Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER XII: OFFENCES, PENALTIES AND PROCEDURE
101. 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 or services who-
(a) applies it to the goods themselves
or uses it in relation to services; 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 or services in connection with which it is used are designated
or described by that trade mark or mark or trade description; or
(e) in relation to the goods or
services uses a trade mark or trade description in any sign, advertisement,
invoice, catalogue, business letter, business paper, price list or other
commercial document and goods are delivered or services are rendered to
a person in pursuance of a request or order made by reference to the trade
mark or trade description as so used.
(2) A
trade mark or mark or trade description shall be deemed to be applied
to goods whether it is woven in, impressed on, or otherwise worked into,
or annexed or affixed to, the goods or to any package or other thing.
102 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 or services a trademark who, without the assent
of the proprietor of the trademark,-
(a) applies such trade mark or
a deceptively similar mark to goods or services 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 or services, the burden of proving the assent of the proprietor
shall lie on the accused.
103. Penalty for applying false trade marks, trade descriptions,
etc.
Any person
who-
(a) falsifies any trade mark;
or
(b) falsely applies to goods or
services 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 services; or
(e) applies to any goods to which
an indication of the country or place in which they were made or produced
or the name and address of the manufacturer or person for whom the goods
are manufactured is required to be applied under section 139, a false
indication of such country, place, name or address; or
(f) tampers with, alters or effaces
an indication of origin which has been applied to any goods to which it
is required to be applied under section 139; or
(g) causes any of 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 shall not be less than six months but which may extend to
three years and with fine which shall not be less than fifty thousand
rupees but which may extend to two lakh rupees:
PROVIDED
that the court may, for adequate and special reasons to be mentioned in
the judgement, impose a sentence of imprisonment for a term of less than
six months or a fine of less than fifty thousand rupees.
104. Penalty for selling goods or providing services to which
false trade mark or false trade description is applied
Any person
who sells, lets for hire or exposes for sale, or hires or has in his possession
for sale, goods or things, or provides or hires services, to which any
false trade mark or false trade description is applied or which, being
required under section 139 to have applied to them an indication of the
country or place in which they were made or produced or the name and address
of the manufacturer, or person for whom the goods are manufactured or
services provided, as the case may be, are without the indications so
required, shall, unless he proves,-
(a) that, having taken all reasonable
precautions against committing an offence against this section, he had
at the time of commission of the alleged offence no reason to suspect
the genuineness of the trade mark or trade description or that any offence
had been committed in respect of the goods or services; or
(b) that, on demand by or on behalf
of the prosecutor, he gave all the information in his power with respect
to the person from whom he obtained such goods or things or services;
or
(c) that otherwise he had acted
innocently,
be punishable with imprisonment
for a term which shall not be less than six months but which may extend
to three years and with fine which shall not be less than fifty thousand
rupees but which may extend to two lakh rupees:
PROVIDED
that the court may, for adequate and special reasons to be mentioned in
the judgement, impose a sentence of imprisonment for a term of less than
six months or a fine of less than fifty thousand rupees.
105. Enhanced penalty on second or subsequent conviction
Whoever
having already been convicted of an offence under section 103 or section
104 is again convicted of any such offence shall be punishable for the
second and for every subsequent offence, with imprisonment for a term
which shall not be less than one year but which may extend to three years
and with fine which shall not be less than one lakh rupees but which may
extend to two lakh rupees:
PROVIDED that the court may, for
adequate and special reason to be mentioned in the judgement, impose a
sentence of imprisonment for a term of less than one year or a fine of
less than one lakh rupees:
PROVIDED
FURTHER that for the purposes of this section, no cognizance shall be
taken of any conviction made before the commencement of this Act.
106. Penalty for removing piece goods, etc., contrary to section
81
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 81 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.
107. 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 services in respect of
which it is not in fact registered; or
(d) to the effect that registration
of a trade mark gives an exclusive right to the use thereof in any circumstances
in which, having regard to limitation entered on the register, the registration
does not in fact give that right.
(2) If any person contravenes
any of the provisions of sub-section (1), he shall be punishable with
imprisonment for a term which may extend to three years, or with fine,
or with both.
(3) For the purposes of this section,
the use in India in relation to a trade mark of the word "registered",
or of any other expression, symbol or sign referring whether expressly
or impliedly to registration, shall be deemed to import a reference to
registration in the register, except-
(a) where that word or other expression,
symbol or sign is used in direct association with other words delineated
in characters at least as large as those in which that word or other expression,
symbol or sign is delineated and indicating that the reference is to registration
as a trade mark under the law of a country outside India being a country
under the law of which the registration referred to is in fact in force;
or
(b) where that other expression,
symbol or sign is of itself such as to indicate that the reference is
to such registration as is mentioned in clause (a); or
(c) where
that word is used in relation to a mark registered as a trade mark under
the law of a country outside India and in relation solely to goods to
be exported to that country or in relation to services for use in that
country.
108. 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 two years, or with fine, or with both.
109. 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.
110. No offence in certain cases
The provisions
of sections 102, 103, 104 and 105 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
the aforesaid sections 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.
111. Forfeiture of goods
(1) Where
a person is convicted of an offence under section 103 or section 104 or
section 105 or is acquitted of an offence under section 103 or section
104 on proof that he acted without intent to defraud, or under section
104 on proof of the matters specified in clause (a), clause (b) or clause
(c) of that section, the court convicting or acquitting him may direct
the forfeiture to Government of all goods and things by means of, or in
relation to, which the offence has been committed, or but for such proof
as aforesaid would have been committed.
(2) When a forfeiture is directed
on a conviction and an appeal lies against the conviction, an appeal shall
lie against the forfeiture also.
(3) When a forfeiture is directed
on acquittal and the goods or things to which the direction relates are
of value exceeding fifty rupees, an appeal against the forfeiture may
be preferred, within thirty days from the date of the direction, to the
court to which in appealable cases appeals lie from sentences of the court
which directed the forfeiture.
(4) When
a forfeiture is directed on a conviction, the court, before whom the person
is convicted, may order any forfeited articles to be destroyed or otherwise
disposed of as the court thinks fit.
112 Exemption of certain persons employed in ordinary course
of business
Where a
person accused of an offence under section 103 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 or providing of services, as the case may be; and
(c) that, having taken all reasonable
precautions against committing the offence charged, he had, at the time
of the commission of the alleged offence, no reason to suspect the genuineness
of the trade mark or trade description; and
(d) that, on demand made by or
on behalf of the prosecutor, he gave all the information in his power
with respect to the persons on whose behalf the trade mark or trade description
was applied,
he shall
be acquitted.
113. Procedure where invalidity of registration is pleaded by
the accused
(1) Where
the offence charged under section 103 or section 104 or section 105 is
in relation to a registered trade mark and the accused pleads that the
registration of the trade mark is invalid, the following procedure shall
be followed:-
(a) If the court is satisfied
that such defence is prima facie tenable, it shall not proceed with the
charge but shall adjourn the proceeding for three months from the date
on which the plea of the accused is recorded to enable the accused to
file an application before the Appellate Board under this Act, for the
rectification of the register on the ground that the registration is invalid.
(b) If the accused proves to the
court that he has made such application within the time so limited or
within such further time as the court may for sufficient cause allow,
the further proceedings in the prosecution shall stand stayed till the
disposal of such application for rectification.
(c) If within a period of three
months or within such extended time as may be allowed by the court the
accused fails to apply to the Appellate Board for rectification of the
register, the court shall proceed with the case as if the registration
were valid.
(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 court shall stay the further proceedings in the prosecution pending
the disposal of the application aforesaid and shall determine the charge
against the accused in conformity with the result of the application for
rectification in so far as the complainant relies upon the registration
of his mark.
114 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.
Explanation : For the purpose of
this section-
(a) "company" means
any body corporate and includes a firm or other association of individuals;
and
(b) "director",
in relation to a firm, means a partner in the firm.
115. Cognizance of certain offences and the powers of police
officer for search and seizure
(1) No
court shall take cognizance of an offence under section 107 or section
108 or section 109 except on complaint in writing made by the Registrar
or any officer authorised by him in writing:
PROVIDED that in relation to clause
(c) of sub-section (1) of section 107, a court shall take cognizance of
an offence on the basis of a certificate issued by the Registrar to the
effect that a registered trade mark has been represented as registered
in respect of any goods or services in respect of which it is not in fact
registered.
(2) No court inferior to that
of a Metropolitan Magistrate or Judicial Magistrate of the first class
shall try an offence under this Act.
(3) The offences under section
l03 or section l04 or section l05 shall be cognizable.
(4) Any police officer not below
the rank of deputy superintendent of police or equivalent, may, if he
is satisfied that any of the offences referred to in sub-section (3) has
been, is being, or is likely to be, committed, search and seize without
warrant the goods, die, block, machine, plate, other instruments or things
involved in committing the offence, wherever found, and all the articles
of seized shall, as soon as practicable, be produced before a judicial
Magistrate of the first class or Metropolitan Magistrate, as the case
may be:
PROVIDED that the police officer,
before making any search and seizure, shall obtain the opinion of the
Registrar on facts involved in the offence relating to trade mark and
shall abide by the opinion so obtained.
(5) Any
person having an interest in any article seized under sub-section (4),
may, within fifteen days of such seizure, make an application to the Judicial
Magistrate of the first class or Metropolitan Magistrate, as the case
may be, for such article being restored to him and the Magistrate, after
hearing the applicant and the prosecution, shall make such order on the
application as he may deem fit.
116. 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
(b) of section 112 of the Customs Act, 1962, relating to confiscation
of goods under clause (d) of section 111 and notified by the Central Government
under clause (n) of sub-section (2) of section 11 of the said Act for
the protection of trade marks relating to import of goods, be prima facie
evidence of the place or country in which the goods are made or produced.
117. 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 deems reasonable having regard to all the circumstances of
the case and the conduct of the parties and the costs so awarded shall
be recoverable as if they were a fine.
118. Limitation of prosecution
No prosecution
for an offence under this Act or under clause (b) of section 112 of the
Customs Act, 1962, relating to confiscation of goods under clause (d)
of section 111 and notified by the Central Government under clause (n)
of sub-section (2) of section 11 of the said Act for the protection of
trade marks, relating to import of goods shall be commenced after expiration
of three years next after the commission of the offence charged, or two
years after the discovery thereof by the prosecutor, whichever expiration
first-happens.
119. 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.
120. 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.
121. Instructions of Central Government as to permissible variation
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, guage
or weight which are to be recognised by criminal courts as permissible
in the case of any goods.
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