the registrar or the appellate board by any person aggrieved on the ground either— | register    | and    ||-------------|--------|| imposition  | of     || limitations | on     || ground      | of     || use        |        |_(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 35 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 40 (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: 45 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 tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (2) 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 (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 (/) are shown to 10 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 15 (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 tribunal is of opinion that he might properly be permitted so to register such a trade mark, 20 on application by that person in the prescribed manner to the appellate board or to the registrar, the tribunal 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 (3) an applicant shall not be entitled to rely for the purpose of clause (b) of subsection (/) 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 30 48 (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 35 (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 49 (1) where it is proposed that a person should be registered as a registered user registration as registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writting to the registrar in the prescribed manner, and every such application 40 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 45to the satisfication 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; 10 (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 (2) when the requirements of sub-section (/) have been complied with, the registrar shall register the proposed registered user in respect of the goods or services as to which 15 he is so satisfied (3) the registrar shali 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 20 (4) the registrar shall, if so requested by the applicant, take steps for securing that information given for the purposes of an application under this section (other than matters entered in the register) is not disclosed to rivals in trade 50 (/) 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 | power        | of    ||--------------|-------|| registrar    | for   || variation    | or    || cancellation | of    || registration | as    |25 registered userof 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 onthe 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; 30 (c) may be cancelled by the registrar on the application in writing in the prescribed manner of any person on any of the following grounds, namely:— (i) that the registered user has used the trade mark otherwise than in accordance with the agreement under clause (a) of sub-section (/) of section 49 or in such way as to cause or to be likely to cause, deception or confusion; 35 (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 40 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 preformance of which he is interested; (d) may be cancelled by the registrar on his own motion or on the application 45 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 (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 (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 10 power of 51 (1) the registrar may, at any time during the continuahce of the registration of cll for 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 (/) of section 49 continues to be in force relating to respect of 15 (2) if the registered proprietor fails to furnish the confirmation within one month as required under sub-section (/), 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 right of registered user 20 to take 52 (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 (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 25 53 a person referred to in sub-clause (ii) of clause (r) of sub-section (/) of section no right of permitted user 2 shall have no right to institute any proceeding for any infringement to take registered user not to have 54, nothing in this act shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof right of assignment or explanation i—the right of a registered user of a trade mark shall not be deemed to 30 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 35 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 uridergoes 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 40 firm explanation ii— for the purposes bf explanation i, "firm" has the same meaning 9 of 1932as in the indian partnership act, 1932 5s (1) where under the provisions of this act, use of a registered trade mark is required to be proved for any purpose, the tribunal 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 use of one of associated or substantially identical trade marks equivalent to use of another (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 (/) of section 15 in the name of the same proprietor 10 (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 56 (1) the application in india of trade mark to goods to be exported from india or use of trade " mark for export trade and use when form of  15 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 trade connection changes 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 20 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  @ chapter vii25  rectification and correction of the register§7 (1) on application made in the prescribed manner to the appellate board or to the registrar by any person aggrieved, the tribunal 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 30 (2) any person aggrieved by the absence or omission from the register of any entty, 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 appellate board or to the registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit 35 (3) the tribunal 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 tribunal, 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 (/) or sub-section (2) (5) any order of the appellate board 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 58 (1) the registrar may, on application made in the prescribed manner by the registered proprietor,— 45 (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 10 (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 alteration of 59 (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 15 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 20 (3) where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, ginless the application has already been advertised under sub-section (2) 25 60 (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: | adaptation     | of    ||----------------|-------|| entries        | in    || register       | to    || amended        | or    || substituted    |       || classification | of    || goods          | or    |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, 30 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 35 (2) aproposal 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 (/)  chapter viii collective marks61 (1) the provisions of this act shall apply to collective marks subject to the provisions contained in this chapter special provisions for collective marks 40(2) in relation to a collective mark the reference in clause (zb) of sub-section (/) 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 collective mark not to be misleading as 62 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 to character or significance a collective mark application to 63 (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 (/) shall specify the persons authorised | be          | accom-    ||-------------|-----------|| panied      | by        || regulations |           || governing   | use       |to use the mark, the conditions of membership of the association and, the conditions of 10 of collective marks use of the mark, including any sanctions against misuse and such other matters as may be prescribed 64, if it appears to the registrar that the requirements for registration are satisfied, | acceptance      | of    ||-----------------|-------|| application and |       || regulations     | by    || registrar,      |       |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 15 regulations to 65 the regulations referred to in sub-section (/) of section 63 shall be open to public inspection in the same way as the register as provided in section 148 be open to inspection 66 any amendment of regulations referred to in sub-section (/) of section 63 shall amendment of regulations not be effective unless the amended regulations are filed with the registrar, and accepted and published by him in accordance with section 64 20 67 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 infringement proceedings by registered proprietor of collective mark users 25 68 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 additional grounds for removal of registration of collective mark, a collective mark; or 30 4 (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 35 explanation 1i1—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  chapter ix certification trade marks40 69 the following provisions of this act shall not apply to certification trade marks, certain provisions of that is to say,— (a) clauses (a) and (c) of sub-section (/) of section 9; | this          | act    ||---------------|--------|| applicable    | to     || certification |        || trade         | marks |(b) section 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 45 section 56; (d) chapter xii, except section 107 registration of certification trade marks 70 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 applications 71 (1) an application for the registration of a mark as a certification trade mark § for registration of certification trade marks 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, (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 tribunal shall have regard to the like considerations, so far as relevant, as if the application 15 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 consideration 72 (1) the registrar shall consider the application made under section 71 with of application regard to the following matters, namely:— 20 (a) whether the applicant is competent to certify the goods in respect of which for registration by the registrar 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 25 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 30 or limitations, or to any amendments or modifications of the application of 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 (/) without 35 giving the applicant an opportunity of being heard 73, when an application has been accepted, the registrar shall, as soon as may be | opposition    | to     ||---------------|--------|| registration  | of     || certification |        || trade         | marks |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 4074, (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 | filing      | of    ||-------------|-------|| regulations |       || governing   | the   || use         | of    |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 45 certificate trade mark 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 50 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 | infringement    | of     ||-----------------|--------|| certification   |        || trade           | marks |75 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 respert of which it is registered, and in such manner as to render the use of the mark likely to'be taken as being 10 a use as a trade mark  76 (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 rade mark— | acts          | not    ||---------------|--------|| constituting  |        || infringement  | of     || certification |        || 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 15 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 20 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; 25 (¢) 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 30 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 (/) 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 35 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 45 77 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 50 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 5 78 (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 rights conferred by registration of certification trade marks (2) the exclusive right to the use of a certification trade mark given under sub-section (/) shall be subject to any conditions and limitations to which the registration 10 is subject  chapter x special provisions for textile goodstextile goods 79 the central government may prescribe classes of goods (in this chapter referred 15 to as textile goods) to the trade marks used in relation to which the provisions of this chapter shall apply; and subject to the said provisions, the other provisions of this act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods 80 (1) in respect of textile goods being piece goods— | restriction    | on     ||----------------|--------|| registration   | of     || textile        | goods |20 (a) no mark consisting of a line heading alone shall be registrable as a trade mark; (b) a line heading shall not be deemed to be capable of distinguishing; (c) the registration of trade mark shall not give any exclusive right to the use of a line heading 25 (2) in respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed stamping of piece goods, cotton yarn and 30 63 of 1948 81 (1) piece goods, such as are ordinarily sold by length or by the piece, which have been manufactured, bleached, dyed, printed or finished in premises which are a factory, as defined in the factories act, 1948, shall not be removed for sale from the last thread of such premises in which they underwent any of the said processes without having conspicuously stamped in international form of indian numerals on each piece the length thereof in standard yards, or in standard yards and a fraction of such a yard, or in standard metres or in standard metres and a fraction of such a metre, according to the real length 35 of the piece, and, except when the goods are sold from the factory for export from india, without being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in india of the piece, 40 (2) cotton yarn such as is ordinarily sold in bundles, and cotton thread, namely, sewing, darning, crochet or handicraft thread, which have been manufactured, bleached, dyed or finished in any premises not exempted by the rules made under section 82 shall not be removed for sale from those premises unless, in accordance with the said rules in the case of yarn— _ (a) the bundles are conspicuously marked with an indication of the weight of yarn in english or the metric system in each bundles; and 45(b) the count of the yarn contained in the bundles andin the case of thread each unit is conspicuously marked with the length or weight of thread in the unit and in such other manner as may be required by the said rules; and (c) except where the goods are sold from the premises for export from india, unless each bundle or unit is conspicuously marked with the name of the manufacturer or of the wholesale purchaser in india of the goods: provided that the rules made under section 82 shall exempt all premises where the work is done by members of one family with or without the assistance of not more than 5 tén other employees, and ali premises controlled by a co-operative society where not more than twenty workers are employed in the premises 82 (/) for the purposes of this act, the central government may make rules— determination of character of textile goods by sampling (a) to provide, with respect to any goods which purport or are alleged tobe of uniform number, quantity, measure, guage or weight, for the number of samples to 10 be selected and tested and for the selection of the samples; 15 (b) to provide, for the manner in which for the purposes of section 81 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dying or finishing of cotton yarn or cotton thread from the provisions of that section; and (c) declaring what classes of goods are included in the expression "piece goods such as are ordinarily sold by length or by the picce" for the purpose of section 81, of this act or clause (7) of sub-section (2) of section i of the customs s2 of 1962 769 act, 1962 (2) with respect to any goods for the selection and testing of samples of which provision is not made in any rules for the time being in force under sub-section (/), the court or officer of customs, as the case may be, having occasion to ascertain the number, quantity, measure, gauge or weight of the goods, shall, by order in writing, determine the number of samples to be selected and tested and the manner in which the samples are to 25 be selected (3) the average of the results of the testing in pursuance of rules under sub-section (/) or of an order under sub-section (2) shall be prima facie evidence of the number, quantity, measure, gauge or weight, as the case may be, of the goods 30 (4) if a person having any claim to, or in relation to, any goods of which samples have been selected and tested in pursuance of rules under sub-section (/), or of an order under sub-section (2), desires that any further samples of the goods be selected and tested, such further samples shall, on his written application and on the payment in advance by him to the court or officer of customs, as the case may be, of such sums for defraying the 35 cost of the further selection and testing as the court or officer may from time to time require, be selected and tested to such extent as may be permitted by rules made by the central government in this behalf or as, in the case of goods with respect to which provision is not made in such rules, the court or officer of customs may determine in the circumstances to be reasonable, the samples being selected in the manner prescribed under sub-section (/), or in sub-section (2), as the case may be 40 (5) the average of the results of the testing referred to in sub-section (3) and of the further testing under sub-section (4) shall be conclusive proof of the number, quantity, measure, gauge or weight, as the case may be, of the goods  chapter xi appellate boardestablishment 83 the central government shall, by notification in the official gazette, establish an appellate board to be known as the intellectual property appellate board to exercise of appellate boardthe jurisdiction, powers and authority conferred on it by or under this act 84 (1) the appellate board shall consist of a chairman, vice-chairman and such number of other members, as the central government may, deem fit and, subject to the | composition    ||----------------|| appellate      || board         |other provisions of this act, the jurisdiction, powers and authority of the appellate board may be exercised by benches thereof, (2) subject to the other provisions of this act, a bench shall consist of one judicial member and one technical member and shall sit at such place as the central government may, by notification in the official gazette, specify (3) notwithstanding anything contained in sub-section (2), the chairman— 10 (a) may, in addition to discharging the functions of the judicial member or technical member of the bench to which he is appointed, discharge the functions of the judicial member or, as the case may be, the technical member, of any other bench; (b) may transfer a member from one bench to another bench; 15 (c) may authorise the vice-chairman, the judicial member or the technical member appointed to one bench to discharge also the functions of the judicial member or the technical member, as the case may be, of another bench (4) where any benches are constituted, the central government may, from time to time, by notification, make provisions as to the distributian of the business of the appellate board amongst the benches and specify the matters which may be dealt with by each bench 20 (5) if any question arises as to whether any matter falls within the purview of the business allocated to a bench, the decison of the chairman shall be final explanation— for the removal of doubts, it is hereby declared that the expression "matter" includes an appeal under section 91 25 (6) if the members of a bench differ in opinion on any point, they shall state the point or points on which they differ, and make a reference to the chairman who shall either hear the point or points himself or refer the case for hearing on such point or points by one or more of the other members and such'point or points shall be decided according to the opinion of the majority of the members who have heard the case, including those who first heard it 30 qualifications 85 (1) a person shall not be qualified for appointment as the chairman unless he— for appointment (a) is, or has been, a judge of a high court; or as chairman, vice-chairman, (b) has, for at least two years, held the office of a vice-chairman or other members(2) a person shall not be qualified for appointment as the vice-chairman, unless he— 35 (a) has, for at least two years, held the office of a judicial member or a technical member; or (b) has been a member of the indian legal service and has held a post in grade i of that service or any higher post for at least five years 40 (3) a person shall not be qualified for appointment as a judicial member, unless he— (a) has been a member of the indian legal service and has held the post in grade i of that service for at least three years; or (b) has, for at least ten years, held a civil judicial office 45 (4) a person shall not be qualified for appointment as a technical member, unless he— (a) kas, for at least ten years, exercised functions of a tribunal under this act or under the trade and merchandise marks act, 1958, or both, and has held a post 43 of 1958 not lower than the post of a joint registrar for at least five years; or (b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law (5) subject to the provisions of sub-section (6), the chairman, vice-chairman and every other member shall be appointed by the president of india - (6) no appointment of'a person as the chairman shall be made except after consultation with the chief justice of india term of office 86 the chairman, vice-chairman or other members shall hold office as such for 10 a term of five years from the date on which he enters upon his office or until he attains, - | of            | chairman,    ||---------------|--------------|| vice-chairman |              || and           | other        || members      |              |(a) in the case of chairman and vice-chairman, the age of sixty-five years; and \ (b) in the case of a member, the age of sixty-two years, whichever is earlier 15 vice-chairman 87 (1) in the event of or any vacancy in the office of the chairman by reasons of or senior-most member to act his death, resignation or otherwise, the vice-chairman and in his absence the seniormost member shall act as chairman until the date on which a new chairman, appointed in accordance with the provisions of this act to fill such vacancy, enters,upon his office 20 as chairman or discharge his functions in certain circumstances, (2) when the chairman is unable to discharge his functions owing to his absence, illness or any other cause, the vice-chairman and in his absence the senior-most member shall discharge the functions of the chairman until the date on which the chairman resumes his duty salaries, allowances and 25 88 (/)the salaries and allowances payable to, and other terms and conditions of service (including pension, gratuity and other retirement benefits) of the chairman, vice- chairman and other members shall be such as may be prescribed | other         | terms    ||---------------|----------|| conditions    | of       || service       | of       || chairman,     |          || vice-chairman |          |(2) notwithstanding anything contained in sub-section (/), a person who, immediately before the date of assuming office as the chairman, vice-chairman or other member was in service of government, shall be deemed to have retired from service on the date on which he enters upon office as the chairman, vice-chairman or other member and other members 30 resignation and removal 89 (1) the chairman, vice-chairman or any other member may, by notice in writing under his hand addressed to the president of india, resign his office: provided that the chairman, vice-chairman or any other member shall, unless he 35 is permitted by the president of india to relinquish his-office sooner, continue to hold office until the expiry of three months from the date of receipt of such notice or until a person duly appointed as his successor enters upon his office or until the expiry of his term of office, whichever is earlier  40 (2) the chairman, vice-chairman or any other member shall not be removed from his office except by an order made by the president of india on the ground of proved misbehaviour or incapacity after an inquiry made by a judge of the supreme court in which the chairman, vice-chairman or other member had been informed of the charges against him and given a reasonable opportunity of being heard in respect of those charges 45(3) the central government may, by rules, regulate the procedure for the investigation of misbehaviour or incapacity of the chairman, vice-chairman or other member referred to in sub-section (2) staff of appellate board 90 (1) the central government shall determine the nature and categories of the officers and other employees required to assist the appellate board in the discharge of its functions and provide the appellate board with such officers and other employees as it may think fit (2) the salaries and allowances and conditions of service of the officers and other employees of the appellate board shall be such as may be prescribed (3) the officers and other employees of the appellate board shall discharge their functions under the general superintendence of the chairman in the manner as may be prescribed | appeals    ||------------|| appellate  || board     |91 (1) any person aggrieved by an order-er decision of the registrar under this act, or the rules made thereunder may prefer an appeal to the appellate board 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 10 (2) no appeal shall be admitted if it is preferred after the expiry of the period specified under sub-section (/): provided that an appeal may be admitted after the expiry of the period specified therefor, if the appellant satisfies the appellate board that he had sufficient cause for not preferring the appeal within the specified period (3) an appeal to the appellate board shall be in the prescribed form and shall be 15 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 5 of 1908 92 (1) the appellate board shall not be bound by the procedure laid down in the code of civil procedure, 1908 but shall be guided by principles of natural justice and subject to such provisions of this act and the rules made thereunder, the appellate board 20 | procedure    | and    ||--------------|--------|| powers       | of     || appellate    |        || board       |        |shall have powers to regulate its own procedure including the fixing of places and times of its hearing (2) the appellate board shall have, for the purpose of discharging its functions 5 of 1908 under this act, the same powers as are vested in a civil court under the code of civil procedure, 1908 while trying a suit in respect of the following matters, namely:— 25 (a) receiving evidence; (b) issuing commissions for examination of witnesses; (c) requisitioning any public record; and (d) any other matter which may be prescribed 30 45 of 1860 (3) any proceeding before the appellate board shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the indian penal code, and the appellate board shall be deemed to be a civil court for all the purposes of section 195 and chapter xxvi of the code of criminal procedure, 1973 ; 2of 1974 35 bar of jurisdiction of 93 no court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (/) of section 91 courts, etc 94, on ceasing to hold office, the chairman, vice-chairman or other members shall not appear before the appellate board or the registrar | bar        | to    ||------------|-------|| before     |       || appellate  |       || board     |       || conditions | as    |95 notwithstanding anything contained in any other provisions of this act or in any other law for the time being in force, no interim order (whether by way of injunction 40 to making of interim ordersor stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless— (a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to the party against whom such appeal is made or proposed to be made; and 45 (b) opportunity is given to such party to be heard in the matter | power    | of    ||----------|-------|| chairman | to    || transfer | cases || from     | one   |96 on the application of any of the parties and after notice to the parties, and after hearing such of them as he may desire to be heard, or on his own motion without such notice, the chairman may transfer any case pending before one bench, for disposal, to any other bench to another 97 (j) an application for rectification of the register made to the appellate board under section 57 shall be in such form as may be prescribed | procedure      | for    ||----------------|--------|| application    | for    || rectification, |        |(2) a certified copy of every order or judgment of the appellate board relating to | etc,     ||-----------|| appellate || board    |a registered trade mark under this act shall be communicated to the registrar by the board and the registrar shall give effect to the order of the board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order, 10 98 (1) the registrar shall have the right to appear and be heard— | appearance    | of           ||---------------|--------------|| registrar     | in           || legal         |              || proceedings  |              || (a)           | in           || sought        | includes     || relating      | to           || (6)           | in           || 15            |              || for           | registration || (i)           | which        || registrar     | or           || conditions    | or           || 20            |              || (ii)          | which        || appearance    | is           || and           | the          || 25            |              |(2) unless the appellate board 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 costs of reg- 30 99, in all proceedings under this act before the appellate board the costs of the registrar shall be in the discretion of the board, but the registrar shall not be ordered to pay the costs of any of the parties | istrar      | in        ||-------------|-----------|| proceedings |           || before      | appellate || board      |           |100 all cases of appeals against any order or decision of the registrar and all cases pertaining to rectification of register, pending before any high court, shall be transferred to the appellate board from the date as notified by the central government in 35 the official gazette and the appellate board may proceed with the matter either de novo | transfer    | of    ||-------------|-------|| pending     |       || proceedings | to    || appellate   |       || board,      |       |or from the stage it was so transferred  chapter xii offences, penalties and procedure101 (1) aperson shall be deemed to apply a trade mark or mark or trade description to goods or services who— | meaning       | of      ||---------------|---------|| applying      | trade   || marks         | and     || (a)           | applies || descriptions |         || (b)           | applies || for sale,     | or      |(c) places, encloses or annexes any goods which are sold, or exposed for 45sale, 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 (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 workedinto, or annexed or affixed to, 10 the goods or to any package or other thing 102 (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 15 (b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise (2) a person shall be deemed to falsely apply to goods or services a trade mark who, without the assent of the proprietor of the trade mark,— (a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods; 20 (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 25 (3) any trade mark falsified as mentioned in sub-section (/) or falsely applied as mentioned in sub-section (2), is in this act referred to as a false trade mark (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, 30 103 any person who— (a) falsifies any trade mark; or | penalty    | for    ||------------|--------|| applying   | false  || trade      | marks, |(b) falsely applies to goods or services any trade mark; or trade descriptions, etc(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 35 (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 40 (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 the things above-mentioned in this section to be done, 45 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 judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees penalty for selling goods or providing services to which false trade mark or 104 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,— 10 false trade description is applied (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 15 (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, 20 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 judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees 25 105 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 penalty on second or subsequent conviction 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: 30 provided that the court may, for adequate and special reason to be mentioned in the judgment, 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 106 if any person removes or attempts to remove or causes or attempts to cause to 35 penalty for removing piece be removed for sale from any premises referred to in section 81 or sells or exposes for | goods,    | etc,    ||-----------|----------|| contrary  | to       || section   | 81      |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 40 for the packing thereof shall be forfeited to government and such person shall be punishable with fine which may extend to one thousand rupees 107 (1) no person shall make any representation— penalty for (a) with respect to a mark, not being a registered trade mark, to the effect falsely representing a that it is a registered trade mark; or | trade       ||-------------|| registered || 45          |(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 or 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 (2) if any person contravenes any of the provisions of sub-section (/), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with 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 10 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 15 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 20 to that country or in relation to services for use in that country 108 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 25 | penalty       | for     | im-    ||---------------|---------|--------|| properly      | descri- |        || bing          | a       | place  || business      | as      |        || connected     | with    |        || the           | trade   | marks  || office       |         |        || penalty       | for     |        || falsification | of      |        |109 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 entries in the register 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 36 no offence in 110 the provisions of sections 102, 103, 104 and 105 shall, in relation to a registered certain cases 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 35 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 111 (j) where a person is convicted of an offence under section 103 or section 104 forfeiture of goodsor section 105 or is acquitted of an offence under section 103 or section 104 on proof that 40 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 45 (2) when a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also (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 (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 112 where a person accused of an offence under section 103 proves— exemption of certain persons employed in ordinary course 10 of business (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, 15 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 20 (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 113 (/) where the offence charged under section 103 or section 104 or section 105 25 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:-— (a) if the court is satisfied that such defence is prima facie tenable, it shall procedure where invalidity of registration is pleaded by the accused 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 appellate board under this act, for the rectification of 30 the register on the ground that the registration is invalid (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 35 (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 appellate board for rectification of the register, the court shall proceed with the case as if the registration were valid 40 (2) where before the institution of a complaint of an offence referred to in subsection (/), 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 tribunal, 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 45 in so'far as the complainant relies upon the registration of his mark 114 (7) if the person committing an offence under this act is a company, the company offences by companies - as well as every person in charge of, and responsible to, the company for the conduct of its 50business 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 (2) notwithstanding anything contained in sub-section (/), 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 10 explanation—for the purposes 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 115 (1) no court shall take cognizance of an offence under section 107 or section 15 cognizance of certain offences and the powers 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 (/) of section 107, a court of police officer for search and shall take cognizance of an offence on the basis of a certificate issued by the registrar to seizure 20 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 & (2) no court inferior to that of a metropolitan magistrate or judicial magistrate of the first class shall try an offence under this act (3) the offences under section 103 or section 104 or section 105 shall be cognizable 25 (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 so seized shall, as soon as practicable, be produced before a judicial magistrate of the first class or metropolitan magistrate, as the case may 30 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 35 (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 116 in the case of goods brought into india by sea, evidence of the port of shipment 40 shall, in a prosecution for an offence under this act or under clause (b) of section 112 of evidence of origin of goods imported by 52 of 1962 sea the customs act, 1962, relating to confiscation of goods under clause (d) of section ii! 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 45 117, in any prosecution under this act, the court may order such costs to be paid costs of defence or prosecutionby the accused to the complainant, or by the complainant to the accused, as the court deemed 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 | limitation    | of    ||---------------|-------|| prosecution  |       || 118          | no    || 112           | of    || 52            | 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 |      |            |         |    |     |            |       |      |    |    |    |      |      |    | information    | as          ||------|------------|---------|----|-----|------------|-------|------|----|----|----|------|------|----|----------------|-------------|| 119 | an         | officer | of | the | government | whose | duty | it | is | to | take | part | in | the            | enforcement || to   | commission |         |    |     |            |       |      |    |    |    |      |      |    |                |             || of   | offence   |         |    |     |            |       |      |    |    |    |      |      |    |                |             |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 10 punishment of abetment in india of acts done out of 120 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 is india is which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in india that place the act which he abetted 15 121 the central government may, by notification in the official gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight which are to be recognised by criminal courts as permissible in the case of any goods | instructions    | of      ||-----------------|---------|| central         | govern- || ment            | as      || permissible     |         || variation       | to      || observed        | by      || criminal        | courts, || 20              |         | chapter xiii miscellaneous122 no suit or other legal prceedings shall lie against any person in respect of protection of anything which is in good faith done or intended to be done in pursuance of this act | action    | taken    | in     ||-----------|----------|--------|| good      | faith   |        || certain   | persons  |        || 25        |          |        || to        | be       | public || servants |          |        |123 every person appointed under this act and every member of the appellate board shall be deemed to be a public servant within the meaning of section 2! of the indian penal code 45 of 1860 stay of 124, (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; where the validity of or registration of the trade mark 30 is questioned, etc (b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plantiff 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 appellate board, , 35 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 plantiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn,the case 40 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 appellate board for rectification of the register (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 (/) within the time specified therein or 45within '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 (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 (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' (5) the stay of a 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 10 an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit 125, (1) where in a suit for infringement of a registered trade mark the validity of application for rectification of the registration of the plaintiff's trade mark is questioned by the defendant or where in 15 | register    | to     ||-------------|--------|| made        | to     || appellate   |        || board       | in     || certain     | cases |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 appellate board and not to the registrar 20 (2) subject to the provisions of sub-section (/), 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 appellate board  25 implied warranty on 126 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, sale of marked goods 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 30 buyer  127 in all proceedings under this act before the registrar,— powers of 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 35 for the examination of witnesses; (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: 40 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; (c) the registrar may, on an application made in the prescribed manner, review his own decision 45 128 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 | exercise      | of    ||---------------|-------|| discretionary |       || power         | by    || registrar    |       |that person within the prescribed time) giving to the person an opportunity of being heard 50 evidence before 129 in any proceeding under this act before thé registrar, evidence shall be given by affidavit: registrar provided that the registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit death of party to a proceeding 130 if a person who is a party to a proceeding under this act (not being a proceeding before the appellate board or 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 10 in interest extension of time 131 (j) 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 15 to impose, extend the time and inform the parties accordingly (2) nothing in sub-section (/) shall be deemed to require the registrar to hear the parties before disposing of an application for extension of time, and n appeal shall lie from any order of the registrar under this section 20 abandonment 132 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 25 preliminary advice by the registrar as to 133 (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 matk appears to him prima facie to be distinctive distinctiveness (2) if, on an application for the registration of a trade mark as to which the registrar 30 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 134, (7) no suit— 35 suit for infringement, (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or etc, to be instituted before district court (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 plaintiff's trade mark, whether registered or unregistered, 40 shall be instituted in any court inferior to a district court having jurisdiction to try the suit 45 5 of 1908,(2) for the purpose of clauses (a) and (b) of sub-section (/), 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 syit 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 bustness or personally works for gain explanation—for the purposes of sub-section (2), "person" includes the registered proprietor and the registered user relief in suits 135 (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 for infringement or for passing off 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 infringing labels and marks for destruction or erasure (2) the order of injunction under sub-section (/) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:— (a) for discovery of documents; 10 (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 15 other pecuniary remedies which may be finally awarded to the plaintiff, (3) notwithstanding anything contained in sub-section (/), 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 n relation to a certification trade mark or collective mark; or of is i 20 (b) where in a suit for infringement the defendant satisfies the court— (2) 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 25 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 30 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 35 1) in every proceeding under chapter vii or under section 91, every registered 136 ( registered user to be impleaded in 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 certain proceedings (2) notwithstanding anything contained in any other law, a registered user so made 40 a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding evidence of entries in 45 137 (1) a copy of any entry in the register or of any document referred to in subsection (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 |            | register,    | etc,    ||------------|--------------|----------|| and        | things       | done     || by         | the          |          || registrar |              |          |(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 donc ¢  registrar and other officers138, 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 not compellable to produce register, etc 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 10 power to require goods to show indication of 139 (/) the central government may, by notification in the official gazette, require tnat 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 origin 15 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 (2) the notification may specify the mannef in which such indicationshall 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 10 say, whether on importation only, or also at the time of sale, whether by wholgsale or retail or both 201 (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 25 10 of 1897 (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, (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 satisified at the time of importation that they are intended for exportation whether after transhipment in or transit through india or otherwise 140 (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-scction (6) of section 29, 35 (2) where goods, which are prohibited to be imported into india by notification of power to require information of imported goods bearing false trade marks 52 of 1962 40 the central government under clause (1) 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 thé person to whom the goods were sent in india 45 (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 50(4) any information obtained from the importer of the goods or his agent under this section may be communicated by the comniissioner 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 certificate of validity, 141, if in any legal proceeding for rectification of the register before the appellate board a decision is on contest given in favour of the registered proprietor of the trade mark on the issye as to the validity of the registration of the trade mark, the appellate board 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 judgment in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client 10 groundless threats of legal proceedings 142 (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 15 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, 20 (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 (/) of section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark 25 (3) nothing in this section shall render a legal practitiorier 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 (4) a suit under sub-section (/) shall not be instituted in any court inferior to a district court 143 an address for service stated in an application or notice of opposition shall for 30 address for service 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 trade usages, 144, in any proceeding relating to a trade mark, the tribunal shall admit evidence 35 etc, to be taken into consi- of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons deration agents 145 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 40 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 45 marks registered by an agent or representative without authority146 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 147 there shall be kept under the direction and supervision of the registrar— (a) an index of registered trade marks, (6) 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 148 (/) save as otherwise provided in sub-section (4) of section 49,— documents open to public inspection 10 (a) the register and any document upon which any entry in the register is based; (@) 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; 15 (c) all regulations deposited under section 83 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; 20 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 pgrtly 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, (2) any person may, on an application to the registrar and on payment of such 25 fees as may be prescribed, obtain a certified copy of any entry in the register ¢ or any document referred to in sub-section (/) 149 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 |             | reports    | of    ||-------------|------------|-------|| registrar   | to         | be    || placed      | before     |       || parliament |            |       || 30          |            |       || fees        | and        |       || surcharge  |            |       |150 (1) there shall be paid in respect of applications and registration and other matters under this act such fees and surcharge as may be prescribed 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 fee has been paid 35 (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 151 nothing in chapter xii shall— (a) exempt any person from any suit or other proceeding which might, but savings in respect of certain matters for anything in that chapter, be brought against him, or in chapter xh 40 (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 45 section i11 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 dbedience 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 declaration as to ownership 152, 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 16 of 1908 mark other than a registered trade mark shall be registered under that act of trade mark not registrable under the registration act, 1908, 153 the provisions of this act shall be binding on the government government to be bound special provisions 10 154 (/) 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 relating to applications for registration from citizens of convention countries 15 countries of the 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 20 countries 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 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 25 or country which is a member of a group of countries or union of countries 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 group of countries or union of countries the period of six months referred to in the last preceding sub-section shall be reckoned from the date 30 on which the earlier or earlicst 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 155 where any country or country which is a member of a group of countries or provision as to reciprocity 35 union of countries 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 40 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  45 (c) to apply for registration or be registered as a registered user of a trade mark under section 49 - oy power of 156, (/) 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 central government to remove difficulties50 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 power to make 157, (1) the central government may, by notification in the official gazette and rules subject, to the condition 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- 10 section (j) 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 (/) 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; 20 (v) the manner of making an application for registration of a trade mark under sub-section (/) of section 18; (vi) the manner of advertising of an application for registration under subsection (/), and the manner of notifying corrections or amendments under subsection (2), of section 20; 25 (vii) the manner of making an application and the fee payable for such application giving notice under sub-section (/) and sending counter-statements under sub-section (2) and submission of evidence and the time therefor sulpsection (4) of section 2]; , 30 (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; (x) the manner of submitting statement of cases under sub-section (2) of section 35 40; (xi) the manner of making an application by the proprictor of a trade mark under section 41; (xii) the manner of making an application for assignment or transmission of 40 a certification trade mark under section 43; (xiii) the manner of making an application to the registrar to register title under sub-section (/) 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 marking an application under sub-section (2) of 45section 47; (xvi) the manner of making an application, documents and other evidence to accompany such application under sub-section (/) 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 (/), 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 (/) 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 (/), 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; 10 (xxi) the manner of advertisement under sub-secion (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 (/) of section 71; 15 (xxiv) the manner of advertising an application under section 73; (xxiv) the manner of making an application under section 77; (xxv) the classes of goods under section 79; (xxvi) the conditions and restrictions under sub-section (2) of section 80; 20 (xxvii) determination of character of textile goods by sampling under section 82; (xxix) the salaries and allowances payable and other terms and conditions of service of the chairman, vice-chairman and other members under sub-section (/) of section 88; 25 (xxx) the procedure for investigation of misbehaviour or incapacity of the chairman, vice-chairman and other members under sub-section (3) of section 89; (xxxi) the salaries and allowances and other conditions of service of the officers and other employees of the appellate board under sub-section (2) and the manner in which the officers and other employees of the appellate board shall discharge their functions under sub-section (3) of section 90; 30 (xxxii) the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of section 91; (xxxiii) the form in which and the particulars to be included in the application to the appellate board under sub-section (/) of section 97; 35 (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 therefore under sub-section (/) of section 131; (xxxvii) the manner of making an application under sub-section (/) 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 (/) and 45 the fee payable for obtaining a certified copy of any entry in the register under subsection (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 (xix) 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 19 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, 15 that any such modification or annulment shall be without prejudice to the validity of anything previously done under that rule amendments 158 the enactment specified in the schedule shall be amended in the manner specified therein 159, (1) the trade and merchandise marks act, 1958 is hereby repealed 20 43 of 1958 repeal and savings (2) without prejudice to the provisions contained in the general clauses act, 1897, —_10 of 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 25 4 43 of 1958 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 30 (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 35 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 40 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 shall cease to have effect on the date 43 of 1958 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 45 the schedule (see section 158) amendments| year        | act no     ||-------------|-------------|| short       | title       || amendment   |             || 1956        |             || the         | companies   || act,        | 1956        || (i          | in          || sections    | shall       || "(2)        | without     || power,      | a           || resembles,— |             || 10          |             || (i)         | the         || been        | previously  || (ii)        | a           || is          | subject     || any         | other       || 1999,       |             || 15          |             || may         | be          || government  | within      || (3)         | the         || as          | undesirable || consult     | the         || 20          |             || (id         | in          || (i)         | for         || and         | ending      || company—-"  | the         || namely:—    |             || 25          |             || "if,        | through     || its         | first       || name,       | is          || 30          |             || (i)         | in          || identical   | with,       || name        | by          || been        | previously  || act         | or          || mentioned   | company,    || (ii)        | on'an       || 35          |             || 40          |             || a           | trade       || government  | identical   || resembles,  | a           || proprietor  | under       || such        | company,"   || (ii)        | the         || "provided   | that        || 45          |             || by          | a           || years       | of          || company     | shall       || government | "          | statement of objects and reasonsthe trade and merchandise marks act, 1958 has served its purpose over the last four decades it was felt that a comprehensive review of the existing law be made in view of developments in trading and commercial practices, increasing globalisation of trade and industry, the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management systems and to give effect to important judicial decisions to achieve these purposes, the present bill proposes to incorporate, inter alia the fofowing, namely:— (a) providing for registration of trade mark for services, in addition to goods; (b) registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11 consequently, the provisions for defensive registration of trade marks are proposed to be omitted; (c) amplification of factors to be considered for defiring a well-known mark; (d) doing away with the system of maintaining registration of trade marks in part a and part b with different legal rights, and to provide only a single register with simplified procedure for registration and with equal rights; (e) simplifying the procedure for registration of registered user and enlarging the scope of permitted use; (f) providing for registration of "collective marks" owned by associations, etc; (g) providing an appellate board for speedy disposal of appeals and rectification applications which at present lie before high court; (h) transferring the final authority relating to registration of certification trade marks to the registrar instead of the central government; (i) providing enhanced punishment for the offences relating to trade marks on par with the present copyright act, 1957, to prevent the sale of spurious goods; (j) prohibiting use of some one else's trade marks as part of corporate names, or name of business concern; (k) extension of application of convention country to include countries which are members of group or union of countries and inter-governmental organisations; (1) incorporating other provisions, like amending the definition of "trade marks", provisions for filing a single application for registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of courts to bring the law in this respect on par with the copyright law, amplifying the powers of the court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure 2 in view of the extensive amendments necessitated in the trade and merchandise marks act, 1958, it has been thought fit to repeal and re-enact the said act incorporating the necessary changes 3 the bill seeks to achieve the above/ objects the notes on clauses explain the various provisions of the bill new delhi; murasoli maran the 19th november, 1999  notes on clausesclause 1—this clause provides for appointment of different dates for commencement of different provisions of the act, because some of the provisions in the bill, like extending the registration of trade marks to services, and setting up of appellate board are new and necessary mechanism will have to be provided and therefore adequate steps will have to be taken for administering these provisions, which may take some time necessary proviso is, therefore, proposed to be added to sub-clause (3) for this purpose clause 2—-this clause contains definitions and interpretations while some new definitions have been added, some of the definitions existing in the trade and merchandise marks act, 1958 have been made comprehensive and amplified the new definitions which have been added are "appellate board", "bench", "chairman", "judicial member", "technical member", "vice-chairman", "collective mark", "member", "notify", "services" "well-known trade mark" with the proposal for establishment of an appellate board for considering appeals against the orders/decisions of the registrar, the term "appellate board" along with related expressions of "bench", "chairman", "judicial member", "technical member", "vice-chairman" and "member" have been included in the definitions the provision for registration of "collective marks" is new and suitable definition has been included for the purpose the expression "services" has been defined, as the bill envisages registration of trade mark not only for "goods" but also for "services" which will include within its scope service relating to advertising and business, insurance and finance, construction and repair, transport and storage, material treatment, boarding and lodging, education and entertainment the existing definition of the expression "certification trade mark" has been modified to include services the definition of "mark" has been enlarged to include the shape of goods, packaging and combination of colours the definition of "permitted use" has been amplified to cover use both by the registered user and the licensee, as the latter becomes entitled to use the mark by virtue of the agreement with the registered proprietor the definition of "trade mark" has also been enlarged to mean a mark capable of being represented graphically and to include shape of goods, their packaging and combination of colours and covers both goods and services the definition of " tribunal" has been modified to include "appellate board" in place of "high court" the definition of "registered trade mark" has been modified to mean a trade mark which is actually on the register and remaining in force the existing definition of "high court" is proposed to be deleted consequent to the proposal to constitute appellate board in lieu of high court, for appeals a new sub-clause (3) is proposed to be added to clarify that goods and services may be associated with each other, if it is likely that those goods may be sold or otherwise traded in and those services may be provided by the same business sub-clause (4) seeks to define the term "the existing registered trade mark" to mean a trade mark registered under the trade and merchandise marks act, 1958 immediately before the commencement of this act clause 3—this clause corresponds to section 4 of the trade and merchandise marks act, 1958 and provides for appointment of the registrar and other officers clause 4—this clause seeks to empower the registrar to withdraw any matter pending before an officer and deal with such matter himself or transfer the same to another officer for reasons to be recorded therein this provision broadly corresponds to subsection (4) of section 73 of the patents act, 1970 the purpose of this is to ensure better management of the work in the trade marks registry and in administration of the act clause 5—this clause deals with the establishment of the trade marks registry and branch offices and corresponds to section 5 of the trade and merchandise marks act, 1958 this clause provides that the trade marks registry established under the trade and merchandise marks act, 1958 shall continue to be the trade marks registry for the purposes of this act clause 6—this clause contains provisions regarding maintenance of a single register of trade marks (in lieu of existing part a and part b register) at head office wherein particulars of registered tradg marks and other prescribed particulars, except notice of trust, shall be recorded a copy of the register is to be kept at each branch office subclause (2) contains provisions for maintenance of records in computer floppies or diskettes or in any other electronic form subject to such safeguards as may be prescribed by rules subject to this, this clause is in line with section 6 of the existing act clause 7—this clause provides for classification of goods and services which shall, as far as possible, conform to the recognised international classification of goods and services clause 8—this clause provides for the publication of an alphabetical index of classification of goods and services this is a new provision clause 9—section 9 of the trade and merchandise marks act, 1958 is proposed to be replaced by a comprehensive new provision consequent to the proposed amendments of— (a) definition of "trade mark" to mean inter alia a mark capable of distinguishing the goods or services of one person from those of others, and (b) to have only a single register (with no part a or part b) sub-clause (1) stipulates what constitutes absolute grounds for refusal of registration it is proposed to explicitly stipulate that the marks which are devoid of any distinctive character or which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, etc, or trade marks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade shall not be registered, unless it is shown that the mark has in fact acquired a distinctive character as a result of use before the date of application in short, a trade mark which has been demonstrated to be distinctive in the market place shall be regarded as distinctive in law as well and be registerable this will help in overcoming the difficulties faced by the applicants at present in registration of trade marks, ¢g, which are based on geographical names or laudatory epithets, but which have in fact acquired distinctiveness by reason of use sub-clause (2) contains provisions similar to what are at present contained in section 11 of the trade and merchandise marks act, 1958 but with minor additional of reference to the emblems and names (prevention of improper) use act, 1950 to make the law selfcontained sub-clause (3) prohibits registration of a mark, if it consists exclusively of shape of goods which result from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods clause 10—this clause corresponds to section 10 of the trade and merchandise marks act, 1958 with the consequent modification relating to combination of colours clause 11—with the transfer of some of the provisions contained in existing section 11 of the trade and merchandise marks act, 1958, to sub-clause (2) of clause 9, clause 11 has been recast to lay down the relative grounds for refusal of registration sub-clause (1) has been recast on the lines of sub-section (1) of section 12 of the existing act making the grounds of refusal more specific and explicit so as to provide that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trade mark or similarity of govds or services, the trade mark shal! not be registered it is proposed that the registration of a mark which is merely reproduction or imitation of well-known mark should not be allowed accordingly, sub-clause (2) seeks to provide that where the goods or services are not similar and the use of trade mark identical with or similar to an earlier trade mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark, shall not be registeredsub-clause (3) lays down that a trade mark shall not be registered, if or to the extent that, its use will be prevented by law of passing off or under the law of copyright however, sub-clause (4) permits registration where the proprietor consents to such registration the explanation proposed in this section defines the term "earlier trade mark" to mean (a) a registered trade mark or a convention application (clause 154) which has a date of application earlier than the trade mark in question, or (b) a trade mark, which on the date of application or on the date of priority claimed is entitled to protection as a well-known trade mark sub-clause (5) lays down that the trade mark shall not be refused registration on the ground specified in sub-clauses (2) and (3) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark this will put the burden of proof in this respect on the opponent opposing the registration on the grounds specified therein sub-clause (6) lays down the factors which the registrar shall take into account in determining whether a trade mark is a well-known trade mark or not sub-clause (7) lays down the facts to be taken into account to determine whether a trade mark is known or recognised to the relevant section of the public sub-clause (8) provide that a trade mark needs to be well known in at least one relevant section of the public sub-clause (9) lays down the factors that shall be excluded in determining whether a trade mark is wellknown trade mark or not sub-clause (10) provides that in an opposition proceeding the registrar shall protect a well-known trade mark against identical or similar trade marks and take into consideration the bad faith of either the applicant or the opponent affecting the rights relating to the trade mark sub-clause (11) protects prior use or registration in good faith of an identical or similar trade mark against a well-known trade mark clause 12—this clause provides for registration of same or similar trade mark by more than one proprietor in the case of honest concurrent use or other special circumstances this clause substantially corresponds to sub-section (3) of section 12 of the existing trade and merchandise marks act, 1958 with additional provision relating to services clause 13—this clause corresponds to section 13 of the existing act with the additional provision that international non-proprietory names declared by world health organisation from time to time or deceptivety similar names shall not be registered as trade marks clause 14—this clause, which deals with use of names and representations of living persons or persons recently dead, is identical with the provisions contained in section 14 of the existing trade and merchandise marks act, 1958 clause 15—this clause provides for registration of parts of trade marks and of trade marks as a series subject to certain conditions enumerated therein this corresponds to section 15 of the existing act, except consequential amendments to cover services clause 16—this clause deals with association of trade marks, sub-clause (1) is reproduction of sub-section (1) of section 16 of the trade and merchandise marks act, 1958 except the amendment relating to services sub-clause (2) is consequential to the introduction of new provision for association of goods and services proposed in clause 2(3) sub-clauses (3), (4) and (5) correspond to sub-sections (2), (3) and (4) of section 16 of the trade and merchandise marks act, 1958 clause 17—this clause which deals with the effect of registration of parts of a mark seeks to omit the provision relating to requirement of disclaimer and to explicitly state the general proposition that the registration of a trade mark confers exclusive right to the use of the trade mark taken as a whole and not separately to each of its constituent parts, if any clause 18—this clause deals with the procedure for making an application for registiation at present separate applications are required to be made if the applicants desire to register a trade mark in more than one class sub-clause (2) has been amended to permit registration in several classes of goods or services by means of a single application however, the fee payable is to be calculated on the basis of the number of classes in which registration is sought in other respects, the clause corresponds to existing section 18 of the trade and merchandise marks act, 1958clause 19—this clause provides for withdrawal of acceptance of an application, before its registration, when the acceptance is in error, etc, after hearing the applicant this provision is the same as in the corresponding section 19 of the trade and merchandise marks act, 1958 clause 20—this clause provides for advertisement of an application, either after acceptance or before acceptance, so as to afford the public an opportunity to oppose the registration of the mark the provision follows section 20 of the trade and merchandise marks act, 1958 clause 21—this clause deals with the procedure for opposition to registration of a trade mark this is substantial reproduction of the provisions contained in sections 21 and 22(b) of the trade and merchandise marks act, 1958 sub-clause (6) provides for payment of security for costs in the case of persons who do not reside or carry on business in india clause 22—this clause which corresponds to section 22 of the existing act, provides for correction of any error in or in connection with the application or amendment of the application either before or after acceptance of the application clause 23—this clause makes it mandatory on the registrar to register the trade mark where the procedure for registration of a trade mark has been completed viz, the application has been accepted and either the application has not been opposed or the opposition has been dismissed the reference to part a and part b has been omitted, which is consequential in other respects, this clause corresponds to section 23 of the existing act clause 24—this clause provides for registration of jointly owned trade marks where the mark is used or proposed to be used in relation to goods or services connected with all the joint applicants this clause reproduces the provisions contained in section 24 of the existing act and is also extended to services, which is consequential clause 25—the duration of registration is proposed to be increased from 7 to 10 years this is in keeping with the generally accepted international practice and to reduce the work-load of the trade marks office sub-clause (2) provides for renewal of registration sub-clause (3) provides for removal and restoration of registration consequent to the provision proposed in sub-clause (1) of clause 25, renewal of registration is permissible for successive periods of 10 years, from the date of the original registration or the last renewal to facilitate renewal of registration, sub-clause (4) provides for a grace period of six months for payment of renewal fee after expiry of registration, subject to payment of the prescribed surcharge sub-clause (5) provides for restoration of the trade mark to the register within one year in case it is not renewed even within the grace period of six months and the mark is removed in other respects, the provision retains the provisions contained in section 25 of the existing act clause 26—this clause states that where a trade mark has been removed from the register for failure to pay the renewal fee, 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 this corresponds in entirely to the provision contained in section 26 of the existing act ' clause 27—this clause provides that no infringement action will jie in respect of an unregistered trade mark, but recognises the common law rights of the trade mark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof the clause thus retains the existing provision of section 27 in this respect, with the addition of servicesclause 28—this clause deals with the exclusive rights conferred by registration this corresponds to the existing section 28 of the trade and merchandise marks act, 1958 this right has now been extended to include services also clause 29—this clause deals with infringement of trade marks and explicitly states as to the various acts which constitute infringement sub-clause (1) states the general proposition of the law in this respect and lays down that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement in pursuance of the relative grounds for refusal of registration specified in clause 11, the scope of this clause has been enlarged to explicitly state that a registered trade mark is infringed, if— ' (a) the mark is identical and is used in respect of similar goods or services; or (b) the mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or (c) the trade mark is identical and is used in relation to identical poods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark this clause further lays down that in cases falling in category (c) above, there will be a legal presumption of likelihood of confusion on the part of the public sub-clause (4) seeks to lay down that a registered trade mark is infringed by a person, if he uses a mark which is identical or similar to the trade mark, but on goods or services which are not similar, provided the registered trade mark has a reputation in india and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark sub-clause (5) seeks to prevent a person from adopting someone else's trade mark as part of that person's trade name or business name by explicitly providing: that such action shall also constitute an infringement under this act this provision will bring this clause in harmony with the proposed amendments to sections 20 and 22 of the companies act, 1956 sub-clause (6) lays down the circumstances when a person is considered to use a registered trade mark for the purpose of this clause it includes inter alia affixing the mark to goods or packaging, offering or exposing the goods for sale or supply of services, importing or exporting the goods, the use of the mark as trade name or trade mark on' business paper or in advertising sub-clause (7) provides that where a person applies a registered trade mark under certain circumstances knowing that application of such mark was not authorised by the proprietor or licensee would be an infringing act of a registered mark sub-clause (8) stipulates the circumstances when an advertising of a registered trade mark would constitute infringement advertising of a trade mark to take unfair advantage of, or against the honest commercial practices or-which is detrimental to the distinctive character or which is against the reputation of the trade mark shall constitute an infringement sub-clause (9) stipulates that where the distinctive element of a registered trade mark consists of words, the spoken use of such words as well as visual representation for promoting the sale of 'goods or promotion of service would constitute infringement clause 30—clause 30 specifically excludes certain acts as not constituting infringement and broadly corresponds to section 30 of the existing act the law is proposed to be amplified by explicitly stating that there will be no infringement, if the use of a mark is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of a trade mark there is no infringement in the following cases:— (1) where the use is in relation to goods or services to indicate the kind, quality, quantity, etc, of the goods or of réndering of services (2) use of the trade mark in a manner outside the scope of registration where a trade mark is registered subject to conditions or limitations (3) where a person uses the mark in relation to goods or services for which the registered owner had once applied the mark, and had not subsequently removed it or impliedly consented to its use (4a trade mark registered for any goods may be used in relation to parts and accessories to other goods, or services and such use is reasonably necessary and its effect if not likely to deceive as to the origin (5) the use of a registered trade mark being one of two or more registered trade marks which are identical or similar, in exercise of the right to the use of that registered trade mark sub-clauses (3) and (4) recognise the principle of "exhausion of rights" by preventing the trade mark owner from prohibiting on ground of trade mark rights, the marketing of © goods in any geographical area, once the goods under the registered trade mark are lawfully acquired by a person however, when the conditions of goods are changed or impaired after they have been put on the market, the provision will not apply clause 31—this clause states that registration including subsequent assignment and transmission, is prima facie evidence of validity this corresponds to section 31 of the existing act clause 32—with the proposed merger of part a and part b of the register into a single register, the existing provision in section 32 for presumption of conclusive validity of a trade mark in part a of the register has become unnecessary this section is, therefore, proposed to be replaced by the provision as in clause 32 of the bill, by providing that where the validity of a trade mark is contested on the ground of distinctiveness, the court may take into consideration the distinctiveness acquired through use after registration for determining the validity of registration clause 33—this clause isnew and contains provisions as to the effect of acquiescence the proprietor of the earlier trade mark or other earlier right cannot contest the validity of registration of a subsequent trade mark, if he has acquiesced in the use of the subsequent trade mark for a continuous period of five years, unlesthe can prove that the registration of the subsequent trade mark was not obtained in good faith sub-clause (2) states that where sub-clause (1) applies, the proprietor of the later mark also is not entitled to oppose the use of the earlier trade mark clause 34—this clause provides for protecting the vested rights, so that the proprietor of registered trade mark or a registered user cannot interfere with the use of any identical or similar mark if the person has been using the mark from an earlier date this clause corresponds to section 33 of the existing act this clause also covers services now clause 35—this clause corresponds to section 34 of the existing act and provides that the registered proprietor or the registered user cannot interfere with any bona fide use by a person of his own name, or his predecessor in business, his place of business or bona fide description of the character or quality of the goods or servicesclause 36—this clause corresponds to section 35 of the existing act the putpose of this clause is to prevent a person from asserting any exclusive right, by virtue of trade mark or patent, over a word which has come to be associated as the name or description of an article if there is a well known and established use of the word in a descriptive sense, and that is the only practicable name or description of an article , the validity of registration of such word as trade mark can be challenged the provisions of this clause extend to services v clause 37— this clause recognises the right of registered proprietor to assign the trade mark for any consideration and to give receipts this corresponds to section 36 of the trade and merchandise marks act, 1958 clause 38—this clause deals with the assignability and transmissibility of a registered trade mark whether with or without goodwill of the business either in respect of all goods or services or part thereof this corresponds to section 37 of the existing act the only change which is consequential is in relation to the provision for registration of trade mark for services clause 39—the clause provides that unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned clause 40—this clause contains restriction on assignments or transmissions of trade mark where multiple exclusive rights would be created in more than one person, which would be likely to deceive or cause confusion nevertheless, such assignment is not deemed to be invalid, if having regard to the limitations imposed, the goods are to be sold in different markets—either within india or for exports the provisions also apply to services sub-clause (2) lays down the procedure for obtaining a certificate for the purposes of assignment envisaged in sub-clause (1) andempowers the registrar to issue certificate for the purpose as to whether or not the proposed assignment is valid unless obtained by fraud, the certificate as to validity shall be conclusive clause 41—- clauses 38 and 39 lay down the provisions regarding assignability and transmissibility of registered trade mark or unregistered trade mark along with the goodwill of business subject to provisions contained therein subject to these provisions, this clause lays down the restriction on assignment or transmission so as to prevent splitting of rights of a trade mark on a territorial basis and creating rights on different persons in different parts of india however, the registrar has been conferred the power to approve such assignment or transmission if he is satisfied that it would not be contrary to public interest this clause is the same as section 40 of the existing act with necessary amendment only regarding services clause 42—this clause seeks to stipulate conditions for assignment of a trade mark without goodwill of business such an assignment will not take effect unless the assignor obtains directions of the registrar and advertises the assignment as per the registrar's directions and as per the procedure to be prescribed the purpose of advertisement is to give notice of the assignment without goodwill of the business to the public this clause explicitly states that the assignment of a trade mark in respect of only some of the goods or services with the goodwill of the business pertaining to those goods or services; or the assignment of a trade mark which is to be used only in relation to goods or services for export together with the goodwill of the export business only is not to be deemed as an assignment without goodwill of the whole of the business and in such cases, it would not be mandatory to obtain directions of the registrar this clause follows the existing provisions in section 41 of the trade and merchandise marks act, 1958, with con juential changes relating to servicesclause 43—this clause deals with the assignability and transmissibility of certification trade marks assignment of certification trade mark can only be done with the consent of the registrar consequent to the proposal to vest the final authority for disposal of applications for certification trade marks on the registrar, this clause seeks to make necessary change in the law by the substitution of the word "registrar" for the words "central government" clause 44—this clause requires that associated trade marks shall be assignable and transmissible only as a whole but they will be treated as separate trade marks for all other purposes it corresponds to the provision contained in section 43 of the existing act clause 45-—this clause deals with the procedure for registration of assignment and transmission and broadly follows the provisions contained in section 44 of the existing act where the validity of an assignment is in dispute between the parties, the registrar may refuse to register such transaction unless the rights of parties are determined by the competent court sub-clause (2) lays down that any instruments or documents on the basis of which no entry has been made under sub-section (1) is not admissible in evidence before the registrar or any court clause 46—section 18 of the existing act provides that an application for registration of a trade mark may be made only by a person who is using or proposing to use the tradé mark himself clause 46 contains two exceptions providing for registration of a trade mark—(1) by a person who proposes to assign the trade mark to a company to be formed and registered under the companies act, 1956 and (2) by a person who proposes to use the trade mark by a registered user as and when the mark is registered the latter provision seeks to give effect to supreme court decision in "dristan" case this clause further provides that where the sad trade mark is not assigned to the company mentioned in clause (1) above, the registration of such a trade mark shall cease to have effect after expiration of the prescribed period clause 47—this clause corresponds to section 46 of the existing act and provides for removal of a trade mark from the register on the ground of non-use a trade mark which is not used within five years of its registration, becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used under section 46(1), it is proposed to clarify that the five years period will start from the date on which the trade mark is actually entered on the register this amendment is intended to remove any ambiguity, as for all other purposes, the date of registration will be the date on which the application was filed vide clause 23(2) proviso to sub-clause (1) also provides that the tribunal may refuse removal of the mark if it is shown that any proprietor had in fact made bona fide use of the trade mark for goods or services of the same description or associated goods or services it is also proposed to increase the period from | to 3 months in clause 47(1) (a) and (b) in which use of the trade mark, prior to the date of filing of the application for removal of the trade mark, shall be disregarded this is intended to prevent the registered proprietor to by pass the act by such token use after he comes to know that an application for removal is about to be filed, sub-clause (3) protects a mark from being removed from the register on ground of non-use if such non-use is shown to have been due to special circumstances in the trade the clause is proposed to be modified to clarify that special circumstances in the trade will include restrictions imposed by any law or regulation on the use of trade mark in india consequential amendments have been made to cover servicesclause 48—this clause corresponds to section 48 of the existing act and deals with registration of registered users, it is proposed to simplify the law relating to registered user by effecting necessary changes in the various provisions in clause 48, it is proposed to delete the reference to "trafficking in trade marks" occurring in existing section 48 as the concept of trafficking in a trade mark, namely, dealing in trade mark as a commodity by itself is more imaginary than real as a trade mark representing the goodwill of the owner's business, is an invaluable asset of industrial property, the proprietor himself would exercise due control over the manner in which the trade 'mark should be used by the permitted user, to protect his own reputation indeed, sub-clause (2) provides that the use of the mark by the registered user ensures to the benefit of the proprietor and not to the user, clause 49—this clause provides for registration as registered user and largely corresponds to the existing sections 49 and 52 the clause sets out the procedure for making application and such registration, on completion of which the registrar may register the proposed user for the goods or services for which he is satisfied licensing of trade mark is recognised universally as an important industrial property right and as such the procedure for registration of registered user is proposed to be made simple to encourage such registration consequently, the consideration for the registration of registered user of a trade mark is not proposed to be extended to aspects which may affect the registration and better protection of trade marks it is proposed, therefore, to delete sub-sections (2) and (3) of section 49 of the existing trade and merchandise marks act, 1958 clause 50—this clause deals with the power of the registrar to vary or cancel registration as registered user registration of registered user may be varied or cancelled, inter alia, on the ground that the registered user has used the trade mark not in accordance with the agreement or the proprietor/user has failed to disclose any material facts for such registration or that the stipulation in the agreement regarding the quality of goods is not enforced or that the circumstances have changed since the date of registration, etc notice and opportunity of hearing is provided before cancellation of registration clause 51,-—with the simplification of the procedure for registration of registered user, it is necessary to keep the register of trade marks up-to-date accordingly, to ascertain whether the registered user agreement is in force, the registrar is proposed to be empowered to require the proprietor to confirm, at any time whether the agreement, on the basis of which registered user was registered is still in force, and if such confirmation is not received within the prescribed time of three months the registrar shall remove the entry thereof from the register in the prescribed manner clause 52 this clause recognises the right of registered user to take proceedings against infringement and broadly corresponds 'to section 51 of the existing act it is also clarified that the proprietor of registered trade mark will not be liable for any costs unless he enters appearance and takes part in the proceedings ' clause 53— this clause is new and seeks to explicitly provide that a person referred to in section 2(/) (ii) being an unregistered permitted user shall have no right to institute proceeding for any infringement this provision will encourage licensee of a registered trade mark to register his title as registered user as soon as possible clause 54—this clause reproduces in terms of section 53 of the existing act and enacts that a registered user will not have a right of assignment or transmission it is clarified that where an individual registered user enters into partnership or remaining in a reconstituted firm, the use of the mark by the firm would not amount to assignment or transmission clause 55—this clause provides that use of one of associated or substantially identical trade marks is equivalent to use of another is a repfoduction of the existing section 54 of the trade and merchandise marks act, 1958 similarly, the use of the whole of a registeted mark will be deemed to be use of a part of the mark, for all purposes, other than for securing registration of such part of the mark sub-clause (3) contains explicit provision accordinglyclause 56—this clause deals with the use of a trade mark for export trade and use when form of trade connection changes use of trade mark on goods for export from india constitutes use of the trade mark in india under sub-clause (/) sub-clause (2) recognises the principle that a mere change in the form of connection in the course of trade between the proprietor of the trade mark and the goods shall not be deemed to be likely to cause deception and confusion this corresponds to section 55 of the trade and merchandise marks act, 1958, and the amendments are mainly to cover "services" clause 57—sub-clauses (/) and (2) enable a person aggrieved to apply to the appellate board or the registrar for cancelling or varying the registration of trade marks, inter alia, on the ground of contravention or failure to observe any conditions entered on the register or absence or omission of any entry from the register or entry wrongly remaining or without sufficient cause sub-clause (3) empowers the tribunal to decide any question as may be necessary in connection with the rectification sub-clause (4) empowers the tribunal to rectify the register on the grounds specified above on its own motion after giving an opportunity of being heard to the parties concerned sub-clause (5) enables registrar to rectify the register pursuant to an order of the board to rectify the register clause 58—sub-clause (/) empowers the registrar to correct the register in respect of the errors relating to the particulars of the registered proprietor or entries relating to the registered trade mark and also to make consequential amendments, and alterations in the certificate of registration sub-clause (2) empowers the registrar to rectify the register to correct any error or change of name, etc, on an application by the registered tuser after giving notice to the registered proprietor clause 59—sub-clause (/) empowers the registrar to alter registered trade mark which does not substantially affect the identity of the trade mark subject to such limitations as he may think fit sub-clauses (2) and (3) contain provisions for advertisement of the proposed alteration mentioned in sub-clause (/) above and to enable any person to oppose such alterations sub-clause (3) makes it mandatory for advertisement of altered trade mark in the prescribed manner this corresponds to section 58 of the existing act clause 60—this clause corresponds the existing section 59 of the trade and merchandise marks act, 1958 which deals with adaptation of entries in the register to amended or substituted classification of goods or services this is only ar enabling provision clauses 61 to 68—these clauses contain provisions relating to the registration of collective trade marks which are new these provisions provide for registration of a collective mark which belongs to a group or association of persons and the use thereof is reserved for members of the group or association of persons collettive marks serve to distinguish characteristic features of the products or services offered by those entérprises it may be owned by an association which may not use the collective mark but whose members may use the same the association ensures compliance of certain quality standatds by its members, who may use the collective mark if they comply with the requirements prescribed concerning its use the primary function of a collective mark is to indicate a trade connection with the proprietor association or organisation clauses 69 to'78-~these clauses deal with registration of certification trade mark the purpose of certification trade mark is to show that the goods on which the mark is used have been certified by some competent person in respect of certain characteristics of the goods such as origin, mode of manufacture, quality, etc the proprietor of a certification trade mark does not himself deal in the goods a certification trade mark may be used in addition to the user's own trade mark on his goods at present section 63 of the existing act requires the central government to consider an application for registration of certification trade mark in order to simplify the procedure and since the law already provides necessary safeguards, it is proposed to vest final authority for registration of certification trade mark on the registrar and accordingly suitable amendments have been made in different provisions contained in clauses 70 to 79 these clauses are largely based on sections 60 io 69 of the existing act clauses 79 to'82—these clauses reproduce sections 71, 72, 74 and 75 of the existing 'act containing special provisions in respect of trade marks used for textile goods section 73 of the existing act pertaining to refused textile marks list which was maintained under the trade marks act, 1940, has been deleted as being no longer necessary clause 83—this clause provides for the constitution of an intellectual property appellate board to hear appeals against the decisions of the registrar clause 84—this clause deals with the composition of the appellate board the board will consist of a chairman, vice-chairman and such number of other members, as the central government may deem fit the places where the board may sit shall be notified by the central government , clause 85—this clause deals with the requisite qualifications for appointment as chairman, vice-chairman and members of the board clause 86—this clause deals with the term of office of chairman, vice-chairman and other members of the board and their conditions of service clause 87-—this clause sets out the circumstances where the vice-chairman or the senior most member will act as chairman and discharge his functions clause 88—this clause enables the central government to prescribe the salaries and allowances of the chairman, vice-chairman and other members and other terms and conditions of their service, viz, pension, gratuity, retirement benefits, etc clause 89—this clause makes provisons for the resignation of the chaitman, vice- chairman or any other member of the board and various grounds for their removal from the office clause 90—this clause provides for appointment and functioning of the staff of the appellate board, terms and conditions of service and the administrative powers of the chairman over them ' clause 91—this clause makes provisions for appeals to the appellate board from the de%isions of the registrar and the period within which they are to be preferred clause 92—this clause empowers the appellate board to regulate its own procedure the appellate board will have the powers of a civil court trying a suit under the code of civil procedure, 1908 in respect of the matters set out in the clause to facilitate speedy disposal of cases, the clause lays down that the board shall not be bound by the procedure laid down in the code of civil procedure, 1908 but be guided by the principles of natural justice clause 93—this clause bars any court or other authority from exercising jurisdiction, powers or authority in relation to the appeals clause 94—this clause prohibits the chairman, vice-chairman or other members of the board from appearing before the appellate board or the registrar after they cease to hold office clause 95—-this clause provides that no interim order shall be made in any proceeding relating to an application unless copies of the appeal are furnished to the party against whom the appeal is made and an opportunity of hearing is given to such parties clause 96—this clause seeks to empower the chairman to transfer any cases pending before one bench for disposal to any other bench either on his own motion or on the application made by any of the parties the purpose of this clause is to secure proper management of the workclause 97—this clause deals with procedure for application for rectification made to the appellate board, this is in line with section 108 of the trade and merchandise marks act, 1958 only the references to high court are replaced by appellate board this also provides that certified copy of the order or judgment of the board will be communicated to the registrar for taking appropriate action, including amending éntries in the register accordingly clause 98—this clause empowers the registrar to appear before the appellate board in certain circumstances or in lieu of appearance, to file the statement in writing which shall constitute evidence in the proceeding clause 99—in all proceedings before appellate board, the registrar shall not be ordered to pay the costs to any party, but the costs of the registrar shall be in discretion of the appellate board clause 100—this clause provides for transfer of all cases of appeals and rectification proceedings pending before any high court to appellate board from such date as may be notified in the official gazette clause 101—this clause, provides that a person shall be deemed to apply a trade mark or trade description to goods or services in certain circumstances it includes the manner of "use" envisaged in the definition of use of a mark, including where a trade mark of trade description is woven in, impressed on, annexed or affixed to the goods or any package, etc this clause corresponds to section 76 of the existing act clause 102—a person is deemed to falsify a mark who without the authority of the proprietor makes the trade mark or deceptively similar mark or falsifies any genuine trade mark in any manner sub-clause (2) provides that a person is deemed to falsely apply to goods such trade mark without the assent of the proprietor on goods or services or any package containing goods, etc it is also made clear that the burden of proving assent of the proprietor will be on the accused this provision corresponds to section 77 of the existing act ' clause 103— this clause provides penalty for applying false trade mark, trade description, etc this clause corresponds to section 78 of the existing act but removes the distinction between offences in relation to "drugs" or "food" on the one hand and other categories of goods on the other and seeks to enhance the punishment uniformly irrespective of the nature of the goods as in many cases, a trade mark label is registered separately as a trade mark under the trade and merchandise marks act, 1958 and as copyright under the copyright act, 1957, the penal provisions are sought to be harmonised between the two laws accordingly, in clause 103, it is proposed that penalty for applying false trade mark or false trade description, etc, as enumerated in clause 103 is to 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 however, a provision has been made empowering the court, for adequate and special reasons to be mentioned in the judgment, to impose a sentence lower than the normal punishment specified in this clause clause 104—this clause prescribes penalty for selling goods or providing services to which false trade mark or false trade description is appliéd the penalty proposed is the same as sought to be provided for an offence in clause 103 in this clause, the court is also empowered to award a lower sentence of penalty for adequate and special reasons to be mentioned in the judgment clause 105—this clause which prescribes enhanced penalty on second and subsequent convictions for offences committed in clauses 103 and 104 is new and is in accordance with similar provision under the copyright act it is provided that whoever has already been convicted is again convicted shall be punishable for the second and for every subsequent offence with imprisonment which shall not be tess 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 the court is, however, empowered to impose a sentence of imprisonment for a term less than one year and a fine of less than one lakh rupees for adequate and special reasons to be mentioned in the judgment this clause makes it clear that for the purpose of this clause no cognizance of any conviction made before the commencement of this act shall be taken clause 106—this clause provides penalty for removing piece goods, etc, contrary to clause 81 it provides that if any person removes or attempts to remove for sale these goods or cotton yarn or cotton threads which are not marked in accordance with the provisions of the act, all such goods will be forfeited to the government and the person shall be punishable with fine clause 107—this clause which corresponds to section 81 of the existing act makes false representation of a trade mark as registered as an offence the amendment also seeks to clarify that use of symbols like "r" in circle in relation to unregistered trade mark would constitute an offence the punishment for the offence is imprisonment for a term which may extend to three years or with fine or with both it is also clarified that where the mark in question is registered under the law of the country outside india, the use of the word or other expression to denote such registration in foreign country is permissible clause 108—the use of any words which would lead to the belief that a person's place of business is officially connected with the trade mark office is made a punishable offence with imprisonment for a term which may extend to two years or fine or with both this clause corresponds to section 82 of the existing act , clause 109—this clause contains provisions for penalty for falsification of entries in the register this offence is punishable with imprisonment extending to two years or fine or with both this clause corresponds (0 section 83 of the existing act clause 110,—this clause specifically provides that where an act or omission shall not be deemed to be an offence under sections 102, 103, 104 and 105, if the alleged offence relates to a registered or unregistered mark, the act or omission is permitted by this act or under any other law it is in the nature of defence available to an accused this clause corresponds to section 84 of the existing act clause 111—this clause which corresponds to section 85 of the existing act empowers the court to direct the forfeiture to government of all the goods relating to which an offence has been committed the court may either order the forfeited goods to be destroyed or otherwise disposed of where an appeal against conviction lies, the appeal will also lie against the forfeiture clause 112,—this clause corresponds to section 86 of the existing act and contains provision for exemption of certain persons employed in the ordinary course of business from liability if the person accused of an offencé proves, inter alia, that he had at the time of commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description and that in the ordinary course of business he is employed on behalf of the other persons to apply trade mark or trade description including dyes, blocks, machines, etc, he shall not be liable clause 113—this clause prescribes the procedure where invalidity of registration is pleaded by the accused, and makes provision for stay of proceedings in certain circumstances if the court is satisfied with the defence of invalidity of the registration, it may adjourn the proceedings for three months to enable an application for rectification of the register to be filed before the appellate board if the accused proves that he has made such application, further proceedings shall stand stayed till the disposal of rectification application on the other hand, if within the period allowed by the court, the accused fails to apply for rectification before the appellate board, the court is bound to proceed with the case as if registration is validsub-clause (2) provides that where any application for rectification is pending before the institution of the criminal proceedings, the court shall stay the proceedings in the prosecution pending the outcome of the rectification application and determine the charge in conformity thereof to the extent that the complainant relics on the registration of this mark this clause corresponds to section 87 of the present act clause 114—this clause contains provision for offences by companies and corresponds to section 88 of the existing act this provision seeks to provide that where a person committing offence is a company, every person responsible in the company for the conduct of its business will be liable where a person accused proves that the offence was committed without his knowledge he will not be liable however, where it is proved that an offence has been committed with the consent or connivance or is attributable to the neglect of any director, manager, secretary or any other officer of the company, he shall be deemed to be guilty of the offence clause 115,—sub-clause (/) provides that a court shall take cognizance of an offence under clause 107, clause 108 and clause 109 only on complaint by the registrar or any officer authorised by him proviso to this clause enables the court to take cognizance of an offence under clause 107 (/) (c) on the basis of registrar's certificate sub-clause (2) enacts that no court inferior to that of a judicial magistrate of the first class shall try the offence under this act sub-clause (3) declares that offence under section 103, section 104 or section 105 shall be cognizable sub-clause (4) which corresponds to section 64 of the copyright act seeks to confer powers on a police officer not below the rank of deputy superintendent of police to search and seize goods or other instruments involved in committing offence wherever found it is made incumbent on the police officer to obtain the opinion of the registrar on facts involved in the offence relating to the trade mark sub-clause (5) enables a person having an interest in any article seized to file an application to the court for restoration of such seized articles to him clause 116—where the goods are brought into india by sea, evidence of port of shipment will be prima facie evidence of the country of origin in any prosecution for an offence under the act or the customs act, 1962 this corresponds to section 90 of the existing act  - clause 117—this clause empowers the court to order payment of reasonable costs by the accused to the complainant or by the complainant to the accused this is in line with section 91 of the present act clause 118—this clause seeks to enact a period of limitation for commencement of prosecution for an offence under the act, viz, before expiration of three years from the date of offence or two years after discovery thereof by the prosecutor whichever happens first this corresponds to section 92 of the act of 1958 clause 119—this clause corresponds to section 93 of the existing act and it provides that an officer of the government who is required to enforce the provisions of this chapter should not be compelled to say as to when and where he got any information in respect of the alleged offence clause 120—this clause provides that any person in india abetting the commission of any offence which, if committed in india would be an offence shall be tried for such abetment and shall be punished this corresponds to section 94 of the existing act clause 121—this clause enables the central government to issue notification as to the permissible limits of variation as regards number, quantity, measure, gauge or weight for guidance of criminal court this corresponds to section 95 of the existing act clause 122—this clause seeks to protect any thing done or intended to be done by any person in pursuance of this act in good faithclause 123—this clause states that all persons appointed under this act and every member of the board are public servants clause 124—this clause deals with circumstances in which stay of infringement proceedings can be ordered and also states that a stay of a suit for infringement of a trade mark shall not preclude the court from making an interlocutory order during the period of stay this clause is in line with section 111 of the existing act clause 125—this clause provides that in certain cases, the application for rectification of register should be made to the appellate board where in a suit for infringement of a registered trade mark, the validity of the registered trade mark is questioned, the validity of the mark is determined only on an application for the rectification of the registered trade mark made to the applellate board this corresponds to section 107 of the trade and merchandise marks act, 1958 the reference to high court is replaced by appellate board clause 126—this clause corresponds to section 96 of the existing act of 1958 it provides that on goods for sale if a trade mark or trade description is given or applied, there is implied warranty that the mark is a genuine mark clause 127—-this clause seeks to empower the registrar with powers of a civil court, including award of reasonable costs, subject to rules to be made in this behalf, except that he will have no power to award costs to any party on an appeal over the refusal of the proprietor of a certification trade mark to certify the goods this is in conformity with the provisions of section 97 of the existing act clause 128—this clause provides that the registrar has to give an opportunity of being heard to the person/persons before exercising his discretionary powers adverse to him this corresponds to'section 98 of the existing act of 1958 clause 129—this clause says that evidence before the registrar should be normally in the form of affidavit only and in addition or in lieu thereof the registrar may take oral evidence this is in line with section 99 of the trade and merchandies marks act, 1958 clause 130—this clause provides that in case of death of a party to a proceeding during the course of the proceedings, the registrar, on proof to his satisfaction may allow substitution of his successor or may allow the proceeding to continue with the surviving parties this is in conformity with the provisions of section 100 of the existing act of 1958 clause 131—this clause empowers the registrar to extend the time for doing any act, not being a time expressly provided in the act this reproduces section 101 of the existing act of 1958 clause 132—if the registrar is of the opinion that the applicant has defaulted in the prosecution of his application, he may by a notice require him to remedy the default after giving him an opportunity to be heard he may treat the application as abandoned unless the default is remedied within the time specified by him this corresponds to section 102 of the existing act clause 133—this clause states that any person proposing to apply for registration of a trade mark may request the registrar to obtain preliminary advice as to the distinctiveness of the trade mark this corresponds to section 103 of the trade and merchandise marks act, 1958 clause 134—-this clause stipulates the forum for institution of infringement proceedings, etc, to be the district court it is proposed that the term "district court having jurisdiction" would include a district court within the local limits of whose jurisdiction, the person, or one of the persons, instituting the suit or other proceedings, actually or voluntarily resides or carries on business or personally works for gain this 2 nendment would bring the trade marks law in line with the provisions contained in the copyright act, 1957 as very often a trade mark is also registered as an artistic work under the copyright act clause 135—this corresponds to section 106 of the trade and merchandise marks act, 1958 and deals with reliefs which may be granted by courts in suits for infringement it is proposed to provide expressly that the court may grant an ex parte injunction and in particular orders intended to preserve evidence or documents relating to the subject matter of the suit so that the defendant is restrained from dealing with assets in a manner which would affect the plaintiffs' ability to recover damages or other pecuniary remedies after final orders this will deter infringement activities clause 136— this clause provides that in every proceeding the registered user shall be made party to the same this is in conformity with section 114 of the existing act clause 137— this clause states that certificate issued by the registrar shall be prima facie evidence in all proceedings without further proof or production of the original this is in line with section 115 of the existing act clause 138— this clause states that registrar and other officers shall not be compelled to produce the register and other documents if the contents can be proved by the production of a certified copy they shall not be compelled to appear as witnesses to prove the matter therein unless for special cause it is ordered by the court this is in line with section 116 of the existing act clause 139— this clause includes provisions that the central government may require that goods of any class which are made outside india and imported into india or goods made and produced in india shall 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 the person for whom the goods were manufactured clause 140— this clause states that the proprietor or a licensee of a registered trade mark may give notice in writing to the commissioner of customs to prohibit the importation of the goods if the import of such goods constitute infringement the commissioner may require the importer to produce the documents in his possession and furnish information as to the name and address of the person for whom the goods were consigned to india this is done for preventing importation of goods bearing false trade mark this is in line with section 118 of the existing act clause 141——this clause states that where in any legal proceeding for rectification of register a decision is given in favour of the registered proprietor the appellate board may grant a certificate of validity this corresponds to section 119 of the existing act with the exception that in place of high court mentioned therein the appellate board is the authority to grant the said certificate clause 142—this clause seeks to protect the persons against groundless threats of infringement by giving him an opportunity to bring a suit against the person making such threats and obtain a declaration that the threats are unjustifiable and an injunction against the continuance of the threats and recovery of damages this is in line with section 120 of the existing act clause 143—this clause deals with address for service given by the applicant or opponent by stating that this address shall be deemed to be the address of the applicant or opponent and all correspondence shall be sent to them to that address only this is in line with section 121 of the trade and merchandise marks act, 1958 clause 144—this clause states that in any suit or other proceeding evidence of the trade usage and relevant trade mark will be admitted this corresponds to section 122 of the trade and merchandise marks act, 1958 clause 145—this clause deals with agents and provide that if any act is required to be done before the registrar by any person, this may be done by him or by a legal practitioner, a trade marks agent or by his employee if he is duly authorised by him this is in line with section 123 of the trade and merchandise marks act, 1958 clause 146—this clause seeks to protect the mghts of the proprietor of a trade mark if his agent or representative attempts to register or registers the mark in his own name, without authority, the proprietor ts entitled to oppose the application or to apply for rectificaiton so as to bring him as the registered proprietor the time within which such action has to be taken is three years from the date he is aware of the conduct of the agent clause 147—this clause provides for keeping different indexes at the trade marks registry, viz indexes of registered and pending trade marks registered proprietor's index and index of registered users this is in line with section 124 of the existing act clause 148—this clasue provides for the inspection of documents by the public any member of the public may inspect these documents on payment of the fee to be prescribed and also obtain'certified copy of the entry from the register this is in line with section 125 of the existing act clause 149—this clause provides for placement before the parliament by the registrar annual reports on the execution of this act this is in line with section 126 of the existing act clause 150—this clause provides for prescribing fees for various acts to be done under this act this corresponds to section 127 of the existing act clause 151—this clause corresponds to section 128 of the trade and merchandise marks act, 1958 and provides for protecting the persons in respect of certain matters in chapter xii dealing with offences clause 152—this clause deals with the declaration of ownership of trade mark (other than a registered trade mark) not registrable under the registration act, 1908 this is in line with section 129 of the existing act clause 153—this clause states that the provisions of this act shall be binding on the government this corresponds to section 130 of the existing act clause 154—this clause provides for the declaration of any country or group of countries or union of countries or inter governmental organisations to be a convention country or group of countries or union of countries or integovernmental organisations by notification by the central government for the fulfilment of a treaty, convention or arrangement and includes provisions relating to applications for registration from citizens of convention countries this corresponds to section 131 of the existing act clause 155—this clause contains provisions as to reciprocity if any country or country which is a member of a group of a countries or union of countries or inter- governmental organisation does not accord to citizens of india the same rights as to registration and protection of trade marks as it accords to its own nationals, no national of that country or country which is a member of a group of countries or union of countries or inter-governmental organisations, as the case may be, is entitled to apply for registration of a trade mark, to apply for registration as a registered user of trade mark or to be registered as the assignee of the registered proprietor of a trade mark in india this corresponds to section 132 of the existing act clause 156—this clause empowers the central government for removing difficulties which may arise in giving effect to the provisions of the act every order of the central government under this clause is to be laid before each house of parliament this power is exercisable only for five years from the commencement of the new act clause 157—this clause empowers the central government to make rules to carry out the purposes of the new act on the various matters specified therein this mainly, corresponds to sections 133 and 134 of the existing act clause 158—this clause provides for amendment of the enactment specified in the schedule, viz, sections 20 and 22 of the companies act, 1956clause 159,—this clause deals with repeal and savings subject to clause 101, relating to transfer of pending appeals from high courts to appellate board, other legal proceedings pending before any court may be continued in that court as if the act has not been passed further, this clause seeks to safeguard existing rights to the continued use of any trade mark and save them from the expanded scope of infringement provisions, under this bill this clause further states that the trade marks registered before commencement of the act shall continue to run for the unexpired term this clausé also provides that existing defensive registered trade marks shail expire after a period of five years or after its unexpired period whichever is earlier  financial memorandumin this bill, provision has been made for providing statutory protection to trade marks in relation to 'services', besides trade marks for goods which are alreadyprotected in the existing act the term 'service' has been defined in clause 2(1)(z) a number of consequential changes have been incorporated in various other clauses of the bill the number of applications for registration of trade marks and requests for searches has been steadily increasing from 24,351 in 1991-92, the requests for searches and preliminary advice have increased to 77,749 in 1997-98 during the same period the number of trade mark applications increased from 22,412 to 46,717 the work load is expected to increase from the present level of 46,712 applications for registration to 60,000 including an additional number of about 14,000 applications expected to be received on account of services for handling the additional work and for providing proper services to the customers and public, the staff and facilities of the trade marks registry will require strengthening this will include the posts of one joint registrar, one assistant registrar, one senior examiner, six examiners, two assistant examiners, two superintendents, one stenographer grade 'c', one assistant superintendent, two upper division clerks, four lower division clerks, one record keeper, two daftries and two peons for this, an estimated expenditure of rs 25 lakhs per annum as recurring expenditure and rs 5 lakhs as non-recurring expenditure towards office furniture, etc, is anticipated _ 2 clause 83 of the bill provides for establishment of an intellectual property appellate board for expeditious disposal of appeals on the decisions of the registrar and for development of sound precedents and practices in this specialized branch of law clauses 84 and 90 provide for the composition of the appellate board and the staff of the board for additional funds would be required for establishment of the office an estimated annual expenditure of about rs 25 lakhs as recurring expenditure-and rs 10 lakhs as non-recurring expenditure is envisaged for the members of the board, (including chairman and vice-chairman) and staff, setting up of office, hiring of premises, office equipments, etc 3 implementation of the provisions in clauses 3, 5, 6, 8, 20, 83, 88, 90, 147 and 148 of the bill will involve expenditure from the consolidated fund of india as most of the provisions already form part of the existing statute, only the new provisions whieh are relevant in this respect are referred to above 4 as in the existing act, the bill provides for payment of fees in respect of application and registration and other matters under the act  memorandum regarding delegated legislationsub-clause (/) of clause 7 of the bill empowers the registrar to classify goods and services in accordance with the international classification of goods and services for the purpose of registration of trade marks 2 clause 157 of the bill empowers the central government to make rules to carry out the provisions of the proposed legislation sub-clause (2) of that clause enumerates the matters with respect to which the rules may be made under this clause these matters relate to, inter alia, the manner of making of applications and fee payable for such applications under this bill; the manner in which the registrar may notify a word as international nonproprietary name; the manner of advertising of an application for registration; form of certificate of registration; manner of making an application for assignment or transmission of aregistered trade mark; determination of character of textile goods by sampling; manner of authorizing any person to act and to register him as a trade mark agent; form and manner of making appeals to the appellate board and salaries and allowances payable and the other terms and conditions of service of the chairman, vice-chairman and other members, officers and other employees of the appellate board the power to make rules is, however, subject to the condition of the rules being made after previous publication 3 the aforesaid matters relate to procedure and administrative details and it is not practicable to provide for them in the bill itself the delegation of legislative power is, therefore, of a normal character ,  annexure extracts from the companies act, 1956(1 of 1956)  provisions with respect to names of compqnies| to    | be       ||-------|----------|| with  | undesir- || able  | names   |(2) without prejudice to the benerality of the foregoing power, a name which is identical with, or too nearly resefhbles, the name by which a company in existence has been previously registered, may be concerned to be undesirable by the central government within the meaning of sub-section (/) 22 (1) if, through inadvertence or otherwise, a company on its first registration or rectification of name of companyon its registration by a new name, is registered by a name which, in the opinion of the central government, is identical with, or too nearly resembles, the name by which a company in existence has been previously registered, whether under this act or any previous companies law, the first-mentioned company— (a) may, by ordinary resolution and with the previous approval of the central government signified in writing, change its name or new name; and (b) shall, if the central government so directs within twelve months of its first registration or registration by its new name, as the case may be, or within twelve months of the commencement of this act, whichever is later, by ordinary resolution and with the previous approval of the central government signified in writing change its name or new name within a period of three months from the date of the direction or such longer period as the central government may think fit to allow 