Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER I: PRELIMINARY
1. Short title, extent and commencement
(1) This
Act may be called the Trade Marks Act, 1999.
(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:
PROVIDED
that different dates may be appointed for different provisions of this
Act, and any reference in any such provision to the commencement of this
Act shall be construed as a reference to the coming into force of that
provision.
2. Definitions and interpretation
(1) In
this Act, unless the context otherwise requires, -
(a) "Appellate
Board" means the Appellate Board established under section 83;
(b) "assignment"
means an assignment in writing by act of the parties concerned;
(c) "associated
trade marks" means a trade marks deemed to be, or requited to be,
registered as associated trade marks under this Act;
(d) "Bench"
means a Bench of the Appellate Board;
(e) "certification
trade mark" means a mark capable of distinguishing the goods or services
in connection with which it is used in the course of trade which are certified
by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy or
other characteristics from goods or services not so certified and registrable
as such under Chapter IX in respect of those goods or services in the
name, as proprietor of the certification trade mark, of that person;
(f) "Chairman"
means the Chairman of the Appellate Board;
(g) "collective
mark" means a trade mark distinguishing the goods or services of
members of an association of persons (not being. a partnership within
the meaning of the Indian Partnership Act, 1932) which is the proprietor
of the mark from those of others;
(h) "deceptively
similar"-A mark shall be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as to be likely to deceive
or cause confusion;
(i) "false
trade description" means-
(I) a
trade description which is untrue or misleading in a material respect
as regards the goods or services to which it is applied". or
(II) any
alteration of trade description as regards the goods or services 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 metres than
there are contained therein standard yards or standard metres; or
(IV) any
marks or arrangement or combination thereof when applied -
(a) to
goods in such a manner as to be likely to lead persons to believe that
the goods are the manufacture or merchandise of some person other than
the person whose merchandise or manufacture they really are;
(b) in
relation to services in such a manner as to be likely to lead persons
to believe that the services are provided or rendered by some person other
than the person whose services they really are; or
(V) any
false name or initials of a person applied to goods or services in such
manner as if such name or initials were a trade description in any case
where the name or initials -
(a) is
or are not a trade mark or part of a trade mark; and
(b) is
or are identical with or deceptively similar to the name or initials of
a person carrying on business in connection with goods or services of
the same description or both and who has not authorised the use of such
name or initials; and
(c) is
or are either the name or initials of a fictitious person or some person
not bona fide carrying on business in connection with such goods or services,
and the
fact that a trade description is a trade mark or part of a trade mark
shall not prevent such trade description being a false trade description
within the meaning of this Act;
(j) "goods"
means anything which is the subject of trade or manufacture;
(k) "Judicial
Member" means a Member of the Appellate Board appointed as such under
this Act, and includes the Chairman and the Vice-Chairman;
(l) "limitations"
(with its grammatical variations) means any limitation of the exclusive
right to the use of a trade mark given by the registration of a person
as proprietor thereof, including limitations of that right as to mode
or area of use within India or outside India;
(m) "mark"
includes a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colours or
any combination thereof;
(n) "Member"
means a Judicial Member or a Technical Member of the Appellate Board and
includes the Chairman and the Vice-Chairman;
(o) "name"
includes any abbreviation of a name;
(p) "notify"
means to notify in the Trade Mark Journal published by the Registrar;
(q) "package"
includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap,
lid, stopper and cork;
(r) "permitted
use", in relation to a registered trade mark, means the use of trade
mark -
(i) by
a registered user of the trade mark in relation to goods or services-
(a) with
which he is connected in the course of trade; and
(b) in
respect of which the trade mark remains registered for the time being;
and
(c) for
which he is registered as registered user; and
(d) which
complies with any conditions or limitations to which the registration
of registered user is subject; or
(ii) by
a person other than the registered proprietor and registered user in relation
to goods or services -
(a) with
which he is connected in the course of trade; and
(b) in
respect of which the trade mark remains registered for the time being;
and
(c) by
consent of such registered proprietor in a written agreement; and
(d) which
complies with any conditions or limitations to which such user is subject
and to which the registration of the trade mark is subject;
(s) "prescribed"
means prescribed by rules made under this Act;
(t) "register"
means the Register of Trade Marks referred to in sub-section (1) of section
6;
(u) "registered"
(with its grammatical variations) means registered under this Act;
(v) "registered
proprietor", in relation to a trade mark, means the person for the
time being entered in the register as proprietor of the trade mark;
(w) "registered
trade mark" means a trade mark which is actually on the register
and remaining in force;
(x) "registered
user" means a person who is for the time being registered as such
under section 49;
(y) "Registrar"
means the Registrar of Trade Marks referred to in section 3;
(z) "service"
means service of any description which is made available to potential
users and includes the provision of services in connection with business
of any industrial or commercial matters such as banking, communication,
education, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electrical or other energy,
boarding, lodging, entertainment, amusement, construction, repair, conveying
of news or information and advertising;
(za) "trade
description" means any description, statement or other indication,
direct or indirect,-
(i) as
to the number, quantity, measure, guage or weight of any goods ; or
(ii) as
to the standard of quality of any goods or services according to a classification
commonly used or recognised in the trade; or
(iii)
as to fitness for the purpose, strength, performance or behaviour of any
goods, being "drug" as defined in the Drugs and Cosmetics Act,
1940, or "food" as defined in the Prevention of Food Adulteration
Act, 1954; or
(iv) as
to the place or country in which or the time at which any goods or services
were made, produced or provided, as the case may be; or
(v) as
to the name and address or other indication of the identity of the manufacturer
or of the person providing the services or of the person for whom the
goods are manufactured or services are provided; or
(vi) as
to the mode of manufacture or producing any goods or providing services;
or
(vii)
as to the material of which any goods are composed; or
(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 any bill of entry or
shipping bill;
(c) any
other description which is likely to be misunderstood or mistaken for
all or any of the said matters;
(zb) "trade
mark" means a mark capable of being represented graphically and which
is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination
of colours; and
(i) in
relation to Chapter XII (other than section 107), a registered trade mark
or a mark used in relation to goods or services for the purpose of indicating
or so as to indicate a connection in the course of trade between the goods
or services, as the case may be, and some person having the right as proprietor
to use the mark; and
(ii) in
relation to other provisions of this Act, a mark used or proposed to be
used in relation to goods or services for the purpose of indicating or
so to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right, either
as proprietor or by way of permitted user, to use the mark whether with
or without any indication of the identity of that person, and includes
a certification trade mark or collective mark;
(zc) "transmission"
means transmission by operation of law, devolution on the personal representative
of a deceased person and any other mode of transfer, not being assignment;
(zd) "Technical
Member" means a Member who is not a Judicial Member;
(ze) "tribunal"
means the Registrar or, as the case may be, the Appellate Board, before
which the proceeding concerned is pending;
(zf) "Vice-Chairman"
means a Vice-Chairman of the Appellate Board;
(zg) "well-known
trade mark", in relation to any goods or services, means a mark which
has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation
to other goods or services would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first-mentioned
goods or services.
(2) In
this Act, unless the context otherwise requires, any reference-
(a) to
"trade mark" shall include reference to "collective mark"
or "certification trade mark";
(b) to
the use of a mark shall be construed as a reference to the use of printed
or other visual representation of the mark;
(c) to
the use of a mark, -
(i) in
relation to goods, shall be construed as a reference to the use of the
mark upon, or in any physical or in any other relation whatsoever, to
such goods;
(ii) in
relation to services, shall be construed as a reference to the use of
the mark as or as part of any statement about the availability, provision
or performance of such services;
(d) to
the Registrar shall be construed as including a reference to any officer
when discharging the functions of the Registrar in pursuance of sub-section
(2) of section 3;
(e) to
the Trade Marks Registry shall be construed as including a reference to
any office of the Trade Marks Registry.
(3) For
the purposes of this Act, goods and services are associated with each
other if it is likely that those goods might be sold or otherwise traded
in and those services might be provided by the same business and so with
descriptions of goods and descriptions of services.
(4) For
the purposes of this Act, "existing registered trade mark" means
a trade mark registered under the Trade and Merchandise Marks Act, 1958
immediately before the commencement of this Act.
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