Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER XIII: MISCELLANEOUS
122. Protection of action taken in good faith
No suit
or other legal proceedings shall lie against any person in respect of
anything which is in good faith done or intended to be done in. pursuance
of this Act.
123. Certain persons to be public servants
Every person
appointed under this Act and every Member of the Appellate Board shall
be deemed to be a public servant within the meaning of section 21 of the
Indian Penal Code.
124. Stay of proceedings where the validity of registration of
the trade mark is questioned, etc.
(1) Where
in any suit for infringement of a trade mark-
(a) the defendant pleads that
registration of the plaintiff's trade mark is invalid ; or
(b) the defendant raises a defence
under clause (e) of sub-section (2) of section 30 and the plaintiff pleads
the invalidity of registration of the defendant's trade mark,
the court trying the suit (hereinafter
referred to as the court), shall,-
(i) if any proceedings for rectification
of the register in relation to the plaintiff's or defendant’s trade
mark are pending before the Registrar or the Appellate Board, 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 plaintiffs or defendant's trade mark is prima
facie 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 Appellate Board
for rectification of the register.
(2) If the party concerned proves
to the court that he has made any such application as is referred to in
clause (b) (ii) of sub-section (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 trade mark concerned shall be deemed to have been abandoned and
the court shall proceed with the suit in regard to the other issues in
the case.
(4) The final order made in any
rectification proceedings referred to in sub-section (1) or sub-section
(2) shall be binding upon the parties and the court shall dispose of the
suit conformably to such order in so far as it relates to the issue as
to the validity of the registration of the trade mark.
(5) The
stay of suit for the infringement of a trade mark under this section shall
not preclude the court from making any interlocutory order (including
any order granting an injunction, directing account to be kept, appointing
a receiver or attracting any property), during the period of the stay
of the suit.
125. Application for rectification of register to be made to
Appellate Board 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
(e) of sub-section (2) of section 30 and the plaintiff questions the validity
of the registration of the defendant's trade mark, the issue as to the
validity of the registration of the trade mark concerned shall be determined
only on an application for the rectification of the register and, notwithstanding
anything contained in section 47 or section 57, such application shall
be made to the Appellate Board and not to the Registrar.
(2) Subject
to the provisions of sub-section (1), where an application for rectification
of the register is made to the Registrar under section 47 or section 57,
the Registrar may, if he thinks fit, refer the application at any stage
of the proceedings to the Appellate Board.
126. Implied warranty on sale of marked goods
Where a
mark or a trade mark or trade description has been applied to the goods
on sale or in the contract for sale of any goods or in relation to any
service, the seller shall be deemed to warrant that the mark is a genuine
mark and not falsely applied, or that the trade description is not a false
trade description within the meaning of this Act unless the contrary is
expressed in writing signed by or on behalf of the seller and delivered
at the time of the sale of goods or providing of services on contract
to and accepted by the buyer.
127. 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 157, make such orders as
to costs as he considers reasonable, and any such order shall be executable
as a decree of a civil court:
PROVIDED that the Registrar shall
have no power to award costs to or against any party on an appeal to him
against a refusal of the proprietor of a certification trade mark to certify
goods or provision of services or to authorise the use of the mark;
(c) the
Registrar may, on an application made in the prescribed manner, review
his own decision.
128. Exercise of discretionary power by Registrar
Subject
to the provisions of section 131, the Registrar shall not exercise any
discretionary or other power vested in him by this Act or the rules made
thereunder adversely to a person applying for the exercise of that power
without (if so required by that person within the prescribed time) giving
to the person an opportunity of being heard.
129. Evidence before 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.
130. Death of party to a proceeding
If a person
who is a party to a proceeding under this Act (not being a proceeding
before the Appellate Board or a court) dies pending the proceeding, the
Registrar may, on request, and on proof to his satisfaction of the transmission
of the interest of the deceased person, substitute in the proceeding his
successor in interest in his place, or, if the Registrar is of opinion
that the interest of the deceased person is sufficiently represented by
the surviving parties, permit the proceeding to continue without the substitution
of his successor in interest.
131. 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 this 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 inform 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.
132. 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.
133. 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,
give advice as to whether the trade mark appears to him prima facie to
be distinctive.
(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 distinctive, the applicant shall
be entitled, on giving notice of withdrawal of the application within
the prescribed period, to have repaid to him any fee paid on the filing
of the application.
134. Suit for infringement, etc., to be instituted before District
Court
(1) 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 plaintiffs trade mark, whether registered
or unregistered,
shall be instituted in any court
inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses
(a) and (b) of sub-section (1), a "District Court having jurisdiction"
shall, notwithstanding anything contained in the Code of Civil Procedure,
1908 or any other law for the time being in force, include a District
Court within the local limits of whose jurisdiction, at the time of the
institution of the suit or other proceeding, the person instituting the
suit or proceeding, or, where there are more than one such persons any
of them, actually and voluntarily resides or carries on business or personally
works for gain.
Explanation
: For the purposes of sub-section (2), "person" includes the
registered proprietor and the registered user.
135. Relief 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 134 includes 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 infringement labels and marks for destruction or
erasure.
(2) The order of injunction under
sub-section (1) may include an ex parte injunction or any interlocutory
order for any of the following matters, namely:-
(a) for discovery of documents;
(b) preserving of infringing goods,
documents or other evidence which are related to the subject-matter of
the suit;
(c) restraining the defendant
from disposing of or dealing with his assets in a manner which may adversely
affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained
in sub-section (1), the court shall not grant relief by way of damages
(other than nominal damages) or on account of profits in any case-
(a) where in a suit for infringement
of a trade mark, the infringement complained of is in relation to a certification
trade mark or collective 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 a registered user using
by way of permitted use; and
(ii) that when he became aware
of the existence and nature of the plaintiff's right in the trade mark,
he forthwith ceased to use the trade mark in relation to goods or services
in respect of which it was registered; or
(c) where in a suit for passing
off, the defendant satisfies the court-
(i) that at the time he commenced
to use the trade mark complained of 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.
136. Registered user to be impleaded in certain proceedings
(1) In
every proceeding under Chapter VII or under section 91, 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.
137. 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 148 purporting to be certified by the Registrar and sealed
with the seal of the Trade Marks Registry shall be admitted in evidence
in all courts and in all proceedings without further proof or production
of the original.
(2) A
certificate purporting to be under the hand of the Registrar as to any
entry, matter or thing that he is authorised by this Act or the rules
to make or do shall be prima facie evidence of the entry having been made,
and of the contents thereof, or of the matter or things having been done
or not done.
138. Registrar and other officers not compellable to produce
register, etc.
The Registrar
or any officer of the Trade Marks Registry shall not, in any legal proceedings
to which he is not a party, be compellable to produce the register or
any other document in his custody, the contents of which can be proved
by the production 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.
139. 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 an indication of the country or place
in which they were made or produced, or of the name and address of the
manufacturer or the person for whom the goods were manufactured.
(2) The notification may specify
the manner in which such indication shall be applied that is to say, whether
to goods themselves or in any other manner, and the times or occasions
on which the presence of the indication shall be necessary, that is 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 its issue by persons
or associations substantially representing the interests of dealers in,
or manufacturers, producers, or users of, the goods concerned, or unless
the Central Government is otherwise convinced that it is necessary in
the public interest to issue the notification, with or without such inquiry,
as the Central Government may consider necessary.
(4) The provisions of section
23 of the General Clauses Act, 1897 shall apply to the issue of a notification
under this section as they apply to the making of a rule or bye-law the
making of which is subject to the condition of previous publication.
(5) A
notification under this section shall not apply to goods made or produced
beyond the limits of India and imported into India, if in respect of those
goods, the Commissioner of Customs is satisfied at the time of importation
that they are intended for exportation whether after transhipment in or
transit through India or otherwise.
140. Power to require information of imported goods bearing false
trade marks
(1) The
proprietor or a licensee of a registered trade mark may give notice in
writing to the Collector of Customs to prohibit the importation of any
goods if the import of the said goods constitute infringement under clause
(c) of sub-section (6) of section 29.
(2) Where goods, which are prohibited
to be imported into India by notification of the Central Government under
clause (n) of sub-section (2) of section 11 of the Customs Act, 1962,
for the protection of trade marks, and are liable to confiscation on importation
under that Act, are imported into India, the Commissioner of Customs if,
upon representation made to him, he has reason to believe that the trade
mark complained of is used as a false trade mark, may require the importer
of the goods, or his agent, to produce any documents in his possession
relating to the goods and to furnish information as to the name and address
of the person by whom the goods were consigned to India and the name and
address of the person to whom the goods were sent in India.
(3) The importer or his agent
shall, within fourteen days, comply with the requirement as aforesaid,
and if he fails to do so, he shall be punishable with fine which may extend
to five hundred rupees.
(4) Any
information obtained from the importer of the goods or his agent under
this section may be communicated by the 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.
141. Certificate of validity
If in any
legal proceeding for rectification of the register before the Appellate
Board a decision is on contest given in favour of the registered proprietor
of the trade mark on the issue as to the validity of the registration
of the trade mark, the Appellate Board may grant a certificate to that
effect, and if such a certificate is granted, then, in any subsequent
legal proceeding in which the said validity comes into question the said
proprietor on obtaining a final order or judgement in his favour affirming
validity of the registration of the trade mark shall, unless the said
final order or judgement for sufficient reason directs otherwise, be entitled
to his full cost charges and expenses as between legal practitioner and
client.
142. 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 the registered proprietor or the
registered user of the trade mark, bring a suit against the first-mentioned
person and may obtain a declaration to the effect that the threats are
unjustifiable, and an injunction against the continuance of the threats
and may recover such damages (if any) as he has sustained, unless the
first-mentioned person satisfies the court that the trade mark is registered
and that the acts in respect of which the proceedings were threatened,
constitute, or, if done, would constitute, an infringement of the trade
mark.
(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 52 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.
143. 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.
144. Trade usages, etc., to be taken into consideration
In any
proceeding relating to a trade mark, the tribunal shall admit evidence
of the usages of the trade concerned and of any relevant trade mark or
trade name or get up legitimately used by other persons.
145. 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
(c) a
person in the sole and regular employment of the principal.
146. Marks registered by an agent or representative without authority
If an agent
or a representative of the proprietor of a registered trade mark, without
authority uses or attempts to register or registers the mark in his own
name, the proprietor shall be entitled to oppose the registration applied
for or secure its cancellation or rectification of the register so as
to bring him as the registered proprietor of the said mark by assignment
in his favour:
PROVIDED
that such action shall be taken within three years of the registered proprietor
of the trade mark becoming aware of the conduct of the agent or representative.
147. 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;
(c) an index of the names of the
proprietors of registered trade marks; and
(d) an
index of the names of registered users.
148. Documents open to public inspection
(1) Save
as otherwise provided in sub-section (4) 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;
(c) all regulations deposited
under section 63 or section 74, and all applications under section 66
or section 77 for varying such regulations;
(d) the indexes mentioned in section
147; and
(e) such other documents as the
Central Government may, by notification in the Official Gazette, specify,
shall, subject to such conditions
as may be prescribed, be open to public inspection at the Trade Marks
Registry:
PROVIDED that when such register
is maintained wholly or partly on computer, the inspection of such register
under this section shall be made by inspecting the computer print-out
of the relevant entry in the register so maintained on computer..
(2) Any
person may, on an application to the Registrar and on payment of such
fees as may be prescribed, obtain a certified copy of any entry in the
register or any document referred to in sub-section (1).
149. 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.
150. Fees and surcharge
(1) There shall be paid in respect
of applications and registration and other matters under this Act such
fees and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in
respect of the doing of an act by the Registrar, the Registrar shall not
do that act until the fees 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.
151. Savings in respect of certain matters in Chapter XII
Nothing
in Chapter XII shall-
(a) exempt any person from any
suit or other proceeding which might, but for anything in that Chapter,
be brought against him; or
(b) entitle any person to refuse
to make a complete discovery, or to answer any question or interrogatory
in any suit or other proceeding, but such discovery or answer shall not
be admissible in evidence against such person in any such prosecution
for an offence under that Chapter or against clause (h) of section 112
of the Customs Act, 1962 relating to confiscation of goods under clause
(d) of section 111 of that Act and notified by the Central Government
under clause (n) of sub-section (2) of section 11 thereof for the protection
of trade marks relating to import of goods, or
(c) be
construed so as to render liable to any prosecution or punishment any
servant of a master resident in India who in good faith acts in obedience
to the instructions of such master, and, on demand made by or on behalf
of the prosecutor, has given full information as to his master and as
to the instructions which he has received from his master.
152. Declaration as to ownership of trade mark not registrable
under the Registration Act, 1908
Notwithstanding
anything contained in the Registration Act, 1908, no document declaring
or purporting to declare the ownership or title of a person to a trade
mark other than a registered trade mark shall be registered under that
Act.
153. Government to be bound
The provisions
of this Act shall be binding on the Government.
154. Special provisions relating to applications for registration
from citizens of convention countries
(1) With
a view to the fulfilment of a treaty, convention or arrangement with any
country or country which is a member of a group of countries or union
of countries or Inter-Governmental Organisation outside India which affords
to citizens of India similar privileges as granted to its own citizens,
the Central Government may, by notification in the Official Gazette, declare
such country or group of countries or union of countries or Inter-Governmental
Organisation to be a convention country or group of countries or union
of countries, or Inter-Governmental Organisations, as the case may be,
for the purposes of this Act.
(2) Where a person has made an
application for the registration of a trade mark in a convention country
or country which is a member of a group of countries or union of countries
or Inter-Governmental Organisation and that person, or his legal representative
or assignee, makes an application for the registration of the trade mark
in India within six months after the date on which the application was
made in the convention country or country which is a member of a group
of countries or union of countries or Inter-Governmental Organisations,
the trade mark shall, if registered under this Act, be registered as of
the date on which the application was made in the convention country or
country which is a member of a group of countries or union of countries
or Inter-Governmental Organisation and that date shall be deemed for the
purposes of this Act to be the date of registration.
(3) Where applications have been
made for the registration of a trade mark in two or more convention countries
or country which are members of group of countries or union of countries
or Inter-Governmental Organisation, the period of six months referred
to in the last preceding sub-section shall be reckoned from the date on
which the earlier or earliest of those applications was made.
(4) Nothing
in this Act shall entitle the proprietor of a trade to recover damages
for infringement which took place prior to the date of application for
registration under this Act.
155. Provision as to reciprocity
Where any
country or country which is a member of a group of countries or union
of countries or Inter-Governmental Organisation specified by the Central
Government in this behalf by notification in the Official Gazette does
not accord to citizens of India the same rights in respect of the registration
and protection of trade marks as it accords to its own nationals, no national
of such country or country which is a member of a group of countries or
union of countries or Inter-Governmental Organisation, as the case may
be, shall be entitled, either solely or jointly with any other person,-
(a) to apply for the registration
of, or be registered as the proprietor of, a trade mark;
(b) to be registered as the assignee
of the proprietor of a registered trade mark; or
(c) to
apply for registration or be registered as a registered user of a trade
mark under section 49.
156. Power of Central Government to remove difficulties
(1) If
any difficulty arises in giving effect to the provisions of this Act,
the Central Government may, by order published in the Official Gazette,
make such provisions not inconsistent with the provisions of this Act
as may appear to be necessary for removing the difficulty:
PROVIDED that no order shall be
made under this section after the expiry of five years from the commencement
of this Act.
(2) Every
order made under this section shall, as soon as may be after it is made,
be laid before each House of Parliament.
157. Power 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
provisions of this Act.
(2) In particular, and without
prejudice to the generality of the foregoing power, such rules may provide
for all or any of the following matters, namely:-
(i) the matters to be included
in the Register of Trade Marks under sub-section (1) of section 6, and
the safeguards to be observed in the maintenance of records on computer
floppies or diskettes or in any other electronic form under sub-section
(2) of that section;
(ii) the manner of publication
of alphabetical index of classification of goods and services under sub-section
(1) of section 8;
(iii) the manner in which the
Registrar may notify a word as an international non-proprietary name under
section 13;
(iv) the manner of making an application
for dissolution of an association under sub-section (5) of section 16;
(v) the manner of making an application
for registration of a trade mark under sub-section (1) of section 18;
(vi) the manner of advertising
of an application for registration under sub-section (1), and the manner
of notifying corrections or amendments under sub-section (2), of section
20;
(vii) the manner of making an
application and the fee payable for such application. giving notice under
sub-section (1) and sending counter-statements under sub-section (2) and
submission of evidence and the time therefor under sub-section (4) of
section 21;
(viii) the form of certificate
of registration under sub-section (2), and the manner of giving notice
to the applicant under sub-section (3) of section 23;
(ix) the forms of application
for renewal and restoration the time within which such application is
to be made and fee and surcharge if any payable with each application,
under section 25 and the time within which the Registrar shall send a
notice and the manner of such notice under sub-section (3) of that section;
(x) the manner of submitting statement
of cases under sub-section (2) of section 40;
(xi) the manner of making an application
by the proprietor of a trade mark under section 41;
(xii) the manner of making an
application for assignment or transmission of a certification trade mark
under section 43;
(xiii) the manner of making an
application to the Registrar to register title under sub-section (1) of
section 45;
(xiv) the manner in which and
the period within which an application is to be made under sub-section
(4) of section 46;
(xv) the manner of marking an
application under sub-section (2) of section 47;
(xvi) the manner of making an
application, documents and other evidence to accompany such application
under sub-section (1) and the manner in which notice is to be issued under
sub-section (3) of section 49;
(xvii) the manner of making an
application under sub-section (1), the manner of issuing a notice under
sub-section (2) and the procedure for cancelling a registration under
sub-section (3) of section 50;
(xviii) the manner of making applications
under sub-sections (1) and (2), the manner of giving notice under sub-section
(4) and the manner of service of notice of rectification under sub-section
(5) of section 57;
(xix) the manner of making an
application under section 58;
(xx) the manner of making an application
under sub-section (1), the manner of advertising an application, time
and manner of notice by which application may be opposed under sub-sections
(2) and (3) of section 59;
(xxi) the manner of advertisement
under sub-section (2) of section 60;
(xxii) the other matters to be
specified in the regulations under sub-section (2) of section 63;
(xxiii) the manner of making an
application under sub-section (1) of section 71;
(xxiv) the manner of advertising
an application under section 73;
(xxv) the manner of making an
application under section 77;
(xxvi) the classes of goods under
section 79;
(xxvii) the conditions and restrictions
under sub-section (2) of section 80;
(xxviii) determination of character
of textile goods by sampling under section 82;
(xxix) the salaries and allowances
payable to, and the other terms and conditions of service of the Chairman,
Vice-Chairman and other Members under sub-section (1) of section 88;
(xxx) the procedure for investigation
of misbehaviour or incapacity of the Chairman, Vice-Chairman and other
Members under sub-section (3) of section 89;
(xxxi) the salaries and allowances
and other conditions of service of the officers and other employees of
the Appellate Board under sub-section (2), and the manner in which the
officers and other employees of the Appellate Board shall discharge their
functions under sub-section (3) of section 90;
(xxxii) the form of making an
appeal, the manner of verification and the fee payable under sub-section
(3) of section 91;
(xxxiii) the form in which and
the particulars to be included in the application to the Appellate Board
under sub-section (1) of section 97;
(xxxiv) the manner of making an
application for review under clause (c) of section 127;
(xxxv) the time within which an
application is to be made to the Registrar for exercising his discretionary
power under section 128;
(xxxvi) the manner of making an
application and the fee payable therefore under sub-section (1) of section
131;
(xxxvii) the manner of making
an application under sub-section (1) and the period for withdrawal of
such application under sub-section (2) of section 133;
(xxxviii) the manner of authorising
any person to act and the manner of registration as a trade mark agent
under section 145;
(xxxix) the conditions for inspection
of documents under sub-section (1) and the fee payable for obtaining a
certified copy of any entry in the register under sub-section (2) of section
148;
(xl) the fees and surcharge payable
for making applications and registration and other matters under section
150;
(xli) any other matter which is
required to be or may be prescribed.
(3) The power to make rules conferred
by this section shall include the power to give retrospective effect in
respect of the matters referred to in clause (xxix) and (xxxi) of sub-section
(2) from a date not earlier than the date of commencement of this Act,
but no retrospective effect shall be given to any such rule so as to prejudicially
affect the interests of any person to whom sub-rule may be applicable.
(4) Every
rule made by the Central Government under this Act shall be laid, as soon
as may be after it is made, before each House of Parliament, while it
is in session for a total period of thirty days which may be comprised
in one session or in two or more successive sessions, and if, before the
expiry of the session immediately following the session or the successive
sessions aforesaid, both Houses agree in making any modification in the
rule or both Houses agree that the rule should not be made, the rule shall
thereafter have effect only in such modified form or be of no effect,
as the case may be; so however, that any such modification or annulment
shall be without prejudice to the validity of anything previously done
under that rule.
158. Amendments
The enactment
specified in the Schedule shall be amended in the manner specified therein.
159. Repeal and saving
(1) The
Trade and Merchandise Marks Act, 1958 is hereby repealed.
(2) Without prejudice to the provisions
contained in the General Clauses Act, 1897, with respect to repeals, any
notification, rule, order, requirement, registration, certificate, notice,
decision, determination, direction, approval. authorisation, consent,
application, request or thing made, issued, given or done under the Trade
and Merchandise Marks Act, 1958 shall, if in force at the commencement
of this Act, continue to be in force and have effect as if made, issued,
given or done under the corresponding provisions of this Act.
(3) The provisions of this Act
shall apply to any application for registration of a trade mark pending
at the commencement of this Act and to any proceedings consequent thereon
and to any registration granted in pursuance thereof.
(4) Subject to the provisions
of section 100 and notwithstanding anything contained in any other provisions
of this Act, any legal proceeding pending in any court at the commencement
of this Act may be continued in that court as if this Act had not been
passed.
(5) Notwithstanding anything contained
in this Act, where a particular use of a registered trade mark is not
an infringement of a trade mark registered before the commencement of
this Act, then, the continued use of that mark shall not be an infringement
under this Act.
(6) Notwithstanding anything contained
in sub-section (2), the date of expiration of registration of a trade
mark registered before the commencement of this Act shall be the date
immediately after the period of seven years for which it was registered
or renewed:
PROVIDED that the registration
of a defensive trade mark referred to in section 47 of the Trade and Merchandise
Marks Act, 1958 shall cease to have effect on the date immediately after
the expiry of five years of such commencement or after the expiry of the
period for which it was registered or renewed, whichever is earlier.
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