Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER II: THE REGISTER AND CONDITIONS
FOR REGISTRATION
3. Appointment of Registrar and other officers
(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.
4. Power of Registrar to withdraw or transfer cases, etc.
Without
prejudice to the generality of the provisions of sub-section (2) of section
3, the Registrar may, by order in writing and for reasons to be recorded
therein, withdraw any matter pending before an officer appointed under
the said sub-section (2) and deal with such matter himself either de novo
or from the stage it was so withdrawn or transfer the same to another
officer so appointed who may, subject to special directions in the order
of transfer, proceed with the matter either de novo or from the stage
it was so transferred.
5. Trade Marks Registry and offices thereof
(1) For
the purposes of this Act, there shall be a trade marks registry and the
Trade Marks Registry established under the Trade and Merchandise Marks
Act, 1958 shall be the Trade Marks Registry under this Act.
(2) The
head office of the Trade Marks Registry shall be at such place as the
Central Government may specify, and for the purpose of facilitating the
registration of trade marks, there may be established at such places as
the Central Government may think fit branch offices of the Trade Marks
Registry.
(3) The
Central Government may, by notification in the Official Gazette, define
the territorial limits within which an office of the Trade Marks Registry
may exercise its functions.
(4) There
shall be a seal of the Trade Marks Registry.
6. 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 description of the proprietors, notifications of assignment and transmissions,
the names, addresses and descriptions of registered users, conditions,
limitations and such other matter relating to registered trade marks as
may be prescribed.
(2) Notwithstanding
anything contained in sub-section (1), it shall be lawful for the Registrar
to keep the records wholly or partly in computer floppies diskettes or
in any other electronic form subject to such safeguards as may be prescribed.
(3) Where
such register is maintained wholly or partly on computer under sub-section
(2) any reference in this Act to entry in the register shall be construed
as the reference to any entry as maintained on computer or in any other
electronic form.
(4) No
notice of any trust, express or implied or constructive, shall be entered
in the register and no such notice shall be receivable by the. Registrar.
(5) The
register shall be kept under the control and management of the Registrar.
(6) There
shall be kept at each branch office of the Trade Marks Registry a copy
of the register and such of the other documents mentioned in section 148
as the Central Government may, by notification in the Official Gazette,
direct.
(7) The
Register of Trade Marks, both Part A and Part B, existing at the commencements
of this Act, shall be incorporated in and form part of the register under
this Act.
7. Classification of goods and services
(1) The
Registrar shall classify goods and services, as far as may be, in accordance
with the International classification of goods and services for the purposes
of registration of trade marks.
(2) Any
question arising as to the class within which any goods or services falls
shall be determined by the Registrar whose decision shall be final.
8. Publication of alphabetical index
(1) The
Registrar may publish in the prescribed manner an alphabetical index of
classification of goods and services referred to in section 7.
(2) Where
any goods or services are not specified in the alphabetical index of goods
and services published under sub-section (1), the classification of goods
or services shall be determined by the Registrar in accordance with sub-section
(2) of section 7.
9. Absolute grounds for refusal of registration
(1) The
trade marks -
(a) which
are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another
person;
(b) which
consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical
origin or the time of production of the goods or rendering of the service
or other characteristics of the goods or service;
(c) which
consist exclusively of marks or indications which have become customary
in the current language or in the bona fide and established practices
of the trade,
shall not
be registered:
PROVIDED
that a trade mark shall not be refused registration if before the date
of application for registration it has acquired a distinctive character
as a result of the use made of it or is a well-known trade mark.
(2) A
mark shall not be registered as a trade mark if -
(a) it
is of such nature as to deceive the public or cause confusion;
(b) it
contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India;
(c) it
comprises or contains scandalous or obscene matter;
(d) its
use is prohibited under the Emblems and Names (Prevention of Improper
Use) Act, 1950.
(3) A
mark shall not be registered as a trade mark if it consists exclusively
of -
(a) the
shape of goods which results from the nature of the goods themselves;
or
(b) the
shape of goods which is necessary to obtain a technical result; or
(c) the
shape which gives substantial value to the goods.
Explanation
: For the purposes of this section, the nature of goods or services in
relation to which the trade mark is used or proposed to be used shall
not be a ground for refusal of registration.
10. Limitation as to colour
(1) A trade
mark may be limited wholly or in part to any combination of colours and
any such limitation shall be taken into consideration by the tribunal
having to decide on the distinctive character of the trade mark.
(2) So
far as a trade mark is registered without limitation of colour, it shall
be deemed to be registered for all colours.
11. Relative grounds for refusal of registration
(1) Save
as provided in section l2, a trade mark shall not be registered if, because
of -
(a) its
identity with an earlier trade mark and similarity of goods or services
covered by the trade mark; or
(b) its
similarity to an earlier trade mark and the identity or similarity of
the goods or services covered by the trade mark,
there exists
a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
(2) A
trade mark which -
(a) is
identical with or similar to an earlier trade mark; and
(b) is
to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade
mark is a well-known trade mark in India and the use of the later mark
without due course would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier trade mark.
(3) A
trade mark shall not be registered if, or to the extent that, its use
in India is liable to be prevented -
(a) by
virtue of any law in particular the law of passing off protecting an unregistered
trade mark used in the course of trade; or
(b) by
virtue of law of copyright.
(4) Nothing
in this section shall prevent the registration of a trade mark where the
proprietor of the earlier trade mark or other earlier right consents to
the registration, and in such case the Registrar may register the mark
under special circumstances under section 12.
Explanation
: For the purposes of this section, earlier trade mark means -
(a) a
registered trade mark or convention application referred to in section
154 which has a date of application earlier than that of the trade mark
in question, taking account, where appropriate, of the priorities claimed
in respect of the trade marks;
(b) a
trade mark which, on the date of the application for registration of the
trade mark in question, or where appropriate, of the priority claimed
in respect of the application, was entitled to protection as a well-known
trade mark.
(5) A
trade mark shall not be refused registration on the grounds specified
in sub-sections (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier
trade mark.
(6) The
Registrar shall, while determining whether a trade mark is a well-known
trade mark, take into account any fact which he considers relevant for
determining a trade mark as a well-known trade mark including -
(i) the
knowledge or recognition of that trade mark in the relevant section of
the public including knowledge in India obtained as a result of promotion
of the trade mark;
(ii) the
duration, extent and geographical area of any use of that trade mark;
(iii)
the duration, extent and geographical area of any promotion of the trade
mark, including advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the trade mark applies;
(iv) the
duration and geographical area of any registration of or any publication
for registration of that trade mark under this Act to the extent they
reflect the use or recognition of the trade mark;
(v) the
record of successful enforcement of the rights in that trade mark, in
particular, the extent to which the trade mark has been recognised as
a well-known trade mark by any court or Registrar under that record.
(7) The
Registrar shall, while determining as to whether a trade mark is known
or recognised in a relevant section of the public for the purposes of
sub-section (6), take into account -
(i) the
number of actual or potential consumers of the goods or services;
(ii) the
number of persons involved in the channels of distribution of the goods
or services;
(iii)
the business circles dealing with the goods or services,
to which
that trade mark applies.
(8) Where
a trade mark has been determined to be well-known in at least one relevant
section of the public in India by any court or Registrar, the Registrar
shall consider that trade mark as a well-known trade mark for registration
under this Act.
(9) "The
Registrar shall not require as a condition, for determining whether a
trade mark is a well-known trade mark, any of the following, namely: -
(i) that
the trade mark has been used in India;
(ii) that
the trade mark has been registered;
(iii)
that the application for registration of the trade mark has been filed
in India;
(iv) that
the trade mark -
(a) is
well known in; or
(b) has
been registered in; or
(c) in
respect of which an application for registration has been filed in, any
jurisdiction other than India; or
(v) that
the trade mark is well-known to the public at large in India.
(10) While
considering an application for registration of a trade mark and opposition
filed in respect thereof, the Registrar shall -
(i) protect
a well-known trade mark against the identical or similar trade marks;
(ii) take
into consideration the bad faith involved either of the applicant or the
opponent affecting the right relating to the trade mark.
(11) Where
a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been
acquired through use in goods faith before the commencement of this Act,
then, nothing in this Act shall prejudice the validity of the registration
of that trade mark or right to use that trade mark on the ground that
such trade mark is identical with or similar to a well known trade mark.
12. Registration in the case of honest concurrent use, etc.
In the
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 the trade marks which
are identical or similar (whether any such trade mark is already registered
or not) in respect of the same or similar goods or services, subject to
such conditions and limitations, if any, as the Registrar may think fit
to impose.
13. Prohibition of registration of names of chemical elements
or international non-proprietary names
No word
-
(a) which
is the commonly used and accepted name of any single chemical element
or any single chemical compound (as distinguished from a mixture) in respect
of a chemical substance or preparation, or
(b) which
is declared by the World Health Organisation and notified in the prescribed
manner by the Registrar from time to time, as an international non-proprietary
name or which is deceptively similar to such name,
shall be
registered as a trade mark and any such registration shall be deemed for
the purpose of section 57 to be an entry made in the register without
sufficient cause or an entry wrongly remaining on the register, as the
circumstances may require.
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.
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 register 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 or similar goods or services or description of goods or description
of services, which, while resembling each other in the material particulars
thereof, yet differ in respect of -
(a) statement
of the. goods or services in relation to which they are respectively used
or proposed to be used; or
(b) statement
of number, price, quality or names of places; or
(c) other
matter of a non-distinctive character which does not substantially affect
the identity of the trade mark; or
(d) colour,
seeks to
register those trade marks, they may be registered as a series in one
registration.
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 or services is identical with
another trade mark which is registered, or is the subject of an application
for registration, in the name of the same proprietor in respect of the
same goods or description of goods or same services or description of
services or so nearly resembles it as to be likely to deceive or cause
confusion if used by a person other than the proprietor, the Registrar
may, at any time, require that the trade marks shall be entered on the
register as associated trade marks.
(2) Where
there is an identity or near resemblance of marks that are registered,
or are the subject of applications for registration in the name of the
same proprietor, in respect of goods and in respect of services which
are associated with those goods or goods of that description and with
those services or services of that description, sub-section (1) shall
apply as it applies as where there is an identity or near resemblance
of marks that are registered, or are the subject of applications for registration,
in the name of the same proprietor in respect of the same goods or description
of goods or same services or description of services.
(3) Where
a trade mark and any part 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.
(4) 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.
(5) On
application made in the prescribed manner by the registered proprietor
of two or more trade marks registered as associated trade marks, the Registrar
may dissolve the association as respects any of them if he is satisfied
that there would be no likelihood of deception or confusion being caused
if that trade mark were used by any other person in relation to any of
the goods or services or both in respect of which it is registered, and
may amend the register accordingly.
17. Effect of registration of parts of a mark
(1) When
a trade mark consists of several matters, its registration shall confer
on the proprietor exclusive right to the use of the trade mark taken as
a whole.
(2) Notwithstanding
anything contained in sub-section (1), when 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 registration
thereof shall not confer any exclusive right in the matter forming only
a part of the whole of the trade mark so registered.
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