Trade and Merchandise Marks Act 1958 Complete Act - Citation 134349 - Bare Act

Act Info:

TRADE AND MERCHANDISE MARKS ACT, 1958

TRADE AND MERCHANDISE MARKS ACT, 1958

43 of 1958

An Act to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. Be it enacted by parliament in the ninth year of the republic of India as follows

SECTION 01: SHORT TITLE, EXTENT AND COMMENCEMENT

(1) The Act may be called the Trade and Merchandise Marks Act, 1958.

(2) It extends to the whole of India.

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

SECTION 02: DEFINITIONS AND INTERPRETATION

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

(a) "assignment" means an assignment in writing by act of the parties concerned;

(b) "associated trade marks" means trade marks deemed to be, or required to be, registered as associated trade marks under this Act;

(c) "certification trade mark" means a mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registrable as such under the provisions of Chapter VIII in respect of those goods in the name as proprietor of the certification trade mark, of that person;

(d) "deceptively similar" :- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark is to be likely to deceive or cause confusion;

(e) "District Court" has the meaning assigned to it in the Code of Civil Procedure, 1908 (5 of 1908);

(f) "false trade description" means-

(i) a trade description which is untrue or misleading in a material respect as regards the goods to which it is applied; or

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

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

(iv) any marks or arrangement or combination thereof applied to good in such manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are or

(v) any false name or initials of a person applied to goods in such manner as if such name or initials were a trade description in are 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 of the same description and who has not authorised the use of such name or initials; and

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

(g) "goods' means anything which is the subject of trade or manufacture;

(h) "High Court means the High Court having jurisdiction under section

(i) "limitations' (with its grammatical variations) means any limitations 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 of use, as to use in relation to goods to be sold or otherwise trade in within India, or as to use in relation to goods to be exported to an market outside India;

(j) "mark" includes a device, brand, heading, label, ticket, name, signature word, letter or numeral or any combination thereof;

(k) "name" includes any abbreviation of a name;

(1) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;

(m) "permitted use", in relation to a registered trade mark, means the use of a trade mark-

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

(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

(ii) which complies with any conditions or restrictions to which the registration of the trade mark is subject;

(n) "prescribed" means, in relation to proceedings before a High Court, prescribed by rules made by the High

Court, and in other cases, prescribed by rules made under this Act;

(o) "register" means the Register of Trade Marks referred to in section 6-;

(p) "registered" (with its grammatical variations) means registered under this Act;

(q) "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;

(r) "registered trade mark" means a trade mark which is actually on the register;

(s) "registered user" means a person who is for the time being registered as such under section 49-;

(t) "Registrar" means the Registrar of Trade Marks referred to in section 4-;

(u) "trade description" means any description, statement or other indication, direct or indirect,-

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

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

(iii) as to fitness for the purpose, strength, performance or behaviours of any goods, being "drug" as defined in the Drugs Act, 1940 (23 of 1940)-, or "food" as defined in the Prevention of Food Adulteration Act, 1954 (37 of 1954)-; or

(iv) as to the place or country in which or the time at which any goods were made or produced; or

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

(vi) as to the mode of manufacture or producing any goods: or

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

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

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

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

(v) "trade mark" means-

(i) in relation to Chapter X (other than section 81-), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and

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

(w) "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;

(x) "tribunal" means the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending.

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

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

(b) to the use of a mark 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;

(c) to a registered trade mark shall be construed as including a reference to a trade mark registered in Part A of the register or Part B of the register, as the case may be;

(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 4-;

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

SECTION 03: HIGH COURT HAVING JURISDICTION

The High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the following cases is situate, namely:-

(a) in relation to a trade mark on the Register of Trade Marks at the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor of the trade mark as entered in the register at such commencement is situate;

(b) in relation to a trade mark for which an application for registration is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant as disclosed in his application is situate;

(c) in relation to a trade mark registered in the names of joint proprietors before the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is entered first in the register at such commencement as having such place of business is situate;

(d) in relation to a trade mark for which an application for registration in the names of joint proprietors is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is first mentioned in the said application as having such place of business is situate;

(e) where the registered proprietor or the applicant for registration as aforesaid has no place of business in India or where none of the jointly registered proprietors or none of the joint applicants as aforesaid has any place of business in India, the office of the Trade Marks Registry within whose territorial limits-

(i) in relation to trade mark on the Register of Trade Marks at the commencement of this Act, the place mentioned in the address for service in India as entered in the register at such commencement;

(ii) in relation to a trade mark for which an application for registration is pending at or is made on or after such commencement, the place mentioned in the address for service in India as specified in the application, is situate.

SECTION 04: REGISTRAR OF TRADE MARKS

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

(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.

SECTION 05: TRADE MARKS REGISTRY AND OFFICES THEREOF

(1) For the purpose of this Act there shall be established a Registry which shall be known as the Trade Marks Registry.

(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 officers 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 its functions.

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

SECTION 06: THE REGISTER OF TRADE MARKS

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

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

(3) Subject to the superintendence and direction of the Central Government, the register shall be .kept under the control and management of the Registrar.

(4) 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 125-as the Central Government may, by notification in the Official Gazette, direct.

SECTION 07: PART A AND PART B OF THE REGISTER

(1) The register referred to in section 6-shall be divided into two parts called respectively Part A and Part B.

(2) The Register of Trade Marks existing at the commencement of this Act shall be incorporated with and form part of Part A of the register, and this Part shall comprise all trade marks entered in the Register of Trade marks existing at the commencement of this Act and all trade marks which after such commencement may be entered in Part A of the register

(3) Part B of the register shall comprise all trade marks which after the commencement of this Act may be entered in Part B of the register.

SECTION 08: REGISTRATION TO BE IN RESPECT OF PARTICULAR GOODS

(1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

SECTION 09: REQUISITES FOR REGISTRATION IN PARTS A AND B OF THE REGISTER

(1)A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:-

(a) the name of a company, individual or firm represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business;

(d) one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions in clauses (a), (b),

(c) and (d) of sub-section (1) shall not be registrable in Part A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either gradually or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(4) A trade mark shall not be registered in Part B of the register unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which-

(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods-

(a) registered in Part A of the register may be registered in Part B of the register; and

(b) registered in Part B of the register may be registered in Part A of the register; in the name of the same proprietor of the same trade mark or any part or parts thereof.

SECTION 10: LIMITATION AS TO COLOUR

(1)A trade may be limited wholly or in part to one or more specified 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.

SECTION 11: PROHIBITION OF REGISTRATION OF CERTAIN MARKS

A mark-

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

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

(e) which would otherwise be disentitled to protection in a court, shall not be registered as a trade mark.

SECTION 12: PROHIBITION OF REGISTRATION OF IDENTICAL OR DECEPTIVELY SIMILAR TRADE MARKS

(1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.

(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.

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

SECTION 13: PROHIBITION OF REGISTRATION OF NAMES OF CHEMICAL ELEMENTS

(1) No word which is the commonly used and accepted name of any single chemical element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding anything in section 32-, be deemed for the purposes of section 56-to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.

(2) This section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

SECTION 14: USE OF NAMES AND REPRESENTATIONS OF LIVING PERSONS OR PERSONS RECENTLY DEAD

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

SECTION 15: REGISTRATION OF PARTS OF TRADE MARKS AND OF TRADE MARKS AS A SERIES

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

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

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

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

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

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

SECTION 16: REGISTRATION OF TRADE MARKS AS ASSOCIATED TRADE MARKS

(1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods 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 so nearly resembles it as to be likely to deceive or cause

confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks.

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

(3) All trade marks registered in accordance with the provisions of sub-section

(3) of section 15-as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.

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

SECTION 17: REGISTRATION OF TRADE MARKS SUBJECT TO DISCLAIMER

If a trademark-

(a) contains any part-

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

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

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character; the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require as a condition of its being on the register, that the proprietor shall either disclaim any right to the 'exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration : Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

SECTION 18: APPLICATION FOR REGISTRATION

(1) Any person claiming to be the proprietor of a trade mark used or proposed 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 either in Part A or in Part B of the register.

(2) An application shall not be made in respect of goods comprised in more than one prescribed class of goods.

(3) Every application under sub-section (1) shall be filed in the off ice of the Trade Marks

Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India or the applicant whose name is first mentioned in the application as having a place of business in India, is situate:
Provided that where the applicant of any or 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.

(5) In the case of an application for registration of a trade mark (other than a certification trademark) in Part A of the register, the Registrar may, if the applicant so desires, instead of refusing the application, treat it as an application for registration in Part B of the register and deal with the application accordingly.

(6) 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 arriving at his decision.

SECTION 19: WITHDRAWAL OF ACCEPTANCE

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

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

(b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted; the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

SECTION 20: ADVERTISEMENT OF APPLICATION

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

(2) of section 9-applies 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 (1); or

(b) after advertisement of an application-

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

(ii) the application has been permitted to be amended under section 22-: the Registrar may in his discretion cause the application to be advertised again or in any case falling under clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.

SECTION 21: OPPOSITION TO REGISTRATION

(1) 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 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.

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

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

(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.

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is so 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 application sending a counter-statement after receipt of a copy 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.

SECTION 22: CORRECTION AND AMENDMENT

The Registrar may on such terms as he thinks just-

(a) 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; or

(b) permit correction of any error in, or an amendment of, a notice of opposition or a counterstatement under section 21-.

SECTION 23: REGISTRATION

(1) Subject to the provisions of section 19-, when an application for registration of a trade mark in Part A or Part B of the register has been accepted and either-

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

(b) the application has not 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 in Part A or Part B of the register, as the case may be, 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 131-, be deemed to be the date of registration.

(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 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.

SECTION 24: JOINTLY OWNED TRADE MARKS

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

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

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

(b) in relation to an article with which both or all of them are connected in the course of trade; those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

SECTION 25: DURATION, RENEWAL AND RESTORATION OF REGISTRATION

(1) The registration of a trade mark shall be for a period of seven 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 of the prescribed fee, renew the registration of the trade mark for a period of seven 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).

(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.

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, within one year from the expiration of the last registration of trade mark, on receipt of an application in the prescribed form, 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 seven years from the expiration of the last registration.

SECTION 26: EFFECT OF REMOVAL FROM REGISTER FOR FAILURE TO PAY FEE FOR RENEWAL

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

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

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

SECTION 27: NO ACTION FOR INFRINGEMENT OF UNREGISTERED TRADE MARK

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

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

SECTION 28: RIGHTS CONFERRED BY REGISTRATION

(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register 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 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 (1) shall 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 are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of these 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.

SECTION 29: INFRINGEMENT OF TRADE MARKS

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

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction on other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complaints is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark.

SECTION 30: ACTS NOT CONSTITUTING INFRINGEMENT

(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark:-

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

(b) the use by a person of a trade mark 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 of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark;

(c) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods 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;

(d) 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.

(2) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of or other dealings in those goods by that person or by a person claiming under or through him is not an infringement of the trade mark by reason only of the trade mark having been assigned by the registered proprietor to some other person after the acquisition of those goods.

SECTION 31: REGISTRATION TO BE PRIMA FACIE EVIDENCE OF VALIDITY

(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 56-), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

(2) In all legal proceedings as aforesaid a trade mark registered in Part A of the register 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, in all legal proceedings as aforesaid, if it is proved that the trade mark had been used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

SECTION 32: REGISTRATION TO BE CONCLUSIVE AS TO VALIDITY AFTER SEVEN YEARS

Subject to the provisions of section 35-andsection 46-, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 56-) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved-

(a) that the original registration was obtained by fraud; or

(b) that the trade mark was registered in contravention of the provisions of section 11-or offends against the provisions of that section on the date of commencement of the proceedings; or (c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.

SECTION 33: SAVING FOR VESTED RIGHTS

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

(a) to the use of the first-mentioned trade mark in relation to those goods by 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 in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.

SECTION 34: SAVING FOR USE OF NAME, ADDRESS OR DESCRIPTION OF GOODS

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 or the place of business, or 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.

SECTION 35: SAVING FOR WORDS USED AS NAME OR DESCRIPTION OF AN ARTICLE OR SUBSTANCE

(1) The registration of a trademark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance
Provided that, if it is proved either-

(a) that there is a well-known and established use of the said words as the name or description of the article or substance by a person or person carrying on a trade therein, not being used in relation to goods 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) goods 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 elapsed, 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.

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

(a) for the purposes of any proceedings under section 56--

(i) 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, shall be deemed to be an entry wrongly remaining on the register;

(ii) if the trade mark contains such words and other matter, the tribunal in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any exclusive right to the use in relation to that article or substance and any goods of the same description, of such words:
Provided that no disclaimer shall affect any rights of the proprietor of trade mark except such as arise out of the registration of the trade mark, in respect of which the disclaimer is made;

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

(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or any other law to the use of the trade mark in relation to the article or substance in question or to any goods of the same description; or

(ii) if the trade mark contains such words and other matter, all such rights of the proprietor to the use of such words, in such relation as aforesaid; shall be deemed to have ceased on the date at which the use mentioned in clause (a) of the proviso to sub-section (1) first became well -known and established, or at the expiration of the period of two years mentioned in clause (b) of the said proviso.

SECTION 36: POWER OF REGISTERED PROPRIETOR TO ASSIGN AND GIVE RECEIPTS

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

SECTION 37: ASSIGNABILITY AND TRANSMISSIBILITY OF REGISTERED TRADE MARKS

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

SECTION 38: ASSIGNABILITY AND TRANSMISSIBILITY OF UNREGISTERED TRADE MARKS

(1) An unregistered trade mark shall not be assignable or transmissible except along with the goodwill of the business concerned.

(2) Notwithstanding anything contained in sub-section (1), an unregistered trade mark may be assigned or transmitted otherwise than along with the goodwill of the business concerned if-

(a) at the time of assignment or transmission of the unregistered trade mark, it is used in the same business as a registered trade mark; and

(b) the registered trade mark is assigned or transmitted at the same time and to the same person as the unregistered trade mark ; and

(c) the unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.

SECTION 39: RESTRICTIONS ON ASSIGNMENT OR TRANSMISSION WHERE MULTIPLE EXCLUSIVE RIGHTS WOULD BE CREATED

(1) Notwithstanding anything in section 37-andsection 38-, 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 the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and 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 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.

(2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 44-of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.

SECTION 40: RESTRICTIONS ON ASSIGNMENT OR TRANSMISSION WHEN EXCLUSIVE RIGHTS WOULD BE CREATED IN DIFFERENT PARTS OF INDIA

Notwithstanding anything in section 37-andsection 38-, 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, 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 and an exclusive right in another of these persons to the use of a trade mark nearly resembling the first- mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, 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 39-if application for the registration under section 44-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.

SECTION 41: CONDITIONS FOR ASSIGNMENT OTHERWISE THAN IN CONNECTION WITH THE GOODWILL OF A BUSINESS

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

SECTION 42: ASSIGNABILITY AND TRANSMISSIBILITY OF CERTIFICATION TRADE MARKS

A certification trade mark shall not be assignable or transmissible other- wise than with the consent of the Central Government, for which application shall be made in writing in the prescribed manner through the Registrar.

SECTION 43: ASSIGNABILITY AND TRANSMISSIBILITY OF ASSOCIATED TRADE MARKS

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

SECTION 44: REGISTRATION OF ASSIGNMENTS AND TRANSMISSIONS

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods 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:

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 (1) or an appeal from an order thereon, or an application under section 56-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 (1), shall not be admitted in evidence by the Registrar or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the court, as the case may be, otherwise directs.

SECTION 45: PROPOSED USE OF TRADE MARK BY COMPANY TO BE FORMED

(1) No application for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark, if the Registrar is satisfied that a Company is about to be formed and registered under the Companies Act, 1956 (.1 of 1956) -, and that the application intends to assign the trade mark to that company with a view to the use thereof in relation to those goods by the company.

(2) The tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.

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

SECTION 46: REMOVAL FROM REGISTER AND IMPOSITION OF LIMITATIONS ON GROUND OF NON-USE

(1) Subject to the provisions of section 47-, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either -

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45-apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) that up to a date one month before the date of the application, a continuous period of five years 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 by any proprietor thereof for the time being:
Provided that, except where the applicant has been permitted under sub- section (3) of section 12-to register an identical or nearly resembling trade mark in respect of the goods 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 (b) in relation to any goods, 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 goods of the same description, being goods in respect of which the trade mark is registered.

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

(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, 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; and

(b) a person has been permitted under sub-section (3) of 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 the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to a High Court 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 sub- section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.

SECTION 47: DEFENSIVE REGISTRATION OF WELL KNOWN TRADE MARKS

(1) Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 46-, the trade mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark, and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.

(2) The registered proprietor of trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.

(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods be deemed to be and shall be registered as, associated trade marks.

(4) On application made in the prescribed manner to a High Court or to the Registrar, by any person aggrieved, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of sub-section (1) are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in sub-section (1).

(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.

(6) Except as otherwise expressly provided in this section, the provisions of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.

SECTION 48: REGISTERED USERS

(1) Subject to the provisions of section 49-, a person other than the registered proprietor of a trade mark may be registered as the registered user thereof in respect of any or all of the goods in respect of which the trade mark is registered otherwise than as a defensive trade mark; but the Central Government may, by rules made in this behalf, provide that no application for registration as such shall be entertained unless the agreement between the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks.

(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 46-or for any other purpose for which such use is material under this Act or any other law.

SECTION 49: APPLICATION FOR REGISTRATION AS REGISTERED USERS

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

(i) 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

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

(a) giving particulars of the relationship, existing or proposed, between the 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;

(b) stating the goods in respect of which registration is proposed;

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

(d) 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

(iii) 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 (1) have been complied with to his satisfaction, the Registrar shall forward the application together with his report and all the relevant documents to the Central Government.

(3) On receipt of an application under sub-section (2), the Central Government, having regard to all the circumstances of the case and to the interests of the general public, and the development of any industry, trade or commerce in India, may direct the Registrar-

(a) to refuse the application; or

(b) to accept the application either absolutely or subject to any conditions, restrictions or limitations which the Central Government may think proper to impose: Provided that no direction for refusing the application or for its acceptance conditionally shall be made unless the applicant has been given an opportunity of being heard.

(4) The Registrar shall dispose of the application in accordance with the directions issued by the Central Government under sub-section (3).

(5) The Central Government and 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.

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

SECTION 50: EXISTING REGISTRATION OF REGISTERED USERS NOT TO HAVE EFFECT AFTER THREE YEARS

Notwithstanding anything contained in any law for the time being in force or in any contract or agreement, every registration made before the commencement of this Act of a registered user shall cease to have effect after the expiration of three years from such commencement.

SECTION 51: POWER OF REGISTERED USER TO TAKE PROCEEDINGS AGAINST INFRINGEMENT

(1) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and if the proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.

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

SECTION 52: POWER OF REGISTRAR TO VARY OR CANCEL REGISTRATION AS REGISTERED USER

(1) Without prejudice to the provisions of section 56-, to the registration of a person as a registered user-

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

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

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

(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause or to be likely to cause, deception or confusion;

(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for registration, which if accurately represented or disclosed would have justified the refusal of the application for 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 have justified the refusal of an application for registration of the registered user;

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

(d) maybe cancelled by the Registrar of his own motion or on the application in writing in the prescribed manner of 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 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 in relation to which the trade mark is no longer registered.

(2) The Registrar shall, before varying any registration under clause (a) of sub- section (1) or cancelling any registration on any of the grounds mentioned in sub -clause (ii) or sub -clause (iii) or sub-clause (iv) of clause (c) of that sub- section, forward the application made in that behalf for the consideration of the Central Government, and the

Central Government may, after making such inquiry as it thinks fit, issue such directions to the Registrar as it thinks fit, and the Registrar shall dispose of the application in accordance with such directions.

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

SECTION 53: REGISTERED USER NOT TO HAVE RIGHT OF ASSIGNMENT OR TRANSMISSION

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

Explanation 1

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

(a) where the registered user being an individual enters into a partnership with any other person for carrying on the business concerned; but in any such case the firm may use the trade mark, if otherwise in force, only for so long as the registered user is a member of the firm ; (b) where the registered user being a firm subsequently undergoes a change in its constitution; but in any such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long as any partner of the original firm at the time of its registration as registered user, continues to be a partner of the reconstituted firm.

Explanation 2

: For the purposes of Explanation I, "firm" has the same meaning as in the Indian Partnership Act, 1932 (9 of 1932)-

SECTION 54: USE OF ONE OF ASSOCIATED OR SUBSTANTIALLY IDENTICAL TRADE MARKS EQUIVALENT TO USE OF ANOTHER

(1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the 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.

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

SECTION 55: USE OF TRADE MARK FOR EXPORT TRADE AND USE WHEN FORM OF TRADE CONNECTION CHANGES

(1) The application in India of trade mark to goods to be exported from India and any other act done in India in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods 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 between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods between which and the said person or a predecessor in title of that person a different form of connection in the course of trade subsisted or subsists.

SECTION 56: POWER TO CANCEL OR VARY REGISTRATION AND TO RECTIFY THE REGISTER

(1) On application made in the prescribed manner to a High Court 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.

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

(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 (1) or sub-section (2) .

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

(6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.

SECTION 57: CORRECTION OF REGISTER

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

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

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

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

(e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark, and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

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

SECTION 58: ALTERATION OF REGISTERED TRADE MARK

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

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

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

SECTION 59: ADAPTATION OF ENTRIES IN REGISTER TO AMENDED OR SUBSTITUTED CLASSIFICATION OF GOODS

(1) The Registrar shall not, in exercise of any power conferred on him by rules made with reference to clause (a) of sub-section (2) of section 133-, make any amendment of the register which would have the effect of adding any goods or classes of goods 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:
Provided that this sub-section shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

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

SECTION 60: CERTAIN PROVISIONS OF THIS ACT NOT APPLICABLE TO CERTIFICATION TRADE MARKS

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

(a)section 9-;

(b)sections 18-,20-and21-, except as expressly applied by this Chapter;

(c)sections 28-,29-,30-,39-,40-,41-,45-,46-,47-,48-,49-,51-,52-,53-and sub-section (2) of section 55-;

(d) Chapter X, except section 81-;

(e) any provision the operation of which is limited by the terms thereof to registration in Part B of the register.

SECTION 61: REGISTRATION OF CERTIFICATION TRADE MARKS

(1) A certification trade mark shall be registrable only in Part A of the register.

(2) 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.

(3) In determining whether a certification trade mark is adapted to distinguish in accordance with the provisions of clause (c) of sub-section (1) of section 2-, the Tribunal may have regard to the extent to which -

(a) the mark is inherently so adapted to distinguish in relation to the goods in question; and

(b) by reason of the use of the mark or of any other circumstances, the mark is in fact so adapted to distinguish in relation to the goods in question.

SECTION 62: APPLICATIONS FOR REGISTRATION OF CERTIFICATION TRADE MARKS

(1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in writing 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 65-.

(2) Subject to the provisions of section 61-, the provisions of sub-sections (1), (2), (3), (4) and (6) of section 18-and of sections 19-and22-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 authorization 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 were an application under section 18-and to any other considerations (not being matters within the competence of the Central Government under section 63-) 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.

SECTION 63: CONSIDERATION OF APPLICATIONS FOR REGISTRATION BY CENTRAL GOVERNMENT

(1) When authorisation to proceed with an application under section 62-has been given, the Registrar shall forward the application to the Central Government.

(2) The Central Government shall consider the application so forwarded with regard to the following matters, namely :-

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

(b) whether the draft of the regulations to be deposited under section 65 -is satisfactory;

(i) direct that the application shall not be accepted; or

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

(3) Except in the case of a direction for acceptance and approval without modification and unconditionally the Central Government shall not decide any matter under sub-section (2) without giving to the applicant an opportunity of being heard.

(4) Notwithstanding anything contained in this section, the Central Government may, at the request of the applicant made through the Registrar, consider the application with regard to any of the matters referred to in sub-section (2) before authorisation to proceed with the application is given, but the Central Government shall be at liberty to reconsider any matter on which it has given a decision under this sub-section if any, amendment or modification is thereafter made in the application or in the draft of the regulations.

SECTION 64: OPPOSITION TO REGISTRATION OF CERTIFICATION TRADE MARKS

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

(2) In deciding any matter relating to opposition proceedings under the provisions aforesaid the Tribunal shall have regard only to the considerations referred to in sub-section (3) of section 62-, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Central Government under sub-section (3) of this section of any opposition relating to any of the matters referred to in section 63-.

(3) When notice of opposition is given relating to any of the matters referred to in section 63-, the Central Government shall, after hearing the parties, if so required by them, and considering any evidence and having regard to the matters aforesaid, direct the Registrar-

(a) to refuse registration; or

(b) to register the mark either absolutely or subject to such conditions or limitations, or amendments or modifications of the application or of the regulations to be deposited under section 65-, as the Central Government may think proper to impose or make; and the Registrar shall dispose of the matter in accordance with the directions issued by the Central Government under this sub-section.

SECTION 65: DEPOSIT OF REGULATIONS GOVERNING THE USE OF A CERTIFICATION TRADE MARK

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

(2) The regulations so deposited may on the application of the registered proprietor be altered by the Registrar with the consent of the Central Government.

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

SECTION 66: RIGHTS CONFERRED BY REGISTRATION OF CERTIFICATION TRADE MARKS

(1) Subject to the provisions of sections 33-,34-and68-, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods.

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

SECTION 67: INFRINGEMENT OF CERTIFICATION TRADE MARKS

The right conferred by section 66-is infringed by any person who, not being the registered proprietor of the certification trade mark or a person authorized by him in that behalf under the regulations deposited under section 65-, 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 in respect of which it is registered, and in such manner as to render the use of the mark, likely to be taken as being used as a trade mark.

SECTION 68: ACTS NOT CONSTITUTING INFRINGEMENT OF CERTIFICATION TRADE MARKS

(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered certification trade mark :-

(a) where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, or in relation to goods to be exported to any market or in 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 certified by the proprietor of the mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorization under the relevant regulations has applied the mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the mark;

(c) the use of a certification trade mark in relation to goods 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 are so adapted and neither the purpose nor the effect of the use of mark is to indicate otherwise than in accordance with the fact that the goods are certified by the proprietor

(2) Clause (b) of sub-section (1) shall not apply to the case of use consisting of the application of a certification trade mark to goods, notwithstanding that they are such goods as are mentioned in that clause if such application is contrary to the regulations referred to in that clause.

(3) Where a certification trade mark is one of two or more trade mark: registered under this Act, which are identical or nearly resemble each other the use of any of those trade marks in exercise of the right to the use of that trade mark given by registration, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.

SECTION 69: CANCELLATION OR VARYING OF REGISTRATION

The Central Government may, on the application in the prescribed manner of any person aggrieved or on the recommendation of the Registrar, and after giving the proprietor an opportunity of opposing the application or recommendation, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying, the deposited regulations, on any of the following grounds, namely:-

(a) that the proprietor is no longer competent, in the case of any of the good in respect of which the mark is registered, to certify those goods;

(b) that the proprietor has failed to observe any provision of the deposited regulations to be observed on his part;

(d) that it is requisite for the public advantage that, if the mark remains registered, the regulations should be varied; and neither a High Court nor the Registrar shall have any jurisdiction to make an order under section 56-on any of those grounds.

SECTION 70: REGISTRAR TO GIVE EFFECT TO ORDERS OF CENTRAL GOVERNMENT

The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made by the Central Government under section 69-

SECTION 71: TEXTILE GOODS

The Central Government may prescribe classes of goods (in this Chapter referred 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.

SECTION 72: RESTRICTION ON REGISTRATION OF TEXTILE GOODS

(1) In respect of textile goods being piece goods -

(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 adapted to distinguish;

(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.

SECTION 73: REFUSED TEXTILE MARKS LIST

(1) No addition shall, after the commencement of this Act, be made to the Refused Textile Marks List maintained under the Trade Marks Act, 1940 (5 of 1940).

(2) A mark already entered on the Refused Textile Marks List may, however, be continued to be so entered:
Provided that an application therefor is made in the prescribed manner and with the prescribed fee within one year after the commencement of this Act, in which case it will be renamed in the List for a period of seven years from the date of the application.

SECTION 74: STAMPING OF PIECE GOODS, COTTON YARN AND THREAD

(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 (63 of 1948)-, shall not be removed for sale from the last 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 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.

(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 75-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 the English or the metric system in each bundle; and

(b) the count of the yarn contained in the bundle and in 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 75 -shall exempt all premises where the work is done by members of one family with or without the assistance of not more than ten other employees, and all premises controlled by a cooperative society where not more than twenty workers are employed in the premises.

SECTION 75: DETERMINATION OF CHARACTER OF TEXTILE GOODS BY SAMPLING

(1) For the purposes of this Act, the Central Government may make rules,-

(a) to provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, gauge or weight for the number of samples to be selected and tested and for the selection of the samples;

(b) to provide for the manner in which for the purposes of section 74-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, dyeing 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 piece" for the purpose of section 74 of this Act or section 18 of the Sea Customs Act, 1978 (8 of 1978).

(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 (1), 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 be selected.

(3) The average of the results of the testing in pursuance of rules under sub- section (1) 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.

(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 (1) 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 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 (1), or in sub-section (2), as the case may be.

(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.

SECTION 76: MEANING OF APPLYING TRADE MARKS AND TRADE DESCRIPTIONS

(1)A person shall be deemed to apply a trade mark or mark or trade description to goods who-

(a) applies it to the goods themselves; or

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or

(c) places, encloses, or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade mark or mark or trade description has been applied; or

(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to the belief that the goods 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 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 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 worked into, or annexed or affixed to, the goods or to any package or other thing.

SECTION 77: FALSIFYING AND FALSELY APPLYING TRADE MARKS

(1) A person shall be deemed to falsify a trade mark who, either,-

(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or

(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.

(2) A person shall be deemed to falsely apply to goods 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 any package containing goods;

(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling, or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.

(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods, the burden of proving the assent of the proprietor shall lie on the accused.

SECTION 78: PENALTY FOR APPLYING FALSE TRADE MARKS, TRADE DESCRIPTIONS, ETC

Any person who,-

(a) falsifies any trade mark; or

(b) falsely applies to goods any trade mark; or

(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying, or of being used for falsifying, a trade mark; or

(d) applies any false trade description to goods; or

(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 117-, a false indication of such country, place, name or address; or

(f) tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under section 117-; or

(g) causes any of the things above mentioned in this section to be done, shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which may extend to two years, or with fine, or with both:
Provided that where the offence under this section is in relation to goods or any package containing goods which are drugs within the meaning of clause (b) of section 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940)-or "food" as defined in clause (v) of section 2 of the Prevention of Food Adulteration Act, 1954(37 of 1954) -, the offender shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.

SECTION 79: PENALTY FOR SELLING GOODS TO WHICH A FALSE TRADE MARK OR FALSE TRADE DESCRIPTION IS APPLIED

Any person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or manufacture, any goods or things to which any false trade mark or false trade description is applied or which, being required under section 117-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 the person for whom the goods are manufactured, are without the indication so required, shall, unless he proves,-

(a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of the 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; and

(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

(c) that otherwise he had acted innocently, be punishable with imprisonment for a term which may extend to two years, or with fine, or with both:
Provided that when the offence against this section is in relation to goods or any package containing goods which are drugs as defined in clause (b) of section 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940)-or "food" as defined in clause (v) of section 2 of the Prevention of Food Adulteration Act, 1954(37 of 1954)-, the of fender shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.

SECTION 80: PENALTY FOR REMOVING PIECE GOODS, ETC., CONTRARY TO SECTION 74

If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 74-, or sells or exposes for sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees,

SECTION 81: PENALTY FOR FALSELY REPRESENTING A TRADE MARK AS REGISTERED

(1) No person shall make any representation-

(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or

(b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or

(c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not in fact registered; or

(d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations 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 (1), he shall be punishable with imprisonment for a term which may extend to six months, or with fine which may extend to five hundred rupees, 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 referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except -

(a) where that word or other expression is used in direct association with other words delineated in characters at least as large as those in which that word or other expression is delineated and indicating that the reference is to registration as trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or

(b) where that other expression is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a) ; or

(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country.

SECTION 82: PENALTY FOR IMPROPERLY DESCRIBING A PLACE OF BUSINESS AS CONNECTED WITH THE TRADE MARKS OFFICE

If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to six months, or with fine, or with both.

SECTION 83: PENALTY FOR FALSIFICATION OF ENTRIES IN THE REGISTER

If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

SECTION 84: NO OFFENCE IN CERTAIN CASES

The provisions of sections 77-,78-and79-shall, in relation to a registered trade mark or proprietor of such mark, be subject to the rights created or recognised by this Act, and no act or omission shall be deemed to be an offence-under section 77-orsection 78-orsection 79-if,-

(a) the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and

(b) the alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law for the time being in force.

SECTION 85: FORFEITURE OF GOODS

(1) Where a person is convicted of an offence under section 78-orsection 79-, or is acquitted of an offence under section 78-on proof that he acted without intent to defraud, or under section 79-on proof of the matters specified in clauses (a), (b) and (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.

(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 an 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.

SECTION 86: EXEMPTION OF CERTAIN PERSONS EMPLOYED IN ORDINARY COURSE OF BUSINESS

Where a person accused of an offence under section 78-proves-

(a) that in the ordinary course of his business he is employed on behalf of other persons to apply trade marks or trade descriptions, or, as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making trade marks; and

(b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other thing by way of profit or commission dependent on the sale of such goods; and

(c) that, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commission of the alleged of fence, no reason to suspect the genuineness of the trade mark or trade description; and

(d) that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the trade mark or trade description was applied; he shall be acquitted.

SECTION 87: PROCEDURE WHERE INVALIDITY OF REGISTRATION IS PLEADED BY THE ACCUSED

(1) Where the offence charged under section 78-orsection 79-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 magistrate is satisfied that such defence is prima fade tenable, he shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act, for the rectification of the register on the ground that the registration is invalid.

(b) If the accused proves to the magistrate that he has made such application within the time so limited or within such further time as the magistrate may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification and of the appeal, if any, therefrom.

(c) If within a period of three months or within such extended time as may be allowed by the magistrate the accused fails to apply to the High Court for rectification of the register, the magistrate shall proceed with the case as if the registration were valid.

(2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the magistrate shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.

SECTION 88: OFFENCES BY COMPANIES

(1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:
Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

SECTION 89: COGNIZANCE OF CERTAIN OFFENCES

(1) No court shall take cognizance of an of fence under section 81-,section 82-orsection 83-except on complaint in writing made by the Registrar or any officer authorised by him in writing.

(2) No court inferior to that of a sessions judge, presidency magistrate or magistrate of the first class shall try an offence under this Act.

SECTION 90: EVIDENCE OF ORIGIN OF GOODS IMPORTED BY SEA

In the case of goods brought into India by sea, evidence of the port of shipment shall, in a prosecution for an offence under this Act or under clause (d), clause (dd), clause (e), clause (f), clause (h) clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878 (8 of 1878), be prima facie evidence of the place or country in which the goods were made or produced.

SECTION 91: COSTS OF DEFENCE OR PROSECUTION

In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deemed reasonable having regard to all the circumstances of the case and the conduct of the parties. Costs so awarded shall be recoverable as if they were a fine.

SECTION 92: LIMITATION OF PROSECUTION

No prosecution for an offence under this Act or under clause (d) clause (dd), clause (e), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878 (8 of 1878), shall be commenced after the 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.

SECTION 93: INFORMATION AS TO COMMISSION OF OFFENCE

An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter, shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.

SECTION 94: PUNISHMENT OF ABETMENT IN INDIA OF ACTS DONE OUT OF INDIA

If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in that place the act which he abetted.

SECTION 95: INSTRUCTIONS BY CENTRAL GOVERNMENT AS TO PERMISSIBLE VARIATIONS TO BE OBSERVED BY CRIMINAL COURTS

The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight, which are to be recognised by criminal courts as permissible in the case of any goods.

SECTION 96: IMPLIED WARRANTY ON SALE OF MARKED GOODS

On the sale or in the contract for the sale of any goods to which a trade mark or mark or trade description has been applied, the seller shall be deemed to warrant that the mark is a genuine mark and not falsely applied, or that the trade description is not a false trade description within the meaning of this Act, unless the contrary is expressed in some writing signed by or on behalf of the seller and delivered at the time of the sale or contract to and accepted by the buyer.

SECTION 97: POWERS OF REGISTRAR

In all proceedings under this Act before the Registrar-

(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;

(b) the Registrar may, subject to any rules made in this behalf under section 133-, make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a civil court:
Provided that the Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the mark;

SECTION 98: EXERCISE OF DISCRETIONARY POWER BY REGISTRAR

Subject to the provisions of section 101-, the Registrar shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within the prescribed time) giving to that person an opportunity of being heard.

SECTION 99: EVIDENCE BEFORE THE REGISTRAR

In any proceeding under this Act before the Registrar, evidence shall be given by affidavit:
Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit.

SECTION 100: DEATH OF PARTY TO A PROCEEDING

If a person who is a party to a proceeding under this Act (not being a proceeding in a court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of the transmission of the interest of the deceased person, substitute in the proceeding his successor in interest in his place, or, if the Registrar is of opinion that the interest of the deceased person is sufficiently represented by the surviving parties, permit the proceeding to continue without the substitution of his successor in interest.

SECTION 101: EXTENSION OF TIME

(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in the Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly.

(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.

SECTION 102: ABANDONMENT

Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may by notice require the applicant to remedy the default within a time specified and after giving him, if so desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.

SECTION 103: PRELIMINARY ADVICE BY THE REGISTRAR AS TO DISTINCTIVENESS

(1) The Registrar may, on application made to him in the prescribed manner by any person who proposes to apply for the registration of a trade mark in Part A or Part B of the register, give advice as to whether the trade mark appears to him prima fade to be inherently adapted to distinguish, or capable of distinguishing, as the case may be.

(2) If, on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative made within three months after the advice was given, the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or is not capable of distinguishing, as the case may be, 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.

SECTION 104: PROCEDURE BEFORE CENTRAL GOVERNMENT

In all proceedings under this Act before the Central Government, evidence shall be given by affidavit:
Provided that the Central Government may, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purpose have all the powers of a civil court referred to in clause (a) of section 97-

SECTION 105: SUIT FOR INFRINGEMENT, ETC., TO BE INSTITUTED BEFORE DISTRICT COURT

No suit-

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered; shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

SECTION 106: RELIEF'S IN SUITS FOR INFRINGEMENT OR FOR PASSING OFF

(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 105-includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

(2) Not with standing anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case-

(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark; or

(b) where in a suit for infringement the defendant satisfies the court-

(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was 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 in respect of which it was registered; or

(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and

(ii) that when he became aware of the existence and nature of the plaintiff's trade mark, he forthwith ceased to use the trade mark complained of.

SECTION 107: APPLICATION FOR RECTIFICATION OF REGISTER TO BE MADE TO HIGH COURT IN CERTAIN CASES

(1) Where in a suit for infringement of a registered trade mark the "validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (d) of sub-section (1) 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 46-, sub-section (4) of section 47-orsection 56-, such application shall be made to the High Court and not to the Registrar.

(2) Subject to the provisions of sub-section (1), where an application for rectification of the register made to the Registrar under section 46-or sub- section (4) of section 47-orsection 56-, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court.

SECTION 108: PROCEDURE FOR APPLICATION FOR RECTIFICATION BEFORE A HIGH COURT

(1) An application for rectification of the register made to a High Court under section 46-, sub-section (4) of section 47-orsection 56-shall be in- such form and shall contain such particulars as may be prescribed.

(2) Every such application shall be heard by a single Judge of the High Court:
Provided that any such Judge may, if he thinks fit, refer the application at any stage of the proceedings for decision to a Bench of that High Court.

(3) Where any such application is heard by a single Judge of the High Court, an appeal shall lie from the order made by him on application to a Bench of the High Court.

(4) Subject to the provisions of this Act and the rules made thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of 1908), shall apply to applications to a High Court under this section.

(5) A certified copy of every order or judgment of the High Court or of the Supreme Court, as the case may be, relating to a registered trade mark under this section shall be communicated to the Registrar by that Court and the Registrar shall give effect to the order of the Court and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

SECTION 109: APPEALS

(1) No appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government or from any act or order of the Registrar for the purpose of giving effect to any such decision, order or direction.

(2) Save as otherwise expressly provided in sub-section (1) or in any other provision of this Act, an appeal shall lie to the High Court within the prescribed period from any order or decision of the Registrar under this Act or the rules made thereunder.

(3) Every such appeal shall be preferred by petition in writing and shall be in such form and shall contain such particulars as may be prescribed.

(4) Every such appeal shall be heard by a single Judge of the High Court:
Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the proceeding to a Bench of the High Court.

(5) Where an appeal is heard by a single Judge, a further appeal shall lie to a Bench of the High Court.

(6) The High Court in disposing of an appeal under this section shall have the power to make any order which the Registrar could make under this Act.

(7) In an appeal by an applicant for registration against a decision of the Registrar under section 17-orsection 18-orsection 21-, it shall not be open, save with the express permission of the court, to the Registrar or any party opposing the appeal to advance grounds other than those recorded in the said decision or advanced by the party in the proceedings before the Registrar, as the case may be, and where any such additional grounds are advanced, the- applicant for registration may, on giving notice in the prescribed manner, withdraw his application without being liable to pay the costs of the Registrar or the parties opposing his application.

(8) Subject to the provisions of this Act and of the rules made thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of 1908), shall apply to appeals before a High Court under this Act.

SECTION 110: POWER OF HIGH COURTS TO MAKE RULES

The High Court may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it.

SECTION 111: STAY OF PROCEEDINGS WHERE THE VALIDITY OF REGISTRATION OF THE TRADE MARK IS QUESTIONED, ETC

(1) Where in any suit for the infringement of a trade mark -

(a) the defendant pleads that the registration of the plaintiff's trade mark is invalid; or

(b) the defendant raises a defence under clause (d) of sub -section (1) of section 30 -and the plaintiff pleads the invalidity of the registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall, -

(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark in prima fade tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub -section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(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 trademark 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 insofar 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 making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

SECTION 112: APPEARANCE OF REGISTRAR IN LEGAL PROCEEDINGS

(1) The Registrar shall have the right to appear and be heard-

(a) in any legal proceedings before a High Court in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;

(b) in any appeal to the High Court from an order of the Registrar on an application for registration of a trade mark -

(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or

(ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest, and the Registrar shall appear in any case if so directed by the court.

(2) Unless the High Court otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue, or of the grounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.

SECTION 113: COSTS OF REGISTRAR IN PROCEEDINGS BEFORE HIGH COURT

In all proceedings under this Act before a High Court the costs of the Registrar shall be in the discretion of the High Court, but the Registrar shall not be ordered to pay the costs of any of the parties.

SECTION 114: REGISTERED USER TO BE IMPLEADED IN CERTAIN PROCEEDINGS

(1) In every proceeding under Chapter VII or under section 109-, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, shall be made a party to the proceeding.

(2) Notwithstanding anything contained in any other law, a registered user so made a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding.

SECTION 115: EVIDENCE OF ENTRIES IN REGISTER, ETC., AND THINGS DONE BY THE REGISTRAR

(1)A copy of any entry in the register or of any document referred to in sub-section (1) of section 125-, 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.

(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 fade evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or not done.

SECTION 116: REGISTRAR AND OTHER OFFICERS NOT COMPELLABLE TO PRODUCE REGISTER, ETC

The Registrar or any other officer of the Trade Marks Registry shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special cause.

SECTION 117: POWER TO REQUIRE GOODS TO SHOW INDICATION OF ORIGIN

(1) The Central Government may, by notification in the Official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of India and imported into India, or which are made or produced within the limits of India, shall from such date as may be appointed by the notification not being less than three months from its issue, have applied to them 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 manner in which such indication shall be applied, that is to say, whether to the goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessary, that is to say, whether on importation only, or also at the time of sale, whether by wholesale or retail or both.

(3) No notification under this section shall be issued, unless application is made for it's 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.

(4) The provisions of section 23 of the General Clauses Act, 1897 (10 of 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 satisfied at the time of importation that they are intended for exportation whether after transhipment in or transit through India or otherwise.

SECTION 118: POWER TO REQUIRE INFORMATION IN RESPECT OF IMPORTED GOODS BEARING FALSE TRADE MARKS

(1) Where goods, which are prohibited to be imported into India under clause (d), clause (dd), clause (e), clause (/), clause (h), clause (;) or clause (/) of section 18 of the Sea Customs Act, 1878 (8 of 1878)and are liable to detention and confiscation on importation under that Act, are imported into India, the2[Commissioner of Customs] if, upon representation made to him, he has reason to believe that the trade mark complained of is used as a false trade mark, may require the importer of the goods, or his agent, to produce any documents in his possession relating to the goods and to furnish information as to the name and address of the person by whom the goods were consigned to India and the name and address of the person to whom the goods were sent in India.

(2) 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.

(3) Any information obtained from the importer of the goods or his agent under this section may be communicated by the 2[Commissioner of Customs] to the registered proprietor or registered user of the trade mark which is alleged to have been used as a false trade mark.

SECTION 119: CERTIFICATE OF VALIDITY

If in any legal proceeding for rectification of the register before a High Court a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect, and if such a certificate is granted, then in any subsequent legal proceeding in which the said validity comes into question the said proprietor on obtaining a final order or judgment in his favour affirming the 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 costs, charges and expenses as between legal practitioner and client.

SECTION 120: GROUNDLESS THREATS OF LEGAL PROCEEDINGS

(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration as 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.

(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 51, with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.

(3) Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.

(4) A suit under sub-section (1) shall not be instituted in any court inferior to a District Court.

SECTION 121: ADDRESS FOR SERVICE

An address for service stated in an application or notice of opposition shall, for the purposes of the application or notice of opposition, be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.

SECTION 122: TRADE USAGE, ETC., TO BE TAKEN INTO CONSIDERATION

In any suit or other proceeding relating to a trademark, the tribunal shall admit evidence of the usage of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons.

SECTION 123: AGENTS

Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done, instead of by that person himself, by a person duly authorised in the prescribed manner, who is -

(a) a legal practitioner, or

(b) a person registered in the prescribed manner as a trade marks agent, or

SECTION 124: INDEXES

There shall be kept under the direction and supervision of the Registrar,-

(a) an index of registered trade marks,

(b) an index of trade marks in respect of which applications for registration are pending,

(d) an index of the names of registered users.

SECTION 125: DOCUMENTS OPEN TO PUBLIC INSPECTION

(1) Save as otherwise provided in sub-section (5) of section 49-,-

(a) the register, and any document upon which any entry in the register is based;

(b) every notice of opposition to the registration of a trade mark, application for rectification before the Registrar, counter-statement thereto, and any affidavit or document filed by the parties in any proceedings before the Registrar;

(d) the indexes mentioned in section 124 -; and

(e) such other documents as the Central Government may, by notification in the Official Gazette, specify, shall, subject to such conditions as may be prescribed, be open to public inspection at the Trade Marks Registry.

(2) Any person may, on application to the Registrar and on payment of such fees as may be prescribed, obtain a certified copy of any entry in the register or any document referred to in sub-section (1).

SECTION 126: REPORTS OF REGISTRAR TO BE PLACED BEFORE PARLIAMENT

The Central Government shall cause to be placed before both Houses of Parliament once a year a report respecting the execution by or under the Registrar of this Act.

SECTION 127: FEES

(1) There shall be paid in respect of applications and registration and other matters under this Act such fees 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.

(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.

SECTION 128: SAVINGS IN RESPECT OF CERTAIN MATTERS IN CHAPTER X NOTHING IN CHAPTER X SHALL

(a) exempt any person from any suit or other proceeding which might, but for anything in that Chapter, be brought against him,

(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 Chapter X or against clause (d), clause (dd), clause (e), clause (f), clause (h), clause (i) or clause (j) of section 18 of the Sea Customs Act, 1878 (8 of 1878), or

(c) be construed so as to render liable to any prosecution or punishment any servant of a master resident in India who in good faith acts in obedience to the instructions of such master, and, on demand made by or on behalf of the prosecutor, has given full information as to his master and as to the instructions which he has received from his master.

SECTION 129: DECLARATION AS TO OWNERSHIP OF TRADE MARK NOT REGISTRABLE UNDER THE INDIAN REGISTRATION

ACT, 1908

Notwithstanding anything contained in the Indian Registration Act, 1908 (16 of 1908)-, no document declaring or purporting to declare the ownership or title of a person to a trade mark other than a registered trade mark shall be registered under that Act.

SECTION 130: GOVERNMENT TO BE BOUND

The provisions of this Act shall be binding on the Government.

SECTION 131: CONVENTION COUNTRIES

(1) With a view to the fulfilment of a treaty, convention or arrangement, with any country 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 to be a convention country 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 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, 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 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 trade mark in two or more convention countries, the period of six months referred to in the last preceding sub-section shall be reckoned from the date on which the earlier or earliest of those applications was made.

SECTION 132: PROVISIONS AS TO RECIPROCITY

Where any country 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 shall be entitled, either solely or jointly with any other person-

(a) to apply for the registration of, or be registered as the proprietor of, a trade mark in Part A or Part B of the register,

(b) to be registered as the assignee of the proprietor of a registered trade mark, or

SECTION 133: POWER OF CENTRAL GOVERNMENT TO MAKE RULES

(1) The Central Government may, by notification in the. Official Gazette and subject to the condition of previous publication, make rules to carry out the purposes 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:-

(a) the classification of goods for the purposes of the registration of trade marks, and the empowering of the Registrar to amend the register so far as may be necessary for the purpose of adapting the entries therein to any amended or substituted classification;

(b) the making of duplicates of trade marks and other documents connected therewith;

(c) the securing and regulating the publication, sale or distribution of copies of trade marks and other documents connected therewith;

(d) the additional matters to be entered in the register;

(e) the conditions and restrictions subject to which the register, the Refused Textile Marks List and other documents may be inspected;

(f) the form of certificates of registration;

(g) the further documents, information or evidence which should accompany an application under sub-section (1) of section 49-;

(h) the prescribing of classes of goods as textile goods for the purposes of section 71-;

(i) the awarding of cost by the Registrar under section 97-;

(j) the conditions subject to which a person may be registered as a trade marks agent, and the conditions subject to which an agent referred to in section 123 -may act;

(k) the fees to be paid under this Act;

(l) the establishment of Offices of the Trade Marks Registry for facilitating the working of this Act, the territorial jurisdiction of each office of the Trade Marks Registry and the preparation of the copies of the register to be kept at such offices;

(m) the transfer of applications and proceedings pending at the commencement of this Act in any office of the Registry to the appropriate office of the Registry;

(n) the manner in which, in proceedings under this Act before the Central Government or the Registrar, applications shall be made, notices given and matters advertised;

(o) the times or periods required by this Act to be prescribed;

(p) the regulation generally of the business of the Trade Marks Registry and of the offices established under clause (l) and the regulation of all things by this Act placed under the direction or control of the Central Government or the Registrar;

(q) the number of samples to be selected and tested and for the selection of the samples for the purposes of section 75-;

(r) the manner in which cotton yarn and cotton thread shall be marked with the particulars required by section 74 -, and the exemption of certain premises from the provisions of that section;

(s) the classes of goods included in the expression "piece goods, such as are ordinarily sold by length or by the piece" for the purposes of section 74, and clause (f) of section 18 of the Sea Customs Act, 1878 ;

(t) any other matter which is required to be or may be prescribed.

SECTION 134: LAYING OF RULES BEFORE PARLIAMENT

Every rule made under this Act shall be laid, as soon as may be after it is made, before each House of Parliament; while it is in session, for a total period of thirty days which may be comprised in one session or in two or more successive sessions, and if, before the expiry of the session immediately following the session or the successive sessions aforesaid, both Houses agree in making any modification in the rule or both Houses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no effect, as the case may be; so, however, that any such modification or annulment .shall be .without prejudice to the validity of anything previously done under that rule.]

SECTION 135: AMENDMENTS

The enactments specified in the Schedule shall be amended in the manner specified therein.

SECTION 136: REPEALS AND SAVINGS

(1)The Indian Merchandise Marks Act, 1889 (4 of 1889), and the Trade Marks Act, 1940 (5 of 1940), are hereby repealed.

(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 Indian Merchandise Marks Act, 1889 (4 of 1889), or the Trade Marks Act, 1940 (5 of 1940), shall, if in force at the commencement of this Act, continue in force, and have effect as if made, issued, given or done under the corresponding provision of this Act.

(3) The provisions of this Act shall apply to any application for registration of a trade mark pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.

(4) Notwithstanding anything contained in 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.

TRADE AND MERCHANDISE MARKS RULES, 1959

25-11-1959

In exercise of the powers conferred by section 133 of the Trade and Merchandise Marks Act, 1958(43 of 1958) read with section 22 of the General Clauses Act, 1897(10 of 1897), the Central Government is pleased to make the following rules, the same having been previously published as required by sub-section (1) of the first mentioned section, namely:-

RULE 01: SHORT TITLE AND COMMENCEMENT

(1) These rules may be called the Trade and Merchandise Marks Rules, 1959.

(2) They shall come into force on the date on which the Act comes into force.

RULE 02: DEFINITIONS

In these rules, unless the context otherwise requires,-

(a) "Act" means the Trade and Merchandise Marks Act, 1958 (43 of 1958);

(b) "agent" means a person authorised under section 123;

(d) "appropriate office of the Trade Marks Registry" means the relevant office of the Trade Marks Registry as specified in rule 4;

(e) "form" means a form set forth in either the Second or the Third Schedule;

(f) "journal" means the Trade Marks Journal;

(g) "notified date" means the date on which the rules come into force;

(h) "principal place of business in India" means the relevant place in India as specified in rule 3;

(i) "registered trade marks agent" means a trade marks agent whose name is actually on the Register of Trade Marks Agents maintained under rule 146;

(j) "schedule" means a Schedule to the rules;

(k) "section" means a section of the Act;

(l) "Specification" means the designation of goods in respect of which a trade mark or a registered user or a trade mark is registered or proposed to be registered;

(m) all other words and expressions used but not defined in the rules and defined in the Act shall have the meanings assigned to them in the Act.

RULE 03: PRINCIPAL PLACE OF BUSINESS IN INDIA

"Principal place of business in India" means-

(i) where a person carries on business in the goods concerned in a trade mark-

(a) if the business is carried on in India at only one place, that place;

(b) if the business is carried on in India at more places than one, the place mentioned by him as the principal place of business in India;

(ii) where a person is not carrying on a business in the goods concerned in a trade mark-

(a) if he is carrying on any other business in India at only one place, that place;

(b) if he is carrying on any other business in India at more places than one, the place mentioned by him as the principal place of business in India; and

(iii) where a person does not carry on any business in India but has a place of residence in India, then such place of residence in India.

RULE 04: APPROPRIATE OFFICE OF THE TRADE MARKS REGISTRY

The "appropriate office of the Trade Marks Registry" for the purposes of making an application for registration of a trade mark under section 18-or for giving notice of opposition under section 21-or for filing an application for rectification under sections 46-,47(4)-

or56-or for any other proceedings under the Act and the rules shall be-

(a) in relation to a trade mark on the Register of Trade Marks at the notified date, the office of the Trade Marks Registry within whose territorial limits-

(i) the principal place of business in India of the registered proprietor of the trade mark as entered in the register at such date is situate;

(ii) where there is no entry in the register as to the principal place of business in India of the registered proprietor, the place mentioned in the address for service in India as entered in the register at such date is situate;

(iii) In the case of jointly registered proprietors, the principal place of business in India of the proprietor whose name is entered first in the register as having such place of business in India at such date is situate;

(iv) where none of the jointly registered proprietors is shown in the register as having a principal place of business in India, the place mentioned in the address for service in India of the joint proprietors as entered in the register at such date, is situate;

(v) if no principal place of business in India of the registered proprietor of the mark or in the case of joint registration, of any of the joint proprietors of the mark, is entered in the register, and the register does not contain any address for service in India, the place of the office of the Trade Marks Registry where the application for registration of the trade mark was made, is situate; and

(b) in relation to a trade mark for which an application for registration is pending at the notified date or is made on or after the notified date, the office of the Trade Marks Registry within whose territorial limits-

(i) the principal place of business in India of the applicant as disclosed in his application 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 such place of business is situate;

(ii) where neither the applicant nor any of the joint applicants, as the case may be, has a principal place of business in India, the place mentioned in the address for service in India as specified in the application is situate.

RULE 05: JURISDICTION OF APPROPRIATE OFFICE NOT ALTERED BY CHANGE IN THE PRINCIPAL PLACE OF BUSINESS OR ADDRESS FOR SERVICE

No change in the principal place of business in India or in the address for service in India, as the case may be,

(a) of a registered proprietor or of any of the jointly registered proprietors in relation to any trade mark on the register at the notified date, made or effected subsequent to that date or,

(b) of an applicant for registration or of any of the joint applicants for registration in relation to any trade mark for which an application for registration is either pending at the notified date or is made on or after that date, made or effected subsequent to that date or to the date of filing of such application, as the case may be, shall affect the jurisdiction of the appropriate office of the Trade Marks Registry.

RULE 06: ENTRY OF THE APPROPRIATE OFFICE IN THE REGISTER

In respect of every trade mark on the register at the notified date or registered thereafter the Registrar shall cause to be entered in the register the appropriate office of the Trade Marks Registry and the Registrar may, at any time, correct any error in the entry so made.

RULE 07: TRANSFER OF PENDING APPLICATIONS AND PROCEEDINGS TO APPROPRIATE OFFICES OF THE TRADE MARKS REGISTRY

Every application and proceeding pending before the Registrar at the notified date in relation to a trade mark shall be deemed to have been transferred to the appropriate office of the Trade Marks Registry.

RULE 08: LEAVING OF DOCUMENTS, ETC

(1) Save as otherwise provided in sub-rule (2), all applications, notices, statements or other documents or any fees authorised or required by the Act or the rules to be made, served, left or sent or paid at or to the Trade Marks Register in relation to a trade mark on the Register of Trade Marks on the notified date or for which an application for registration is pending on, or is made on or after the notified date, shall be made, served, left or sent or paid to the appropriate office of the Trade Marks Registry.

(2) Documents or fees authorised or required by the Act or the rules to be sent or paid maybe sent or paid at or to either the appropriate office or the head office of the Registry in the following matters-

(a) communication and other documents including affidavits in relation to an application filed for registration of a trade mark;

(b) excess space fee for advertisement in the Trade Marks Journal; and

TM-30, TM-31, TM-32, TM-33, TM- 34, TM-35, TM-36, TM-37, TM-38, TM-40, TM-46, TM-47, TM-50, TM-54, TM-55, TM-58 and TM-59.]

RULE 09: DOCUMENTS ETC. FILED OR LEFT NOT AT THE APPROPRIATE OFFICE

2[Subject to the provisions of rule 8-, where any application], notice, statements or other document or any fee authorised or required by the Act or the rules is made, served, left or sent or paid, at or to an office which is not the appropriate office of the Trade Marks Registry, the Registrar shall return such application, notice, statement or document or fee to the person concerned.

RULE 10: ISSUE OF NOTICES ETC

Any notice or communication relating to any application, matter or proceeding under the Act or the rules shall ordinarily be issued from the appropriate office of the Trade Marks Registry but may, nevertheless, be issued from any office of the Trade Marks Registry.

RULE 11: FEES

(1) The fees to be paid in respect of applications, oppositions, registration and other matters under the Act and the rules shall be those specified in the First Schedule, hereinafter referred to as the prescribed fees.

(2) Where in respect of any matter a fee is required to be paid under the rules, the form or the application or the request of the petition, therefor, shall be accompanied by the prescribed fee.

(3) Fees may be paid in cash or sent by money order address to the Registrar of Trade Marks or by postal order or by a bank draft issued by, or by a cheque drawn on and guaranteed by, a scheduled bank as defined in the Reserve Bank of India Act, 1934-(2 of

1934) or at the discretion of the Registrar by a cheque drawn on such bank even though not so guaranteed, and if sent through posts shall be deemed to have been paid at the time when the money order or the properly addressed and prepaid letter containing the postal order, or bank draft or cheque would be delivered in the ordinary course of post.

(4) Postal orders shall be crossed and made payable to the Registrar at the appropriate office of the Trade Marks Registry and bank drafts and cheques shall also be similarly crossed and made payable to the Registrar but they shall be drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situate.

(5) Where a fee is payable in respect of the filing of a document, the date on which the entire fee is paid shall be deemed to be the date of filing of the document.

(6) Where any fee paid by a party is ordered to be returned by the Registrar under any of the provisions of the Act or the rules the amount may be refunded by money order in which event money order commission shall be deductible from such amount.

RULE 12: FORMS

(1) The forms set forth in the Second and the Third Schedules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.

(2) Any form, when filed at the Trade Marks Registry, shall be accompanied by the prescribed fee.

RULE 13: SIZE, ETC. OF DOCUMENTS

(1) Subject to any other directions that may be given by the Registrar, all applications, notices statements, or other documents except trade marks, authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or the Central Government, shall be written, typewritten, lithographed or printed in Hindi or in English in large and legible characters with deep permanent ink upon strong paper, and except in the case of affidavits, on one side only, of size of approximately 33 centimetres by 20 centimetres and shall have on the left hand part thereof a margin of not less than 4 centimetres.

(2) Duplicate documents including copies of trade marks shall be filed at the Trade Marks Registry, if at any time required by the Registrar.

RULE 14: SIGNING OF DOCUMENTS

(1)A document purporting to be signed by a partnership shall be signed by at least one of the partners and a document purporting to be signed by a body corporate shall be signed by director or by the secretary or other principal officer of the body corporate. The capacity in which an individual signs a document on behalf of a partnership or a body corporate shall be stated below his signature.

(2) Signatures to any documents if written in characters other than Roman, or if not legible shall be accompanied by a transliteration in English and in block capitals.

RULE 15: SERVICE OF DOCUMENTS

(1) All applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or the Central Government, or any other person may be sent through the post by a prepaid letter.

(2) Any application or any document so sent shall be deemed to have been made, served, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post.

(3) In proving such sending it shall be sufficient to prove that the letter was properly addressed and put into the post.

RULE 16: PARTICULARS OF ADDRESS ETC. OF APPLICANTS AND OTHER PERSONS

(1) Names and addresses of the applicants and other persons shall be given in full, together with their nationality, calling, and such other particulars as are necessary for identification.

(2) In the case of a firm the full name and nationality of every partner thereof shall be stated.

(3) In the case of foreign applicants and persons having no principal place of business in India, their addresses in their home country shall be given in addition to their address for service in India.

(4) In the case of a body corporate or firm, the country of incorporation or the nature of registration, if any, as the case may be, shall be given.

RULE 17: STATEMENT OF PRINCIPAL PLACE OF BUSINESS IN INDIA IN AN APPLICATION

(1) Every application for registration of a trade mark shall state the principal place of business in India, if any, of the applicant or in the case of joint applicants, of such of the joint applicants as have a principal place of business in India.

(2) Subject to the provisions of rules 18-,19-and21-, any written communication addressed to an applicant, or in the case of joint applicants to a joint applicant, in connection with the registration of a trade mark, at the address of his principal place of business in India given by him in the application shall be deemed to be properly addressed.

RULE 18: ADDRESS FOR SERVICE

(1) An address for service in India shall be given,

(a) by every applicant for registration of a trade mark who has no principal place of business in India;

(b) in the case of joint applicants for registration of a trade mark if none of them has a principal place of business in India;

(c) by the proprietor of a trade mark who had his principal place of business in India at the date of making the application for registration but has subsequently ceased to have such place; and

(d) by every applicant in any proceeding under the Act or the rules and every person filing a notice of opposition, who do not have a principal place of business in India.

(2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.

(3) Unless and address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.

RULE 19: ADDRESS FOR SERVICE IN APPLICATION AND OPPOSITION PROCEEDINGS

An applicant for registration of a trade mark or an opponent filing a notice of opposition may notwithstanding that he has a principal place of business in India, if he so desires, furnish the Registrar with an address in India to which communications in relation to the application or opposition proceedings only may be sent. Such address of the applicant or the opponent shall be deemed, unless subsequently cancelled, to be the actual address of the applicant or the opponent, as the case may be, and all communications and documents in relation to the application or notice of opposition may be served by leaving them at, or sending them by post to such address of the applicant or the opponent, as the case may be.

RULE 20: NON--AVAILABILITY OF AN ADDRESS FOR SERVICE

The Registrar may, at any time when a doubt arises as to the continued availability of an address for service in India entered in the register, request the person for whom it is entered, by letter directed to any other address entered in the register or if no such address is entered in the register to the address at which the Registrar considers that the letter would reach him, to confirm the address for service in India and if within three months of making such a request the Registrar receives no such confirmation, he may strike the entry in the register of the address for service in India and require such person to furnish a fresh address for service in India, or his address at the principal place of business in India, if he has any at that time.

RULE 21: AGENCY

(1) The authorisation of an agent for the purpose of section 123-shall be executed on Form TM -48 or in such other written form as the Registrar may deem sufficient and proper.

(2) In the case of such authorisation, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so authorising him; all communications directed to be made to such person in respect of the proceeding or matter may be addressed to such agent, and all appearances before Registrar relating thereto may be made by or through such agent.

(3) In any particular case the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, registered user or other person.

RULE 22: CLASSIFICATION OF GOODS

For the purposes of the registration of trade marks and of the rules goods shall be classified in the manner specified in the Fourth Schedule,

RULE 23: PRELIMINARY ADVICE BY REGISTRAR AS TO DISTINCTIVENESS

An application for preliminary advice by the Registrar under sub-section (1) of section 103-shall be made on Form TM-55 in respect of any goods comprised within any one class in the Fourth Schedule, accompanied by three representations of the trade mark.

RULE 24: REQUEST TO REGISTRAR FOR SEARCH

(1) Any person may request the Registrar, on Form TM-54, to cause a search to be made in respect of specified goods classified in any one class in the Fourth Schedule to ascertain whether any mark is on record which resembles a trade mark of which three representations accompany the form. The Registrar shall cause such search to be made and the result thereof communicated to the person making the request.

(2) If, within three months from the date of the communication of the result of the search aforesaid, an application is made for the registration of the trade mark in question, and the Registrar takes objection on the ground that the mark resembles a mark, which was not disclosed in the search but was on record on the last of the dates on which the search was made, the applicant shall be entitled, on giving notice of withdrawal of the

application within the period mentioned in rule 40-, to have repaid to him any fee paid on the filing of the application.

3[(3) Any person may request the Registrar, on Form TM-60 to cause a search to be made and for issue of certificate under subsection (1) of section 45 of the Copyright Act, 1957-(14 of 1957) to the effect that no trade mark identical with or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957-(14 of 1957) has been registered as a trade mark under the Trade and Merchandise Marks Act, 1958-(43 of 1958) in the name of, or that no application has been made under that Act for such re-registration by any person other than the applicant.]

RULE 25: FORM AND SIGNING OF APPLICATION

(1) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent.

(2) For a trade mark other than a certification or defensive trade mark, the application shall be made on Form TM-14[***].

RULE 26: APPLICATION TO BE CONFINED TO ONE CLASS, ETC

(1) Every application for the registration of a trade mark shall be in respect of goods comprised in one class only of the Fourth

Schedule:5[Provided that if any goods are not specified in any of the classifications, in such case the classification of those goods shall be determined by the Registrar in his own discretion.]

(2) In the case of an application for registration in respect of all the goods included in a class or of a large variety of goods in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.

(3) Applications for the registration of the same trade mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 105-or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.

RULE 27: STATEMENT OF USER IN APPLICATIONS

An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.

RULE 28: REPRESENTATION OF MARK

Every application for the registration of a trade mark, and where additional copies of the application are required every such copy, shall contain a representation of the mark in the space provided on the application form for that purpose. Where the representation exceeds such space in size, the representation shall be mounted upon linen, tracing cloth or such other material as the Registrar may consider suitable. Part of the mounting shall be affixed in the space aforesaid and the rest may be folded.

RULE 29: ADDITIONAL REPRESENTATIONS

Every application for the registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by ten additional representations of the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class of goods for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, if any, and such other particulars as may from time to time be required by the Registrar and shall be signed by the applicant or his agent.

RULE 30: REPRESENTATIONS TO BE DURABLE AND SATISFACTORY

(1) All representations of trade marks shall be of a durable nature, and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approximately 33 centimetres by 20

centimetres, leaving a margin of not less than 4 centimetres on the left hand part of the sheet.

(2) If the Registrar is dissatisfied with any representation of a mark he may at any time require another representation satisfactory to him to be substituted before proceedings with the application.

RULE 31: SPECIMENS OF THE MARK IN EXCEPTIONAL CASES

(1) Where representation of a trade mark cannot be given in the manner set forth in rule 30-, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.

(2) The Registrar may also in exceptional cases deposit in the Trade Marks Registry a specimen or copy of any trade mark which cannot conveniently be shown by a representation and may refer thereto in the register in such manner as he may think fit.

RULE 32: SERIES OF TRADE MARKS

Where an application is made for the registration of a series of trade marks under sub-section (3) of section 15-, copies of representation of each trade mark of the series shall accompany the application in the manner set forth in rules 28 and 29.

RULE 33: TRANSLITERATION AND TRANSLATION

(1) Where a trade mark contains a word or words in characters other than Devanagari or Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form and copies thereof and on each of the accompanying representations, a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.

(2) Where a trade mark contains a word or words in a language other than Hindi or English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.

RULE 34: NAMES AND REPRESENTATIONS OF LIVING PERSONS OR PERSONS RECENTLY DEAD

Where the name or representation of any person appears on a trade mark the applicant shall, if the Registrar so requires, furnish him with the consent in writing of such person in case he is living or, in case his death took place within twenty years prior to the date of the application for registration of the trade mark, of his legal representative, as the case may be, to the use of the name or representation and in default of such consent the Registrar may refuse to proceed with the application for registration of the mark.

RULE 35: NAME OR DESCRIPTION OF GOODS ON A MARK

(1) Where the name or description of any goods appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods other than the goods so named or described.

(2) Where the name or description of any goods appears on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods on the applicant giving an undertaking that the name or description will be varied when the mark is used upon goods covered by the specification other than the named or described goods. The undertaking so given shall be included in the advertisement of the application in the Journal under section 20-.

RULE 36: APPLICATIONS UNDER RECIPROCAL ARRANGEMENTS

Every application claiming priority under section 131-by reason of an application to register the trade mark having been made in a convention country, so declared under sub-section (1) of section 131-, which country shall be named, shall state the date of that application and the applicant shall furnish a certificate by the Registrar or other registering authority of that country or shall otherwise verify the application made therein to the satisfaction of the Registrar,

RULE 37: ACKNOWLEDGEMENT OF RECEIPT OF APPLICATIONS

Every application for the registration of a trade mark in respect of any goods shall, on receipt, be acknowledged by the Registrar. The acknowledgement shall be by way of return of one of the additional representations of the trade mark filed by the applicant along with his application with the official number of the application duly entered thereon.

RULE 38: SEARCH

Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause a search to be made amongst the registered trade marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so.

RULE 39: OBJECTION TO ACCEPTANCE. HEARING

(1) If, on consideration of the application and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.

(2) If within three months from the date of the communication mentioned in sub-rule (1), the applicant does pot amend his application according to the proposal aforesaid, or submit his observations to the Registrar or apply for a hearing, the application shall be deemed to have been abandoned.

RULE 40: NOTICE OF WITHDRAWAL OF APPLICATION FOR REGISTRATION

A notice of withdrawal of an application for the registration of a trade mark under sub-section (2) of section 103-, or sub-rule (2) of rule 24-, for the purpose of obtaining repayment of any fee paid on the filing of the application, shall be given in writing within three months from the date of the communication mentioned in sub-rule (1) of rule 39-

RULE 41: DECISION OF REGISTRAR

(1) The decision of the Registrar under rule 39-orrule 44-after a hearing, or without a hearing if the applicant has duly communicated his observations in writing and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant intends to appeal from such decision he may within one month from the date of such communication apply on Form TM-15 to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.

(2) In a case where the Registrar makes any requirements to which the applicant does not object the applicant shall comply therewith before the Registrar issues a statement in writing under sub-rule (1).

(3) The date when the statement in writing under sub-rule (1) is sent shall be deemed to be the date of the Registrar's decision for the purpose of appeal.

RULE 42: DISCLAIMER

The Registrar may require an applicant as a condition of acceptance of his application to agree to such disclaimer as the Registrar may think fit and the disclaimer so agreed to shall be indicated in the advertisement of the application in the Journal under sub-section (1) or (2) of section 20-in order that the public generally may understand what the applicant's rights, if his trade mark is registered, will be.

RULE 43: CORRECTION AND AMENDMENT OF APPLICATION

An applicant for registration of a trade mark may, whether before or after acceptance of his application but before the registration of the mark, apply on Form TM-16 accompanied by the prescribed fee for the correction of any error in or in connection with his application or any amendment of his application.

RULE 44: WITHDRAWAL OF ACCEPTANCE BY THE REGISTRAR

(1) If, after the acceptance of an application but before the registration of the trade mark, the Registrar has any objection to the acceptance of the application on the ground that it was accepted in error, or that the mark ought not to have been accepted in the circumstances of the case, or proposes that the mark should be registered only subject to conditions or limitations, or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar shall communicate such objection in writing to the applicant.

(2) Unless within two months from the date of the communication mentioned in sub-rule (1) the applicant amends his application to comply with the requirements of the Registrar or applies for a hearing, the acceptance of the application shall be deemed to be withdrawal by the Registrar, and the application shall proceed as if it had not been accepted.

(3) Where the applicant intimates the Registrar within the period mentioned in sub-rule (2) that he desires to be heard, the Registrar shall give notice to the applicant of a date when he will hear him. Such appointment shall be for a date at least 15 days after the date of the notice, unless the applicant consents to a shorter notice. The applicant may state that he does not desire to be heard and submit such submissions as he may consider desirable.

(4) The Registrar may, after hearing the applicant, on considering the submissions, if any, of the applicant, pass such orders as he may deem fit.

RULE 45: APPLICATION FOR REGISTRATION OF A DEFENSIVE TRADE MARK

An application for the registration of a defensive trade mark under section 47-shall be made on Form TM-3 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by an affidavit made by the applicant. The applicant may send, with this affidavit or subsequently, such other evidence as he may desire to furnish, and the Registrar shall consider the whole of the evidence before deciding the application. In all other respects and where they are appropriate and it is not otherwise stated, the rules shall apply to such application as they apply to applications for the registration of ordinary trade marks.

RULE 46: MANNER OF ADVERTISEMENT

An application for the registration of a trade mark required or permitted to be advertised by sub-section (1) of section 20-or to be re-advertised by sub-section (2) of that section shall be advertised in the Journal during such times and in such manner as the Registrar may direct. If no representation of the trade mark be included in the advertisement of the application, the Registrar shall mention in such advertisement the place or places where a specimen or representation of the trade mark may be inspected.

RULE 47: FEE AND PRINTING BLOCK

For the purposes of advertisement or re-advertisement in the Journal as mentioned in rule 46-the applicant shall pay6[for excess space, if] the prescribed fee and may be required to supply a printing block (or more than one, if necessary) or the trade mark satisfactory to the Registrar of such dimensions as may from time to time be approved or directed by the Registrar, or shall supply such information or other means of advertising the trade mark as may be required by the Registrar; and the Registrar, if dissatisfied with the printing block supplied by the applicant or his agents, may require a fresh block before proceeding with the advertisement or re-advertisement, as the case may be:7[* * *]

RULE 48: ADVERTISEMENT OF SERIES

Where an application relates to a series of trade marks differing from one another in respect of the particulars mentioned in sub-section (3) of section 15-, the applicant may be required to supply a printing block (or more than one, if necessary) satisfactory to the Registrar of any or each of the trade marks constituting the series; or the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in which the several trade marks differ from one another.

RULE 49: NOTIFICATION OF CORRECTION OR AMENDMENT OF APPLICATION

(1) In the case of an application to which clause (b) of sub-section (2) of section 20-applies, the Registrar may, if he so decides, instead of causing the application to be advertised again, insert in the Journal a notification setting out the number of the application, the class in which it was made, the name and address of the principal place of business in India, if any, of the applicant or where the applicant has no principal place of business in India his address for service in India, the number of the Journal in which it was advertised and the correction or amendment made in the application.

(2) If the amendment aforesaid involves an amendment of the trade mark, the Registrar may, for the purpose of the notification, call on the applicant to supply a printing block of the mark as amended satisfactory to the Registrar.

RULE 50: REQUEST TO REGISTRAR FOR PARTICULARS OF ADVERTISEMENT OF A MARK

Any person may request the Registrar on Form TM -58 to be informed of the number, date and page of the Journal in which a trade mark specified in the form was advertised and the Registrar shall furnish such particulars to the person making the request.

RULE 51: NOTICE OF OPPOSITION

(1)A notice of opposition to the registration of a trade mark under sub-section (1) of section 21-shall be given in triplicate on Form TM-5 within three months from the date of the advertisement or re-advertisement, as the case may be, of the application for registration in the Journal. The notice shall include a statement of the grounds upon which the opponent objects to the registration. If the registration is opposed on the ground that the trade mark in question resembles marks already on the register, the registration numbers of such trade marks and the dates of the Journals in which they have been advertised shall be set out.

(2) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given, shall be made on Form TM-44 accompanied by the Prescribed fee. Such period of extension shall not exceed one month in the aggregate.

RULE 52: COUNTER STATEMENT

The counter-statement required by sub-section (2) of section 21-shall be sent in triplicate on Form TM -6 within two months from the receipt by the applicant of the copy of the notice of opposition and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the applicant. A copy of the counter-statement shall be served by the Registrar on the person giving notice of opposition.

RULE 53: EVIDENCE IN SUPPORT OF OPPOSITION

(1) Within two months from the service on him of a copy of the counter- statement by the Registrar, the opponent shall either leave with the Registrar such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the

Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule.

(2) If an opponent takes no action under sub-rule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition.

RULE 54: EVIDENCE IN SUPPORT OF APPLICATION

Within two months from the receipt by the applicant of the copies of affidavits in support of the opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counter-statement and/or on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies thereof.

RULE 55: EVIDENCE IN REPLY BY OPPONENT

Within one month from the receipt by the opponent of the copies of the applicant's affidavits, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.

RULE 56: FURTHER EVIDENCE

No further evidence shall be left on either side; but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

RULE 57: EXHIBITS

Where there are exhibits to affidavits filed in an opposition a copy or impression of each exhibit shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished the originals shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

RULE 58: TRANSLATION OF DOCUMENTS

Where a document in a language other than Hindi or English is referred to in the notice of opposition, counter-statement or an affidavit filed in an opposition, an attested translation thereof in Hindi or English shall be furnished in duplicate.

RULE 59: HEARING AND DECISION

(1) Upon completion of the evidence (if any), the Registrar shall give notice to the parties of a date when he will hear the arguments in the case. Such appointment shall be for a date at least one month after the date of the notice, unless the parties consent to a shorter notice. Within fourteen days from the receipt of the notice, any party who intends to appear shall so notify the Registrar on Form TM-7. Any party who does not so notify the Registrar within the time last aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly.

(2) The decision of the Registrar shall be notified to the parties in writing.

RULE 60: SECURITY FOR COSTS

The security for costs which the Registrar may require under sub-section (6) of section 21-may be fixed at any amount which he may consider proper; and such amount may be further enhanced by him at any stage in the opposition proceedings.

RULE 61: PROCEDURE FOR GIVING NOTICE

The notice which the Registrar is required by sub-section (3) of section 23-to give to an applicant, shall be sent on Form 0-1 to the applicant at the address of his principal place of business in India or if he has no principal place of business in India at the address for service in India stated in the application but if the applicant has authorised an agent for the purpose of the application, the notice shall be sent to the agent and a duplicate thereof to the applicant. The notice shall specify twenty-one days' time from the date thereof or such further time as the Registrar may allow, for completion of the registration.

RULE 62: ENTRY IN THE REGISTER

(1) As soon as may be after the expiration of three months from the date of the advertisement or re-advertisement, as the case may be, in the Journal of any application for the registration of a trade mark, the Registrar shall, subject to the provisions of sub-section (1) of section 23-8[* * *] enter the trade mark in the register.

(2) The entry of a trade mark in the register shall specify the date of the registration, the goods in respect of which it is registered, and all particulars required by sub-section (1) of section 6-including-

(a) the address of the principal place of business in India, if any, of the proprietor of the trade mark or in the case of a jointly owned trade mark, of such of the joint proprietors of the trade mark as have a principal place of business in India.

(b) where the proprietor of the trade mark has no place of business in India his address for service in India as entered in the application for registration together with his address in his home country.

(c) in the case of a jointly owned trade mark, where none of the joint proprietors has a principal place of business in India, the address for service in India as given in the application together with the address of each of the joint proprietors in his home country.

(d) particulars of the trade, business, profession, occupation or other description of the proprietor or, in the case of a jointly owned trade mark, of the joint proprietors of the trade mark as entered in the application for registration.

(e) particulars affecting the scope of the registration or the rights conferred by the registration, and

(f) the appropriate office of the Trade Marks Registry in relation to the trade mark.

RULE 63: ASSOCIATED MARKS

(1) Where a trade mark is registered as associated with any other marks, the Registrar shall note in the register in connection with the first mentioned mark the registration numbers of the marks with which it is associated and shall also note in the register in connection with each of the associated marks the registration number of the first-mentioned mark as being a mark associated therewith.

(2) An application under sub-section (4) of section 16-to dissolve the association as respects any of the trade marks registered as associated trade marks shall be made on Form TM -14 and shall include statement of the grounds of the application.

RULE 64: DEATH OF APPLICANT BEFORE REGISTRATION

In case of death of any applicant for the registration of a trade mark after the date of his application and before the trade mark has been entered in the register, the Registrar may, on proof of the applicant's death and on proof of the transmission of the interest of the deceased person, substitute in the application his successor in interest in place of the name of such deceased applicant and the application may proceed thereafter as so amended.

RULE 65: CERTIFICATE OF REGISTRATION

(1) The certificate of registration of a trade mark to be issued by the Registrar under sub-section (2) of section 23-shall be on Form 0-2 with such modification as the circumstances of any case may require; and the Registrar shall annex a copy of trade mark to the certificate.

(2) the certificate of registration referred to in sub-rule (1) shall not be used in legal proceedings or for obtaining registration abroad.

(3) The Registrar may issue a duplicate or further copies of the certificate of registration on request by the registered proprietor on Form TM-59 accompanied by the prescribed fee. An unmounted representation of the mark exactly as shown in the form of application for registration thereof at the time of registration shall accompany such request in case a printing block had been furnished for the advertisement of such application.

RULE 66: RENEWAL OF REGISTRATION

An application for the renewal of the registration of a trade mark shall be made on Form TM-12 and may be made at any time not more than six months before the expiration of the last registration of the trade mark.

RULE 67: NOTICE BEFORE REMOVAL OF TRADE MARK FROM REGISTER

At a date not less than one month and not more than two months before the expiration of the last registration of a trade mark, if no application on Form TM- 12 for renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor or in the case of a jointly registered trade mark each of the joint registered proprietors and each registered user, if any, in writing on Form 0-3 of the approaching expiration at the address of their respective principal places of business in India as entered in the register or where such registered proprietor or registered user has no principal place of business in India at his address for service in India entered in the register.

RULE 68: ADVERTISEMENT OF REMOVAL OF TRADE MARK FROM THE REGISTER

If at the expiration of the last registration of a trade mark the renewal fee has not been paid the Registrar may remove the trade mark from the register and advertise the fact forthwith in the Journal,

RULE 69: RESTORATION AND RENEWAL OF REGISTRATION

An application for the restoration of a trade mark to the register and renewal of its registration under sub-section (4) of section 25-, shall be made on Form TM- 13, within one year from the expiration of the last registration of the trade mark accompanied by the prescribed fee.

RULE 70: NOTICE AND ADVERTISEMENT OF RENEWAL AND RESTORATION

Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.

RULE 71: APPLICATION FOR ENTRY OF ASSIGNMENT OR TRANSMISSION

An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on Form TM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor.

RULE 72: PARTICULARS TO BE STATED IN APPLICATION

An application under rule 71-shall contain full particulars of the instrument, if any, under which the applicant or, in the case of a joint application, the person other than the registered proprietor claims to be entitled to the trade mark; and such instrument or a duly certified copy thereof shall be produced at the Trade Marks Registry for inspection at the time of application. The Registrar may require and retain an attested copy of any instrument produced for inspection in proof of title, but such copy shall not be open to public inspection.

RULE 73: CASE ACCOMPANYING APPLICATION

Where a person applying under rule 71-for registration of his title, does not establish his claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him. If the Registrar so requires, the case shall be verified by an affidavit on Form TM-18.

RULE 74: PROOF OF TITLE

The Registrar may call upon any person who applies to be registered as proprietor of a registered trade mark to furnish such proof or additional proof of title as he may require for his satisfaction.

RULE 75: IMPOUNDING OF INSTRUMENTS

If in the opinion of the Registrar any instrument produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it in the manner provided by Chapter IV of the Indian Stamp Act, 1899.

RULE 76: ASSIGNMENTS INVOLVING TRANSMISSION OF MONEYS OUTSIDE INDIA

If there is in force any law regulating the transmission of moneys outside India, the Registrar shall not register the title of a person who becomes entitled to a trade mark by an assignment which involves such transmission except on production of the permission of the authority specified in such law for such transmission.

RULE 77: APPLICATION FOR REGISTRAR'S DIRECTION AS TO ADVERTISEMENT OF AN ASSIGNMENT OF A TRADE MARK WITHOUT GOODWILL OF THE BUSINESS

(1) An application for directions under section 41-shall be made on Form TM -20 and shall state the date on which the assignment was made. The application shall give particulars of the registration in the case of a registered trade mark, and in the case of an unregistered mark shall show the mark and give particulars including user of the registered as well as of the unregistered trade mark that has been assigned there with in accordance with sub-section (2) of section 38-. The Registrar may call for any evidence or further information and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.

(2) The Registrar may refuse to consider such an application in a case to which section 40-applies, unless his approval has been obtained under the said section and a reference identifying the Registrar's notification of approval is included in the application.

(3) A request for an extension of the period within which the application mentioned in sub-rule (1) may be made shall be on Form TM-21.

RULE 78: APPLICATION FOR ENTRY OF ASSIGNMENT WITHOUT GOODWILL

An application under rule 71-relating to an assignment of a trade mark in respect of any goods shall state-

(a) whether the trade mark had been or was used in the business in any of those goods; and

(b) whether the assignment was made otherwise than in connection with the goodwill of that business, and if both those circumstances subsisted, then the applicant shall leave at the Trade Marks Registry a copy of the directions to advertise the assignment, obtained upon application under rule 77-, and such proof, including copies of advertisements or otherwise, as the Registrar may require, to show that his directions have been fulfilled and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.

RULE 79: SEPARATE REGISTRATIONS

Where pursuant to an application under rule 71-, and as the result of a division and separation of the goods of a registration or a division and separation of places or markets, different persons become registered separately under the same registration number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.

RULE 80: REGISTRAR'S CERTIFICATE OR APPROVAL AS TO CERTAIN ASSIGNMENT AND TRANSMISSIONS

Any person who desires to obtain the Registrar's certificate under sub-section (2) of section 39-or his notification of approval under section 40-shall send to the Registrar with his application on Form TM-17 or Form TM-19, as the case may be, a statement of case in duplicate setting out the circumstances and a copy of any instrument or proposed instrument effecting the assignment or transmission. The Registrar may call for any evidence or further information that he may consider necessary and the statement of case shall be amended if required to include all the relevant circumstances and shall, if required, be verified by an affidavit. The Registrar, after hearing (if so required) the applicant and any other person whom the Registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be, to the applicant and shall also inform such other person accordingly. Where a statement of case is amended, three copies thereof in its final form shall be left at the Trade Marks Registry. The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.

RULE 81: REGISTRATION OF ASSIGNMENT TO COMPANY UNDER SECTION 45

For the purposes of sub-section (3) of section 45-, the period within which a company may be registered as the subsequent proprietor of a registered trade mark upon application made under rule 71-shall be six months from the date of advertisement in the Journal of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow on application being made on Form TM-25 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.

RULE 82: APPLICATION FOR REGISTRATION AS REGISTERED USER

(1) An application to the Registrar for the registration under section 49-of a person as a registered user of a registered trade mark shall be made jointly by that person and the registered proprietor of the trade mark on Form TM-28 and shall be accompanied by the following documents -

(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;

(b) the documents and correspondence, if any, mentioned in the agreement referred to in clause (a) or duly authenticated copies thereof;

(c) agreements, if any, or duly authenticated copies thereof, entered into between the registered proprietor and the proposed registered user requiring the proposed registered user to purchase from the registered proprietor or his nominees or prohibiting him from purchasing except from the registered proprietor or his nominees, any materials whether for the purpose of manufacturing the goods in respect of which the use of the trade mark is to be permitted or otherwise, or containing or providing for any conditions as regards the price at which such goods should be sold or the maintenance of particular prices for such goods.

(2) There shall also be filed along with the application an affidavit made by the registered proprietor or by some person authorized to the satisfaction of the Registrar to act on his behalf testifying to the genuineness of the documents accompanying the application and containing:

(a) the particulars and statements required by clause ( ii) of sub -section (1) of section 49-;

(b) the precise relationship between the registered proprietor and the proposed registered user, if any; for instance, whether their relationship is as managing agent and managed company, or as principal and subsidiary company or whether there is common control between their business;

(c) a statement as to the goods in which the registered proprietor is dealing, together with details as to whether the trade mark which is the subject of the application has been used by him in the course of trade before the date of the application and if so the amount and duration of such user;

(d) a statement as to whether the registered proprietor had acquired title to the trade mark by way of assignment and if so whether he had acquired any other trade marks by the same assignment and how he had dealt with such other marks;

(e) a statement as to whether the registered proprietor had, before the date of the application for registration as registered user, allowed the use of the trade mark by any person and if so by whom;

(f) a statement whether or not the proposed permitted use is intended solely in relation to goods for export from India.

(3) The registered proprietor and the proposed registered user shall also produce and file such other documents and furnish such other evidence and information as may be required in that behalf by the Registrar.

(4) No application shall be entertained unless the same has been filed within eighteen months from the date of the agreement referred to in clause (a) of sub-rule (1).

(5) Notwithstanding anything contained in sub-rule (1), where more than one application for registration as registered user is made by the same registered proprietor and the same proposed registered user in respect of trade marks covered by the same agreement, the documents mentioned in sub-rule (1) may be filed with any one of the applications and a cross reference to such documents given in the other application or applications.

RULE 83: PARTICULARS TO BE STATED IN THE AGREEMENT

The agreement referred to in clause (a) of sub-rule (1) of the last foregoing rule shall-

(a) set out the particulars specified in sub-clauses (a) to (d) of clause ( ii) of sub-section (1) of section 49-;

(b) disclose the terms as to royalty and other remuneration payable to the registered proprietor by the proposed registered user for the permitted use of the trade mark;

(c) provide means for bringing the permitted use to an end when the relationship between the parties or the control by the registered proprietor over the permitted user ceases;

(d) contain a condition that when the registered trade mark is used by the proposed registered user in relation to his goods, other than goods for export, the mark shall be so described as clearly to indicate that it is being used only by way of permitted use.

RULE 84: REFUSAL TO FORWARD BY REGISTRAR AN APPLICATION FOR NON COMPLIANCE WITH THE RULES

(1) No application for registration shall be forwarded by the Registrar to the Central Government unless the requirements of rules 82-and83-are complied with.

(2) Where the Registrar refuses to forward the application he shall inform the applicants in writing his reasons thereof.

RULE 85: CONSIDERATION BY THE CENTRAL GOVERNMENT

The Central Government, on receipt of an application for registration as registered user forwarded to it by the Registrar under sub-section (2) of section 49-, shall, if satisfied that the application and the accompanying documents comply with the provisions of the Act and the Rules, consider whether the application should be allowed having regard to the matters specified in sub-section (3) of that section, and in doing so may take into account all or any of the following matters:-

(1) whether the permitted use if allowed would contravene the policy of the Act which is to prevent trafficking in trade marks;

(2) whether the registered proprietor has registered the trade mark without any bona fide intention to use it in relation to his goods in the course of trade or solely or mainly for the purpose of permitting others to use it under agreement for registered user; and

(3) whether the registered proprietor has acquired title to the trade mark by assignment without any bona fide intention to use it in relation to his goods in the course of trade or solely or mainly for the purpose of permitting others to use it under agreements for registered user. Explanation I.-For considering the bona fides of the registration of the trade mark under clause (2) regard shall be had inter alia to - (a) whether the goods for which the trade mark is registered are similar to or are different from the goods in which the registered proprietor has been trading or dealing before the registration of the mark; (b) whether the registered proprietor has ever used the mark in question in relation to his goods in the course of trade before the date of the agreement for registered user, and if so, the amount and duration of such user; (c) whether the terms as to royalty and other remuneration payable by the proposed registered user are reasonable taking into account the expenses which the registered proprietor is likely to incur in exercising control over the permitted use. Explanation II-for considering the bona fides of the acquisition of title under clause (3) regard shall be had, besides the matters set out in Explanation I, to the following further matter, namely, whether the registered proprietor has obtained assignment of other registered trade marks and if so, whether he has dealt with such other marks by way of assignment or registered user.

RULE 86: HEARING BEFORE ISSUING DIRECTION TO REFUSE AN APPLICATION OR TO ACCEPT IT CONDITIONALLY

(1) Before the Central Government decides to direct the Registrar to refuse an application for registration as registered user or to accept the application subject to any conditions, restrictions or limitations, it shall give notice thereof in writing to the applicants through the Registrar. The notice shall state the grounds on which the Central Government proposes to issue such direction and shall inform the applicants that they are entitled to be heard.

(2) Unless within two months from the receipt of the notice mentioned in sub-rule (1) the registered proprietor and the proposed registered user apply for a hearing through the Registrar, the Central Government may direct the Registrar to refuse the application or to accept it conditionally, as the case may be.

(3) If the registered proprietor and the proposed registered user apply for a hearing, the Central Government shall appoint a time for the hearing and shall give them not less than a month's notice of the time so appointed.

(4) After hearing the registered proprietor and the proposed registered user, the Central Government shall decide whether to give direction to the Registrar to accept the application or to refuse it or to accept it conditionally.

(5) The Registrar shall, on receipt of the directions of the Central Government, communicate in writing his order on the application to the applicants and to other registered users of the mark, if any.

RULE 87: ENTRY IN THE REGISTER

(1) Where the Central Government directs the Registrar under sub-section (3) of section 49-to accept an application for registration as registered user, the Registrar shall register the proposed registered user as registered user in accordance with such directions.

(2) The entry of a registered user in the register shall state the date on which the application for registration of registered user was made, which date shall be deemed to be the date of registration as registered user of the person mentioned in the entry. The entry shall also state, in addition to the particulars and statements mentioned in clause (ii) of sub-section (1) of section 49-, the name, description and principal place of business in India of the registered user and if he does not carry on) business in India his address for service in India.

RULE 87A: REGISTRATION NOT TO IMPLY AUTHORISATION TO TRANSMIT MONEY OUTSIDE INDIA

The registration as registered user of a trade mark, shall not be deemed to imply an approval of the agreement in so far as it relates to the transmission of any money, as consideration for the use of the said trade mark, to any place outside India.

RULE 88: NOTIFICATION OF REGISTRATION AS REGISTERED USER

A notification in writing of the registration of a registered user shall be sent by the Registrar to the registered proprietor of the trade mark, to the registered user and to every other registered user whose name is entered in relation to the same trade mark and shall also be inserted in the Journal.

RULE 89: REGISTERED PROPRIETOR'S APPLICATION TO VARY ENTRY

An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under clause (a) of sub- section (1) of section 52-shall be made on Form TM-29 and shall be accompanied by a statement of the grounds on which it is made, and where the registered user in question consents, by the written consent of the registered user.

RULE 90: CANCELLATION OF REGISTRATION OF REGISTERED USER

(1) An application for the cancellation of the registration of a registered user under clause (b) or clause (c) or clause (d) of subsection

(1) of section 52-shall be made on Form TM-30 or Form TM-31, as the case may be, and shall be accompanied by a statement of the grounds on which it is made.

(2) In case of the registration of a registered user for a period, in accordance with sub- clause (d) of clause (ii) of sub-section (1) of section 49-, the Registrar shall cancel the entry of the registered user at the end of that period. Where some or all the goods are omitted from those in respect of which a trade mark is registered, the Registrar shall at the same time omit them from those specifications of registered users of the trade mark in which they are comprised. The Registrar shall notify every cancellation or omission under this sub-rule to the registered users whose permitted use is affected thereby and to the registered proprietor of the trade mark.

(3) The Registrar shall also cancel every registration made before the commencement of the Act of a registered user after the expiration of three years from such commencement.

RULE 91: POWER OF THE REGISTRAR TO REQUIRE INFORMATION FOR ENFORCING QUALITY CONTROL

(1) The Registrar may at any time or from time to time require the registered proprietor or the registered user of a trade mark to furnish him with such information as he may require for satisfying himself that the stipulations in the agreement between the registered proprietor and the registered user, regarding the quality of the goods in relation to which the trade mark is to be used are being enforced or being complied with.

(2) Where any such information as is referred to in sub-rule (1) is not furnished within the time allowed by the Registrar, the Registrar may presume that the stipulation in the agreement regarding the quality of goods is not being enforced, or is not complied with.

RULE 92: PROCEDURE ON APPLICATION TO VARY ENTRY OR CANCEL REGISTRATION

(1) The Registrar shall notify in writing applications under section 52-to the registered proprietor and each registered user (not being the applicant in either case) of the trade mark.

(2) Any person notified under sub-ruled) who intends to intervene in the proceedings, shall within one month of the receipt of such notification give notice to the Registrar on Form TM-32 to the effect and shall send therewith a statement of the grounds of his intervention, the Registrar shall thereupon serve or cause to be served copies of such notice and statement on the other parties, namely, the applicant, the registered proprietor, the registered user whose registration is the subject-matter of the proceeding in question and any other registered user who intervenes.

(3) In the case of any application made under clause (b) of sub-section (1) of section 52-or under sub-clause (i) of clause (c) or under clause (d) of that sub-section, the applicant and any person notified under sub-rule (1) may, within such time or times as the

Registrar may appoint, leave evidence in support of his case, and the Registrar after giving the parties an opportunity of being heard, may accept or refuse the application or accept it subject to any conditions, amendments, modifications or limitations he may think right to impose and shall inform the parties in writing accordingly.

(4) In the case of an application for varying any registration under clause (a) of sub- section (1) of section 52-or cancelling any registration on any of the grounds mentioned in sub-clause (ii) or sub clause (iii) or sub-clause (iv) of clause (c) of that sub-section, the Registrar shall forward such application together with any notice on Form TM-32 and statement of case filed under sub-rule (2) to the Central Government and shall dispose of the application as directed by the Central Government and also inform the parties in writing accordingly.

RULE 93: REGISTERED USER'S APPLICATION UNDER SECTION 57(2)

Applications under sub-section (2) of section 57-shall be made on Form TM-16 or Form TM-33 or Form TM-34 or Form TM-50 as may be appropriate by a registered user of a trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of a registered user; and the Registrar may require such evidence by affidavit or otherwise as he may think fit as to the circumstances in which the application is made.

RULE 94: APPLICATION TO RECTIFY OR REMOVE A TRADE MARK FROM THE REGISTER

An application to the Registrar under section 46-,47 (4)-or56-for the making, expunging or varing of any entry relating to a trade mark in the register shall be made in duplicate on Form TM-26 and shall be accompanied by statement in duplicate setting out fully the nature of the applicant's interest, the facts upon which he bases his case and the relief which he seeks. Where the application is made by a person who is not the registered proprietor of the trade mark in question, the application and the statement aforesaid shall be left at the Trade Marks Registry in triplicate. In case there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. A copy each of the application and statement shall be transmitted forthwith by the Registrar to the registered proprietor and to each of the registered users and to any other person who appears from the register to have an interest in the trade mark.

RULE 95: FURTHER PROCEDURE

Within two months from the receipt by a registered proprietor of the copy of the application mentioned in rule 94-he shall send to the Registrar on Form TM- 6 a counter-statement in triplicate of the grounds on which the application is contested and if he does so the Registrar shall serve a copy of the counter-statement on the person making the application. The provisions of rules 53-to60-shall thereafter apply mutatis mutandis to the further proceedings on the application. The Registrar shall not, however, rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement. In any case of doubt any party may apply to the Registrar for directions.

RULE 96: INTERVENTION BY THIRD PARTIES

Any person, other than the registered proprietor, alleging interest in a registered trade mark in respect of which an application is made under rule 94-may apply on Form TM-27 for leave to intervene, stating the nature of his interest, and the Registrar may refuse or grant such leave after hearing (if so required) the parties concerned, upon such conditions and terms including undertakings or conditions as to security for cost as he may deem fit to impose.

RULE 97: RECTIFICATION OF THE REGISTER BY THE REGISTRAR OF HIS OWN MOTION

(1) The Notice, which the Registrar is required to give under sub-section (4) of section 56-, shall be sent in writing to the registered proprietor, to each registered user, if any, and to any other person who appears from the register to have any interest in the trade mark, and shall state the grounds on which the Registrar proposes to rectify the register and shall also specify the time, not being less than one month from the date of such notice, within which an application for a hearing shall be made.

(2) Unless within the time specified in the notice aforesaid, any person so notified sends to the Registrar a statement in writing setting out fully the facts upon which he relies to meet the grounds stated in the notice or applies for a hearing, he may be treated as not desiring to take part in the proceedings and the Registrar may act accordingly.

(3) If the Registrar decides to rectify the register he shall communicate his decision in writing to the registered proprietor and to each registered user, if any.

RULE 98: ALTERATION OF ADDRESS IN REGISTER

(1) A registered proprietor or a registered user of a trade mark, the address of whose principal place of business in India or whose address in his home country, the case may be, is changed so that the entry in the register is rendered incorrect, shall forthwith request the Registrar on Form TM-34 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.

(2) A registered proprietor or a registered user of a trade mark, whose address for service in India entered in the register is changed, whether by discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect, shall forthwith request the Registrar on Form TM-50 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.

(3) A registered proprietor or a registered user of a trade mark the address of whose principal place of business in India ,9[* * *] or whose address for service in India is altered by a public authority, so that the changed address designates the same premises as entered in the register, may make the aforesaid request to the Registrar on Form TM- 34 or TM-50, as the case may be, and if he does so he shall leave therewith a certificate of the alteration given by the said authority. If the Registrar is satisfied as to the facts of the case, he shall alter the register accordingly but shall not require any fees to be paid on the forms, notwithstanding the provisions of sub-rule (2) of rule 11-or sub-rule (2) of rule 12-

(4)

(i) Where a registered proprietor makes a request under sub -rule (1), (2) or (3), he shall serve a copy of the request on the registered user or users, if any, and inform the Registrar accordingly.

(ii) where the request aforesaid is made by a registered user, he shall serve a copy thereof on the registered proprietor and other registered users, if any, and inform the Registrar that he had done so.

(5) In case of the alteration of the address of a person entered in the register as the address for service in India of more than one registered proprietor or registered user of trade marks, the Registrar may, on proof that the said address is the address of the applicant and if satisfied that it is just to do so, accept an application from the person on Form TM-50, amended so as to suit the case, for the appropriate alteration of the entries of his address as the address for service in the several registrations, particulars of which shall be given in the Form and may alter the entries accordingly.

(6) All applications under this rule on Form TM-50 shall be signed by the registered proprietor or the registered user, as the case may be, or by an agent expressly authorised by him for the purpose of such an application, unless in exceptional circumstances the

Registrar otherwise allows.

RULE 99: APPLICATION UNDER SECTION 57(1)

Where an application has been made under sub-section (1) of section 57-for the alteration of the register by correction, change, cancellation or striking on goods or for the entry of a disclaimer or memorandum, the Registrar may require the applicant to furnish such evidence by affidavit or otherwise as the Registrar may think fit, as to the circumstances in which the application is made. Such application shall be made on Form TM-16, TM-33, TM-34, TM-35, TM-36, TM-37 or TM-50 as may be appropriate and a copy thereof shall be served by the applicant on the registered user or users, if any, under the registration of the trade mark in question and to any other person who appears from the register to have an interest in the trade mark.

RULE 100: ADVERTISEMENT OF CERTAIN APPLICATIONS

(1) Where application is made under clause (e) of sub-section (1) of section 57-on Form TM-37 to enter a disclaimer or memorandum relating to a trade mark, the Registrar before deciding upon such application shall advertise the application in the Journal in order to enable any persons to file at the Trade Marks Registry a statement in writing, showing the reasons for his objections to the proposed entry, within three months from the date of the advertisement or within such further time not exceeding one month as the Registrar may allow.

(2) The Registrar shall, after considering the application and the statement aforesaid and hearing the parties, if so required, decide to allow or refuse the application and shall communicate his decision in writing to the applicant as well as any other party to the proceedings.

RULE 101: ALTERATION OF REGISTERED TRADE MARK

Where a person applies under section 58-for leave to add to or alter his registered trade-mark, he shall make his application in writing on Form TM-38 and shall furnish twelve copies of the mark as it will appear when so added to or altered. A copy of the application and of the mark so amended or altered shall be served by the applicant on every registered user, if any.

RULE 102: ADVERTISEMENT BEFORE DECISION AND OPPOSITION, ETC

(1) The Registrar shall consider the application and shall, if it appears to him expedient, advertise the application in the Journal before deciding it. (2) Within three months from the date of advertisement under sub-rule (1), or within such further period, not exceeding one month in the aggregate, as the Registrar may allow, any person may give notice of opposition to the application on Form TM-39 and may also send therewith a statement of his objections. The notice and the statement, if any, shall be sent in triplicate. In case there are any registered users under the registration of the trade mark in question, such notice and statement shall also be accompanied by as many copies thereof as there are registered users. A copy each of the notice and statement shall be transmitted forthwith by the Registrar to the registered proprietor and to each registered user, if any, and within two months from the receipt by the registered proprietor of such copies he shall send to the Registrar on Form TM -6 a counter- statement in triplicate of the grounds on which the opposition is contested. If the registered proprietor sends such a counter-statement the Registrar shall serve a copy thereof on the person giving notice of opposition and the provisions of rules 53-to60-shall apply mutatis mutandis to the further proceedings on the opposition. The Registrar shall not refuse the application merely because the registered proprietor has not filed a counter-statement. In any case of doubt any party may apply to the Registrar for directions.

(3) If there is no opposition within the time specified in sub-rule (2), the Registrar shall, after hearing the applicant if he so desires, allow or refuse the application and shall communicate his decision in writing to the applicant.

RULE 103: DECISION ADVERTISEMENT NOTIFICATION

If the Registrar decides to allow the application he shall alter the mark in the register accordingly and insert in the Journal a notification that the mark has been altered. If the application has not been advertised under rule 102-, he shall also advertise in the Journal the trade marks as altered.

RULE 104: PRINTING BLOCK AND FEE FOR ADVERTISEMENT

In connection with an application to alter a registered trade mark the Registrar may at any time call on the applicant to supply a printing block satisfactory to the Registrar and suitable for advertising the mark with the addition or alteration as aforesaid, together with the prescribed fee, ,10[for excess space, if any,] if in the opinion of the Registrar an advertisement describing in words the addition or alteration would not be likely to be understood by persons interested in the matter.

RULE 105: RE CLASSIFICATION IN RESPECT OF EXISTING REGISTRATION

(1) On the classification set forth in the Forth Schedule being amended, the registered proprietor of a trade mark may apply to the Registrar on Form TM- 40 for the conversion of the specification relating to his trade mark, so as to bring that specification into conformity with the amended classification. The application shall include a request for the like conversion of the specification in respect of any registered users under that registration, and the registered proprietor shall serve a copy of the application on the registered user or users of the trade mark, if any.

(2) The Registrar shall, thereupon, notify in writing to the registered proprietor and to the registered user or users, if any, a proposal showing the form which, in the Registrar's view, the amendment of the register should take in consequence of the proposed conversion. Two or more registrations of a trade mark having the same date and in respect of goods which fall within the same class under the amended or substituted classification may be amalgamated upon conversion in accordance with this rule.

(3) The proposal referred to in sub-rule (2) shall be advertised in the Journal.

(4) Notice of opposition to such proposal shall be given on Form TM-41 in triplicate within one month from the date of the advertisement and shall be accompanied by a statement in triplicate showing how the proposed amendment would contravene the provisions of sub-section (1) of section 59-. Where there are any registered users under the registration of the trade mark in question, such notice and statement shall also be accompanied by as many copies thereof as there are registered users. The

Registrar shall forthwith send a copy each of the notice and the statement to the registered proprietor and to each registered user, if any, and within two months from the receipt by him of such copies the registered proprietor may send to the Registrar on Form TM-6 a counter- statement in triplicate setting out fully the grounds on which the opposition is contested. If the registered proprietor sends such counter-statement the Registrar shall serve a copy thereof on the person giving notice of opposition and the further procedure for the disposal of the opposition shall be regulated by the provisions of rules 53-to60-mutatis mutandis. In any case of doubt, any party may apply to the Registrar for directions.

(5) If there is no opposition within the time specified in sub-rule (4), or in case of opposition if the conversion of the specification is allowed, the proposal as allowed shall be advertised in the Journal, and all necessary entries shall be made in the register. The date when such entries are made in the register shall be recorded therein. Any entry made in the register in pursuance of this sub-rule shall not affect the date of the renewal of registration under section 25-which shall be determined in the same manner as before the allowance of the conversion.

RULE 106: EXTENSION OF TIME

(1) An application for extension of time under section 101-[not being a time expressly provided in the Act or prescribed by rule 81 or by sub-rule (4) of rule 82-or a time for the extension of which provision is made in the rules] shall be made on Form TM-56.

(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly and the extension maybe granted though the time for doing the act or taking the proceeding for which it is applied for has already expired.

RULE 107: EXERCISE OF DISCRETIONARY POWER OF REGISTRAR

The time within which a person entitled under section 98-to an opportunity of being heard shall exercise his option of requiring to be heard shall, save as otherwise expressly provided in the Act or the rules, be one month from the date of a notice which the Registrar shall give to such person before determining the matter with reference to which such person is entitled to be heard. If within that month such person is required to be heard, the Registrar shall appoint a date for the hearing and shall give 10 days' notice thereof.

RULE 108: NOTIFICATION OF DECISION

The decision of the Registrar in the exercise of any discretionary power given to him by the Act or the rules shall be notified to the person affected.

RULE 109: AMENDMENTS AND CORRECTION OF IRREGULARITY IN PROCEDURE

(1) Any document or drawing or other representation of a trade mark may be amended, and any irregularity in procedure which, in the opinion of the Registrar, may be obviated without detriment to the interests of any person, may be corrected, if the Registrar thinks fit and on such terms as he may direct.

(2) The Registrar may require the amendment of any application or representation of a trade mark or any other document or the addition of any matter thereto in order to bring it in accordance with the formal requirements of the Act.

RULE 110: DIRECTIONS NOT OTHERWISE PRESCRIBED

Where in the opinion of the Registrar, it is necessary for the proper prosecution or completion of any proceedings under the Act or the rules for a person to perform an act, file a document or produce evidence, which is not provided for by the Act or the rules, the Registrar may by notice in writing require the person to perform the Act, file the document or produce the evidence, specified in the notice.

RULE 111: HEARINGS

(1) In relation to a trade mark for which an application for registration is made on or after the notified date, the application as well as any proceeding under the Act and the rules shall, in the event of a hearing becoming necessary, be heard at the office of the

Trade Marks Registry at which such application was made under sub- section (3) of section 18-, or at such place within the territorial jurisdiction of that office as the Registrar may deem proper.

(2) In relation to a trade mark for which an application for registration is pending before the Registrar at the notified date, the hearing, if any, in respect of such application or any proceeding under the Act and the rules shall be taken at the appropriate office of the Trade Marks Registry or at such place within the territorial jurisdiction of that office as the Registrar may deem proper.

(3) In relation to a trade mark on the Register of Trade Marks at the notified date, the hearing, if any, in respect of any proceeding under the Act and the rules shall take place at the appropriate office of the Trade Marks Registry or at such place within the territorial jurisdiction of that office as the Registrar may deem proper.

(4) Where an officer exercising the powers of the Registrar who has heard any matter under the Act or the rules, has reserved orders thereon, is transferred from one office of the Registry to another or reverts to another appointment before passing an order or rendering decision thereon, he may, if the Registrar so directs, pass the order or render the decision as if he had continued to be the officer in the office of the Registry where the matter was heard.

RULE 112: COSTS IN UNCONTESTED CASES

Where any opposition duly instituted under the rules is not contested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether the proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.

RULE 113: EXCEPTION TO RULE 112

Notwithstanding anything in rule 112-, costs in respect of fees specified under entries 7, 9 and 10 of the First Schedule and of all stamps used on and affixed to affidavits used in the proceedings shall follow the event.]

RULE 114: SCALE OF COSTS

Subject to the provisions of rules 112-and113-, in all proceedings before the Registrar the Registrar may, save as otherwise expressly provided by the Act, award such costs, not exceeding the amount admissible therefore under the Sixth Schedule, as he considers reasonable having regard to all the circumstances of the case.

RULE 115: APPLICATION FOR REVIEW OF REGISTRAR'S DECISION

An application to the Registrar for the review of his decision under clause (c) of section 97 shall be made on Form TM-57 within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, such application and statement shall be left in triplicate and the Registrar shall forthwith transmit a copy each of the application and statement to the other person concerned. The Registrar may, after giving the parties an opportunity of being heard, reject or grant the application, either unconditionally or subject to any conditions or limitations, as he thinks fit.

RULE 116: FORM, ETC., OF AFFIDAVITS

(1) The Affidavits required by the Act and the rules to be filed at the Trade Marks Registry or furnished to the Registrar, unless otherwise provided in the Second Schedule, shall be headed in the matter or matters to which they relate, shall be drawn up in the first person, and shall be divided into paragraphs consecutively numbered; and each paragraph shall, as far as practicable, be confined to one subject. Every affidavit shall state the description and the true place of abode of the person making the same shall bear the name and address of the person filing it and shall state on whose behalf it is filed.

(2) Where two or more persons join in an affidavit, each of them shall depose separately to such facts which are within his personal knowledge and those facts shall be stated in separate paragraphs.

(3) Affidavits shall be taken-

(a) in India-before any Court or person having by law authority to receive evidence, or before any officer empowered by such Court as aforesaid to administer oaths or to take affidavits;

(b) in any country or place outside India before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 -, of such country or place, or before a notary public, or before a judge or magistrate, of the country or place.

(4) The person before whom an affidavit is taken shall state the date on which and the place where the same is taken and shall affix his seal, if any, or the seal of the Court to which he is attached, thereto and sign his name and description at the end thereof.

(5) Any affidavit purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized by sub-rule (3) to taken an affidavit, in testimony of the affidavit having been taken before him, may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of that person.

(6) Alterations and interlineations shall, before an affidavit is sworn or affirmed, be authenticated by the initials of the person before whom the affidavit is taken.

(7) Where the deponent is illiterate, blind or unacquainted with the language in which the affidavit is written, a certificate by the person taking the affidavit that the affidavit was read, translated or explained in his presence to the deponent, that the deponent seemed perfectly to understand it and that the deponent made his signature or mark in his presence, shall appear in the jurists.

(8) Every affidavit filed before the Registrar in connection with any of the proceedings under the Act or the rules shall be duly stamped under the law for the time being in force.

RULE 117: INSPECTION OF DOCUMENTS

The documents mentioned in sub-section (1) of section 125-shall be available for inspection at the head office of the Trade Marks Registry. A copy of the register and such of the other documents mentioned in section 125-, as the Central Government may by notification in the Official Gazette direct, shall be available for inspection at each branch office of the Trade Marks Registry. The inspection shall be on payment of the prescribed fee and at such times on all the days on which the offices of the Trade Marks Registry are not closed to the public, as may be fixed by the Registrar.

RULE 118: DISTRIBUTION OF COPIES OF JOURNAL AND OTHER DOCUMENTS

The Central Government may direct the Registrar to distribute the Journal and any other document which it may consider necessary, to such places as may be fixed by the Central Government in consultation with the State Governments and notified from time to time in the Official Gazette.

RULE 119: CERTIFIED COPIES OF DOCUMENTS

The Registrar may furnish certified copies of any entry in the register or certified copies of any documents referred to in sub-section (1) of section 125-or of any decision or order of the Registrar, or give a certificate [other than a certificate under sub- section (2) of section 23-] as to any entry, matter or thing which he is authorised or required by the Act or the rules to make or do, upon receipt from any person of an application therefore on Form TM-46 accompanied by the prescribed fee. The Registrar shall not be obliged to include in any certificate or certified copy a copy of any mark unless he is furnished by the applicant with a copy thereof suitable for the purpose.

RULE 120: CERTIFICATE FOR USE IN OBTAINING REGISTRATION ABROAD

(1) Where a certificate relating to the registration of a trade mark is desired for use in obtaining registration in any territory outside India the Registrar shall include in the certificate a copy of the mark and may require the applicant for the certificate to furnish him with a copy of the mark suitable for the purpose, and if the applicant fails to do so, the Registrar may refuse to issue the certificate.

(2) Where a trade mark is registered without limitation of colour, the copy of the mark to be included in the certificate, may be either in the colour in which it appears upon the register or in any other colour or colours and it shall be stated in the certificate that the trade mark is registered without limitation of colour.

(3) The Registrar may state in the certificate such particulars concerning the registration of the mark as may seem fit to him, and may omit therefrom references to any disclaimers appearing in the register. The purpose for which the certificate is issued shall be stated therein.

RULE 121: TIME FOR APPEAL

An appeal to a High Court from any decision of the Registrar under the Act or the rules shall be made within three months from the date of such decision or within such further time as the High Court may allow.

RULE 122: APPLICATION MADE TO THE HIGH COURT TO BE SERVED ON THE REGISTRAR

A copy of every application to a High Court under the Act shall be served on the Registrar.

RULE 123: CERTIFICATE OF VALIDITY TO BE NOTED

Where a High Court has certified as provided in section 119-with regard to the validity of a registered trade mark the registered proprietor thereof may request the Registrar on Form TM-47 to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, particulars of which shall be given in the request. An officially certified copy of the certificate shall be sent with the request, and the Registrar shall record a note to that effect in the register and publish the note in the Journal.

RULE 124: RETURN OF EXHIBITS AND PRINTING BLOCKS

(1) Where the exhibits produced in any matter or proceeding under the Act or the rules or the printing block supplied for the purpose of advertisement in the Journal are no longer required in the Trade Marks Registry, the Registrar may call upon the party concerned to take back the exhibits or the printing block, as the case may be, within a time specified by him and if the party fails to do so, such exhibits or printing block, as the case may be, shall be destroyed.

(2) Where, before the notified date any printing blocks have been supplied for the purpose of advertisement in the Journal or any exhibits have been produced in any proceeding, the Registrar may, if satisfied that it is no longer necessary to retain them cause them to be destroyed, after the expiration of one year from the notified date.

RULE 125: DESTRUCTION OF RECORDS

Where an application for the registration of a trade mark has been withdrawn/ abandoned or refused or a trade mark has been removed from the register, the Registrar may, at the expiration of twelve years after the application is withdrawn or is abandoned or is refused or after the trade mark is removed from the register, as the case may be, destroy all or any of the records relating to the application or the trade mark concerned.

RULE 126: RULES TO APPLY TO CERTIFICATION TRADE MARKS

The provisions of Part I, Part III and Part VI of the rules shall, in their application to certification trade marks, apply only subject to the provisions of this Part.

RULE 127: APPLICATION FOR REGISTRATION AND PROCEEDINGS RELATING THERETO

(1) An application for the registration of a certification trade mark under sub- section (1) of section 62-shall be made to the Registrar upon Form TM-4 in quadruplicate and shall be accompanied by ten additional representations of the mark. The draft regulations to be forwarded with the application under the said sub-section (1) of section 62-shall be in quadruplicate and shall be accompanied by Form TM-49.

(2) References in Part I of the rules to the acceptance of an application for the registration of a trade mark, shall, in their application to certification trade mark, be substituted by references to authorisation to proceed with the application.

(3) An applicant for the registration of a certification trade mark shall not be deemed to have abandoned his application, if, in the circumstances of rule 39-he does not apply for a hearing or reply in writing.

(4) The address in India, if any, of an applicant to register a certification trade mark shall be deemed to be the address of his principal place of business in India for all the purposes for which such an address is required by the rules.

RULE 128: CASE ACCOMPANYING APPLICATION

The applicant shall send to the Registrar with his application a case setting out the grounds on which he relies in support of his application. Such case shall be furnished in triplicate.

RULE 129: HEARING BY THE CENTRAL GOVERNMENT BEFORE ISSUING DIRECTIONS TO THE REGISTRAR TO ACCEPT AN APPLICATION OR TO ACCEPT IT CONDITIONALLY.

The Central Government shall not direct the Registrar to refuse an application for registration of a certification trade mark or to accept the application subject to any conditions or limitations or to any amendments or modifications of the application or of the regulations without giving to the applicant an opportunity of being heard and the procedure shall be regulated by the provisions of rule 86-mutatis mutandis.

RULE 130: OPPOSITION TO REGISTRATION OF CERTIFICATION TRADE MARKS

(1) On acceptance of the application the Registrar shall cause the application to be advertised in the Journal and the provisions of rules 51-to60-shall apply mutatis mutandis as they apply in relation to an application under section 18-. The references to Form

TM-5, TM-6 and TM -7 in rules 51-to60-shall, in their application to proceedings on the opposition to the registration of certification trade marks under sub- section (3) of section 64-, be substituted by references to Forms TM-8, TM-9 and TM-10 respectively.

(2) In any case of doubt with regard to the application of the provisions of rules 51-to60-to proceedings on the opposition to the registration of a certification trade mark, any party may apply to the Registrar or the Central Government, as the case may be, for directions.

RULE 131: RECTIFICATION OF CERTIFICATION TRADE MARK ENTRIES

An application for cancellation or variation of registration of a certification trade mark on any of the grounds mentioned in section 69-shall be made on Form TM- 43 and shall set forth particulars of the grounds on which the application is made.

RULE 132: ALTERATION OF REGULATIONS RELATING TO CERTIFICATION TRADE MARKS

An application by the registered proprietor of a certification trade mark under sub-section (2) of section 65-shall be made on Form TM-42 and where the Central Government decides to advertise such application under sub-section (3) of section 65-, the advertisement shall be made in the Journal.

RULE 133: CONSENT OF CENTRAL GOVERNMENT TO ASSIGNMENT OR TRANSMISSION OF CERTIFICATION TRADE MARKS

An application for the consent of the Central Government under section 42-shall be made on Form TM-22.

RULE 134: DEFINITIONS

For the purposes of rules 144-and145--

(a) "balanced numeral" means a trade mark consisting of either identical numerals or identical letters of not less than three nor more than seven digits.

(b) "digit" includes a single letter;

RULE 135: RULES TO APPLY TO TEXTILE MARKS

Subject to the provisions of this Part, the provisions of Part I, Part II and Part VI of the rules shall apply to trade marks in respect of textile goods as they apply to trade marks in respect of non-textile goods.

RULE 136: TEXTILE MARKS

The expression "textile mark" means a trade mark used or proposed to be used in relation to goods specified in rule 137-as "textile goods" for the purpose of Chapter IX of the Act.

RULE 137: TEXTILE GOODS

The classes of goods in relation to trade marks to which Chapter IX of the Act shall apply and which are in the Act and the rules referred to as textile goods shall be classes 22 to 27 (inclusive) of the Fourth Schedule.

RULE 138: APPLICATION TO REGISTER WORD MARK

12[0mitted by the Trade and Merchandise Marks (Amendment)Rules, 1985, w.e.f. 1-3-1985.]

RULE 139: APPLICATION TO REGISTER LETTERS OR NUMERALS OR ANY COMBINATION THEREOF

13[Omitted by the Trade and Merchandise Marks (Amendment)Rules, 1985, w.e.f. 1-3-1985.]

RULE 140: APPLICATION TO REGISTER LETTERS OR NUMERALS OR ANY COMBINATION THEREOF IN RESPECT OF ITEMS OF TEXTILE GOODS

(1) A separate application for the registration of a trade mark (other than a certification trade mark) shall be made on Form14[TM-1] in respect of each of the items of textile goods mentioned in the Fifth Schedule where the mark consists exclusively of letters or numerals or any combination thereof.

(2) The items of the Fifth Schedule shall be grouped as follows; and goods falling in each group shall be deemed to be goods of the same description, and goods falling in different groups shall not be deemed to be goods of the same description for the purpose of an application for the registration of trade marks consisting exclusively of letters or numerals or any combination thereof made under sub-rule (1) and proceedings relating thereto but not for any other purpose- Group-1-Items 1, 4, 5, 8, 9, 10, 11, 12, 16, 19,

20, 22, 23, 24, 25, 26, 27, 30, 33, 36, 37, 39, 41, 42, 44, 45, 48, 49, 54, 55, 59, 61, 62, 65 and 91. Group 2-Items 2, 3, 14, 17, 18, 34, 35 and 47. Group 3-Items 6, 7, 21, 38 and 52. Group 4-Items 13, 29, 75, 77 and 78. Group 5-Items 15, 28, 31, 40, 60, 66, 79,

88, 90 and 93. Group 6-Items 32, 43, 64 and 94. Group 7-Items 46, 83 and 85. Group 8-Items 50, 51, 56, 57, 63, 76, 80, 84, 86, 87 and 89. Group 9-Item 53. Group 10-Items 58, 82 and 92. Group 11-Items 67, 68, 69, 70 and 71.Group 12 - Item 72. Group 13 -

Item 73. Group 14 - Item 74. Group 15 - Item 81.

(3) Notwithstanding anything contained in sub-rule (2), in respect of any proceeding relating to trade marks consisting exclusively of letters, numerals or any combination thereof for the registration of which applications were made on15[or] before the 31st July, 1945, the goods falling in different items of the Fifth Schedule shall not be deemed to be goods of the same description.

RULE 141: APPLICATION FOR REGISTRATION OF OTHER TEXTILE MARKS

16[Omitted by the Trade and Merchandise Marks (Amendment) Rules, 1985, w.e.f. 1-3-1985.]

RULE 142: SEARCH

17[Omitted by the Trade and Merchandise Marks (Amendment) Rules, 1985, w.e.f. 1-3-1985.]

RULE 143: CONTINUANCE OF A MARK IN THE REFUSED TEXTILE MARKS LIST

18[Omitted by the Trade and Merchandise Marks (Amendment) Rules, 1985, w.e.f. 1-3-1985.]

RULE 144: NON REGISTRABILITY OF CERTAIN MARKS

In respect of textile goods the following marks shall not be capable of registration, namely;-

(a) any numeral of one digit or of more than six digits not bring a balanced numeral;

(b) a single letter or any combination of letters of more than six letters, not being a balanced numeral:

(d) any fraction or letter fraction consisting of more than eight digits together;

(e) any fraction or letter fraction having less than three digits together;

(f) any combination of numerals, and fractions of more than six digits;

(g) any combination of numerals, letters, fractions and letter fractions either having more than eight digits or ending with a fraction of more than one digit in the numerator or in the denominator;

(h) numerals or letters representing cloth dimensions;

(i) a balanced numeral which does not consist of at least two more or two less digits than a balanced numeral of the same series already registered in the name of a different person, in respect of the same goods or description of goods.

RULE 145: MARKS LIKELY TO DECEIVE OR TO CAUSE CONFUSION

(1)A trade mark consisting of numerals, letters, fractions, letter fractions or any combination thereof, and not being a balanced numeral, shall not be capable of being registered as a textile mark if it does not differ from a trade mark registered in the name of a different person in respect of the same goods or description of goods-

(a) in the case of a numeral not exceeding four digits, in at least one corresponding digit;

(b) in the case of a numeral of five digits, in at least two corresponding digits;

(d) in the case of a combination of two letters, in at least one corresponding letter;

(e) in the case of a combination of three or four letters, in at least two corresponding letters;

(f) in the case of a combination of five or six letters, in at least three corresponding letters;

(g) in the case of a mark consisting of one letter and one numeral digit, in at least one of them;

(h) in the case of a mark consisting of one letter and two or three numeral digits, in at least one corresponding numeral digit;

(i) in the case of a mark consisting of one letter and four or more numeral digits, in at least two corresponding digits;

(j) in the case of a mark consisting of two or more letters and one or more numeral digits, in at least one corresponding letter and one corresponding numeral digit;

(k) in the case of a fraction or letter fraction or any combination thereof in which the total number of digits in the numerator and denominator is three or four, in at least one corresponding digit from either the numerator or the denominator;

(l) in the case of a fraction or letter fraction or any combination thereof in which the total number of digits in the numerator and denominator is five or more, in at least one corresponding digit in the numerator and one corresponding digit in the denominator or two corresponding digits in either the numerator or the denominator;

(m) in the case of a combination consisting of a numeral and a fraction in at least one corresponding numeral digit;

(n) in the case of a combination of letters, numerals and fractions (including letter fractions) -

(i) where the total number of digits excluding the fraction is not more than three in at least one corresponding digit;

(ii) where the total number of digits, excluding the fraction, is four or more, in at least two corresponding digits.

(2) Nothing in sub -rule (1) shall be construed to signify that where a trade mark does not come within the scope of any case specified in the said sub-rule, the mark shall necessarily be registered as not being likely to deceive or to cause confusion.

RULE 146: REGISTER OF TRADE MARKS AGENTS

The19[Registrar of Trade Marks] shall maintain a Register of Trade Marks Agents wherein shall be entered the name, address of the place of residence, address of the principal place of business, the nationality, qualifications and date of registration of every registered trade marks agent.

RULE 147: REGISTRATION OF EXISTING REGISTERED TRADE MARKS AGENTS

(1) Notwithstanding anything in rule 148-, every person whose name is, on the notified date, on the Register of Trade Marks Agents maintained under the Trade Marks Rules, 1942, shall be deemed to be registered as a trade marks agent under the Act and the rules.

(2) The continuance fee of trade marks agents deemed to be registered under sub-rule (1) shall be payable as and from the notified date.

RULE 148: QUALIFICATIONS FOR REGISTRATION

Subject to the provisions of rule 149-, a person shall be qualified to be registered as a trade marks agent if he-

(i) is a citizen of India;

(ii) is not less than20[21] years of age;

21[(iii) has passed the examination prescribed in Rule 152-or is an Advocate within the meaning of the Advocates Act, 1961-or is a Member of the Institute of Company Secretaries of India;]

(iv) is a graduate of any university in India or possesses an equivalent qualification; and

(v) is considered by the Central Government as a fit and proper person to be registered as a trade marks agent.

RULE 149: PERSONS DEBARRED FROM REGISTRATION

A person shall not be eligible for registration as a trade marks agent if he-

(i) has been adjudged by a competent Court to be of unsound mind;

(ii) is an undischarged insolvent;

(iii) being a discharged insolvent has not obtained from the Court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;

(iv) has been convicted by a competent Court, whether within or without India of an offence punishable with transportation or imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the

Central Government has, by order in this behalf, removed the disability;

(v) being a legal practitioner has been held guilty of professional misconduct by any High Court in India or by any Court beyond the limits of India; or

(vi) being a chartered accountant, has been held guilty of negligence or misconduct by a High Court.

RULE 150: MANNER OF MAKING APPLICATION

All applications under the provisions of this Part shall be made in triplicate, shall be sent to or left at that office of the Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situate.

RULE 151: APPLICATION FOR REGISTRATION AS A TRADE MARKS AGENT

(1) Every person desiring to be registered as a trade marks agent shall make an application on Form TMA-1.

(2) The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Central Government or the Registrar.

RULE 152: PROCEDURE ON APPLICATION AND QUALIFYING REQUIREMENTS

22[(1) On receipt of an application for the registration of a person as a trade marks agent, the Registrar, if satisfied that the applicant fulfils the prescribed qualifications, shall appoint a date in due course on which the candidate will appear before him for a written examination in Trade Marks Law and practice followed by an interview. The candidate will be expected to possess a detailed knowledge of the provisions of the Act and the rules and a knowledge of the elements of Trade Marks Law.

(2) The qualifying marks for the written examination and for interview shall be 40 per cent and 60 per cent respectively and a candidate shall be declared to have passed the examination only if he obtains an aggregate of 50 per cent of the total marks.]

RULE 153: CERTIFICATE OF REGISTRATION

After a candidate has been interviewed and any further information bearing on his application, which the Registrar may consider necessary has been obtained and if the Registrar considers the applicant eligible and qualified for registration as a Trade Marks Agent, he shall send an intimation to that effect to the applicant and any person so intimated may pay the prescribed fee for his registration as a Trade Marks Agent. Upon receipt of the prescribed fee the Registrar shall cause the applicant's name to be entered in the Registrar of Trade Marks Agents and shall issue to him a certificate on Form 0-4 of his registration as a Trade Marks Agents.]

RULE 154: CONTINUANCE OF A NAME IN THE REGISTER OF TRADE MARKS AGENTS

The continuance of a person's name in the Register of Trade Marks Agents shall be subject to his payment of the fees prescribed in that behalf.

RULE 155: REMOVAL OF AGENT'S NAME FROM THE REGISTER OF TRADE MARKS AGENTS

Provided that before making such declaration under clause (b) the Central Government shall call upon the person concerned to show cause why his registration should not be cancelled and shall make such further enquiry, if any, as it may consider necessary.

(3) The Central Government shall remove from the Register of Trade Marks Agents the name of any registered trade marks agent who is dead.

(4) The removal of the name of any person from the Register of Trade Marks Agents shall be notified in the Official Gazette and in the Journal and shall, wherever possible, be communicated to the person concerned.

RULE 155A: POWER OF REGISTRAR TO REFUSE TO DEAL WITH CERTAIN AGENTS

26[

(1) The Registrar may refuse to recognize-

(a) any individual whose name has been removed from, and not restored to the Registrar;

(b) any person, not being registered as a Trade Marks Agent, who in the opinion of the Registrar is engaged wholly or mainly in acting as agent in applying for trade marks in India or elsewhere in the name or for the benefit of the person by whom he is employed;

(c) any company or firm, if any person whom the Registrar could refuse to recognise as agent in respect of any business under these rules, is acting as a director or manager of the company or is a partner in the firm.

(2) The Registrar shall also refuse to recognise as agent in respect of any business under this rule any person who neither resides nor has a place of business in India.]

RULE 156: RESTORATION OF REMOVED NAMES

(1) The 25[Registrar] may, on an application made on Form TMA-2 within six months from the date of removal of his name from the Register of Trade Marks Agents accompanied by the fee specified in the First Schedule from a person whose name has been removed under clause (b) of sub-rule (1) of rule 155-, restore his name to the Register of Trade Marks Agents and continue his name therein for a period of one year from the date on which his last annual fee became due.

(2) The restoration of a name to the Register of trade Marks Agents shall be notified in the Official Gazette and in the Journal and shall be communicated to the person concerned.

RULE 157: ALTERATION IN THE REGISTER OF TRADE MARKS AGENTS

(1)A registered trade marks agent may apply on Form TMA -3 for alteration of his name, address of the place of residence, address of the principal place of a business or qualifications entered in the Register of Trade Marks Agents. On receipt of such application and the fee prescribed in that behalf, the27[Registrar] shall cause the necessary alteration to be made in the Register of Trade Marks Agents.

(2) Every alteration made in the Register of Trade Marks Agents shall be notified in the Official Gazette and in the Journal.

RULE 158: PUBLICATION OF THE REGISTER OF TRADE MARKS AGENTS

The Register of Trade Marks Agents shall be published from time to time, as the 27[Registrar] may deem fit, the entries being arranged in the alphabetical order of the surnames of the registered trade marks agents, and copies thereof shall be placed on sale.

RULE 158A: APPEAL

An appeal shall lie to the Central Government from any order or decision of the Registrar in regard to registration of Trade Marks Agents under Part IV of these rules, and the decision of the Central Government shall be final and binding.]

RULE 159: DEFINITIONS

For the purposes of this Part, unless the context otherwise requires-

(a) "count" in relation to yarn means the relation of length to weight thereof either in the English system or Metric system, as follows:-

(i) The English count for yarn shall be the number of hanks each of 840 yards in length that weigh one pound avoirdupois or in other words the number of yards of yarn that weigh 8.3 grains.

(ii) The metric count for all yarn with the exception of raw and prepared silk shall represent the relation between 1,000 meters of yarn to 500 grammes or 2 metres to I gramme or in other words half the number of hanks (each of 1,000 metres length) that weigh 500 grammes. The English system of counts may be converted into the metric system of counts and vice versa by the following formulae :-The English count No. of yarn X 0,847 the metric count. The metric count No. of yarn X 1.181 - the English count.

(iii) The metric count for raw and prepared silk shall be the weight in grammes of 10,000 metres of yarn.

(b) "Customs collector" shall have the meaning assigned to the term in the Sea Customs Act, 1878.

RULE 160: TESTING FOR LENGTH AND WIDTH OF PIECE GOODS

(l) In testing for length of piece-goods such as are ordinarily sold by the length or by the piece the measurement shall be made along the selvage.

(2) In testing piece-goods aforesaid for width the cloth shall be measured by each of the following methods and the mean of the measurements so taken shall be adopted. Care shall be exercised in applying each method to select a portion of the cloth where the creases are fewest, and the warp and weft respectively as straight as possible.

(a) A double-fold of the cloth shall be laid on the table and the creases smoothed out, so that if may lie perfectly flat. The measuring rod shall then be placed across the cloth, and the finger and thumb run down the rod on each side of it across the cloth so as to once more flatten the creases. Care shall be taken in doing this to see that whilst the creases are smoothed out, stretching is avoided and the warp threads remain perpendicular to the rod. The measurement shall then be recorded.

(b) A fold of the cloth shall be taken, and the doubled edge held between a finger and thumb at each end, and extended over the measuring rod which shall be kept flat on the table. The extension shall be sufficient to remove the creases but not to stretch the warp out of the perpendicular.

RULE 161: ALLOWANCES FOR PECULIARITIES OF CLOTH AND FOR STRETCHING

(l) In taking the measurements aforesaid the peculiarities of the cloth under measure shall be taken into consideration and due allowance be made for these characteristics.

(2) If owing to the peculiarities of the cloth it is found difficult to determine a reasonable degree of tension for purposes of measurement, the mean between stretching to the full, and not stretching, shall be adopted.

(3) The influence of stretching for length on the width shall always be taken into account in measuring cloth. Where the cloth has been stretched lengthwise in the making, it will lose in length as the weft is straightened to measure the width. It may then have to be ascertained, whether the trade description of length does not become false in the process of making that for width correct. To ascertain this a measurement along the selvages both lengthwise and across shall be made.

RULE 162: TESTING OF YARNS

Yarns may be tested by the customs -collector for length and count when he has reason to suspect or on information by any informant that the trade description is false.

RULE 163: NUMBER OF SAMPLES TO BE SELECTED

An examination of yarns to test the accuracy of the description of count or length shall be made, in the first instance, up to the limit of one bundle in every one hundred bales or fractions of one hundred bales in a consignment.

RULE 164: FURTHER EXAMINATION

If, on such examination the difference between the average count or length and the described count or length is in excess of the variation permitted in the notification issued by the Central Government under section 95-of the Act, the importer or any other person having any claim to, or in relation to, the goods in question or otherwise interested may apply for a further examination.

RULE 165: MANNER OF SELECTION AND TESTING OF SAMPLES

The test to determine length of yarns shall be as follows:-

(i) From every one hundred bales, or fraction of 100 bales, in a consignment one bundle, shall be selected at random, the hanks in this bundle shall then be measured on the warp wheel one after the other, in the presence of the importer or any other person interested as is referred to in the last foregoing rule, or his representative and the lengths noted, the process being continued (within the limits of the bundle) until either the importer or other person, as the case may be, is satisfied that the yarn is short, or the average of the lengths noted shows that it is of full length.

(ii) When the importer or other person is dissatisfied with the test aforesaid he may, on payment of the cost, require the customs collector to measure more hanks up to 1 per cent of the total number of hanks in the consignment, such hanks being taken at random by an officer of the customs out of any bundles in the consignment.

RULE 166: STOVE TEST

(1) The stove test may be applied by the customs officers only in cases where weighment by the ordinary methods shows the weight of the yarn to be short or in which the feel and appearance of yarn indicate that it is abnormally moist or over- conditioned or where the importer demands the test. Where the test is carried out on demand by the importer, the fee levied for carrying out the test shall be returned if the test fails to support the original determination of count and length by the customs officers. If more than one application of the test is demanded a further fee shall be levied for each fresh test, the whole sum charged being retained or refunded according to his final decision on the results of the tests.

(2)

(a) In carrying out the stove test, in the case of cotton yarn a regain of 81/2 per cent shall be added to the weight obtained after the yarn is reduced to an absolutely dry condition, and the figure so obtained shall be regarded as the actual weight of the yarn under normal conditions.

(b) In the case of silk, or woollen or other yarns other than cotton yarn the regain to be added to the weight obtained after reducing such yarns to dry condition shall be according tot the table of official standards supplied with the stove test apparatus.

RULE 167: PLACE OF TESTING

The testing of piece-goods and yarn referred to in rules 160-to166-shall be made at the customs laboratories or at such place and by such officer as the customs- collector may direct.

RULE 168: SECURITY

The customs-collector may require from any informant referred to in rule 162-security not exceeding five hundred rupees and where he is satisfied that the information given is wilfully false, the security shall be forfeited.

RULE 169: PIECE GOODS

"Piece-goods such as are ordinarily sold by length or by the piece" (hereinafter referred to as 'piece-goods') shall for the purposes of section 74-of the Act or section 18 of the Sea Customs Act, 1878include cotton piece goods, woollen piece -goods, silk piece-goods, art silk piece goods of synthetic fibre and other piece-goods of mixed fabrics, shall not include the following descriptions of goods namely:-

(a) Alhambras, except Alhambras quiltings. Blankets. Blind Cloth in cut-pieces. Book-Binding cloth in cut -pieces. Buckrams in cut-pieces. Carpets (in rolls). Counterpanes. Decatising wrappers. Dusters in woven pieces. Embroidered all-overs and

embroidered saris of all sorts. Embroidered flounces. Filter cloth. Glass cloth in woven pieces. Handkerchiefs in woven pieces. Laces and nets including Cotton Brettone nets. Lace curtain cloth. Pillow Calico (Tubular) Prayer Mats. Press cloth in cut pieces.

Quilts. Rugs. Sarongs up to 21/2 yards or 2.28 metres in length. Shawls (finished) withends hemmed or fringed, imported singly or in pieces, containing two or more shawls. Sponge Cloth (for swabs). Teddy Bear or imitation Seal Skin Cloth. Towels in woven pieces. Woollen cleaner cloth. Woollen knitted cloth Woollen roller cloth. Woolen sizing Flannel.

(b)

(i) Cotton remnants or cut lengths measuring less than 15 yards (or 14 meteres) which are not in current ordinary trade practice sold by length or by the piece;

(ii) Fents regardless of their length, which are so defective owing to accidents in the weaving, dyeing or princint that they are not ordinarily capable of being sold by length or by the piece.

RULE 170: STAMPING OF PIECE GOODS

(1) Piece-goods which have been manufactured, bleached, dyed, printed or finished in India in premises which are a factory as defined in the Factories Act, 1948shall be stamped with the particulars required under sub-section (1) of section 74-.

(2) In the case of piece-goods manufactured outside India (each piece shall be marked with the name of the manufacturer, exporter, or wholesale purchaser in India of the goods and with the real length of the piece in standard yards or in standard meteres as required under clause (f) of section 18 of the Sea Customs Act, 1878.

RULE 171: CASES WHERE REQUIREMENT AS TO STAMPING MAY BE WAIVED

Provided, however, where a customs -collector exercises his discretion under this sub- rule, he shall forthwith report the case, sending a sample of the goods to the Central Government through the Central Board of Revenue, so that the question of issuing general orders in favour of such goods may be considered.

(2) Cotton and wollen piece-goods imported for the personal use of individuals or private associations of individuals and not for trade purposes need not be stamped.

RULE 172: NATURE OF STAMPING REQUIRED

(1) In marking the length of the piece-goods the word "yards" or "yds." or "metres" shall accompany the numerals, and in the case of cut-lengths or pieces of the kind other than that described in clause (b) of rule 169-, the number of pieces shall be marked as well as the yards or metres on the front or outer face fold of the cut-piece, the figures being presented in a way to show clearly what they are intended to mean.

(2) The length shall be in standard yards or fractions of such a yard or in standard metres or fractions of a meter and shall represent the actual length of the goods, and not the length before shrinkage or dryage, resulting from processes such as dyeing, or from atmospheric changes which can reasonably be foreseen. Marking in inches or centimeters may be permitted on cloths of small dimensions and delicate make in accordance with the custom of the trade.

(3) The marking shall be such that it is not likely to be removable except by washing the fabric or in the case of goods that are not ordinarily washed, it shall be of such a nature that it is to likely to be obliterated in the ordinary course of handling before the goods reach the purchaser.

(4) The marking shall be conspicuous and in a different colour from that of the fabric, upon the fabric itself, and not upon a removable label or ticket. The marking shall not be upon an inner fold which cannot readily be seen, nor upon a wholly detached piece, but it may be upon piece that is partly detached without being entirely severed. In the case of sarongs which are required to be stamped, the stamping may be made on the selvage in the inner fold instead of one the uppermost fold of the cloth. Marks which are stitched on the fabric and are easily removable by cutting shall not be permitted.

RULE 173: LANGUAGE AND NUMERALS TO BE USED FOR MARKING

All markings required by sub-section (2) of section 74-shall be in English and the international form of Indian numerals shall be used.

RULE 174: INDICATIONS OF WEIGHT, LENGTH, NAME OF MANUFACTURER, ETC

(1) The weight of yarn or thread in each bundle or unit shall ordinarily be indicated thereon in pounds or ounces in the English system or in grammes according to the metric system.

(2) The length of thread in each bundle or unit shall be indicated thereon in yards or metres.

(3) The name of the manufacturer or of the wholesale purchaser in India shall be indicated in full or, provided that the said name is clearly and unambiguously indicated thereby, in an abbreviated form, on each bundle or unit.

RULE 175: MANNER OF MARKING COTTON YARN AND COTTON THREAD

(1) Each bundle of cotton yarn shall be marked with the particulars required under section 74(2)-of the Act by one or more inscribed wrappers, labels or cards applied, affixed or stitched thereto, provided that all the required particulars shall be contained on the exposed surface.

(2) Units of cotton thread shall be marked with the required particulars-

(a) When made up in skeins, by an inscribed label applied round each skein or bundle, of skeins or secured by twine thereto;

(b) when made up in balls, by an inscribed label attached to each ball, or inserted therein but remaining exposed;

(d) when wound on reels, by one or two inscribed labels applied to the end or ends of the reel;

(e) when wound on paper tubes or cones, by an inscribed lable applied round or otherwise affixed to the thread or to the exposed portion of the outer surface of the tube or cone, or, where the diameter of the tube or cone is sufficient for them enable to be clearly exposed to views, to the inner surface of the tube or cone, or, by inscription on the exposed portion of the outer surface of the tube or cone;

(f) when made up in any other form, by an inscribed lable or card applied, affixed or stitched to or enclosed or inserted in, such make up.

(3) Lables or cards used in accordance with sub-rules (1) and (2) shall be so applied as not to be easily detachable or removable from a bundle of cotton yarn or from each unit of cotton thread in the ordinary course of handling before it reaches the normal consumer.

RULE 176: MARKING OF COVER

Where units of cotton thread are enclosed in a cover, such cover shall be marked with the required particulars.

RULE 177: MARKINGS TO BE CLEAR AND DISTINCT

All markings on bundles of cotton yarn or units of cotton thread shall be legible, distinct and in a colour which is not likely to be easily obliterated and which shall be different from the colour of the surface marked.

RULE 178: MANNER OF EXPRESSING COUNT OF COTTON YARN

The count of cotton yarn shall ordinarily be expressed in the English or metric system by adding the letter 'S' after the numeral or numerals.

Where, however, a bundle is packed on the metric system, the count shall be accompanied by the words "metric count" or by some other clear and definite indication conveying the fact and in the absence of such words or indication the marking shall be regarded as indicating that it is in the English system.

RULE 179: INDICATION OF OTHER PARTICULARS

Nothing in rules 173-to178-shall be construed as prohibiting the indication in any manner of other particulars relating to the cotton yarn or cotton thread so long as the conspicuousness of the required particulars is not affected thereby.

RULE 180: EXEMPTIONS

All premises where the work is done by members of one family with or without the assistance of not more than ten other employees and all premises controlled by a co-operative society where not more than twenty workers are employed in the premises shall be exempted from the operation of rules 173-to178-

RULE 181: REPEAL

The Trade Marks Rules, 1942, the Cotton Yarn and Cotton Thread (Marking) Rules, 1948and the Stamping of Piece goods and the Testing of Yarns Rules, 1949are hereby repealed without prejudice to anything done under such rules before the coming into force of the rules.

Central Bare Acts

Trade and Merchandise Marks Act, 1958 Complete Act - Bare Act