Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER IV: EFFECT OF REGISTRATION
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 or services as the goods of another person or as
services provided by another person, or the remedies in respect thereof.
28. Rights conferred by registration
(1) Subject
to the other provisions of this Act, the registration of a trade mark
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
or services 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 those 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.
29. Infringement of registered trade marks
(1) A registered
trade mark is infringed by a person who, not being a registered proprietor
or a person using by way of permitted use, uses in the course of trade,
a mark which is identical with, or deceptively similar to, the trade mark
in relation to goods or services 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) A
registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course
of trade, a mark which because of-
(a) its
identity with the registered trade mark and the similarity of the goods
or services covered by such registered trade mark; or
(b) its
similarity to the registered trade mark and the identity or similarity
of the goods or services covered by such registered trade mark; or
(c) its
identity with the registered trade mark and the identity of the goods
or services covered by such registered trade mark,
is likely
to cause confusion on the part of the public, or which is likely to have
an association with the registered trade mark.
(3) In
any case falling under clause (c) of sub-section (2), the court shall
presume that it is likely to cause confusion on the part of the public.
(4) A
registered trade mark is infringed by a person who, not being a registered
proprietor or a person. using by way of permitted use, uses in the course
of trade, a mark which-
(a) is
identical with or similar to the registered trade mark; and
(b) is
used in relation to goods or services which are not similar to those for
which the trade mark is registered; and
(c) the
registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered trade mark.
(5) A
registered trade mark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his trade name, or name of his
business concern or part of the name, of his business concern dealing
in goods or services in respect of which the trade mark is registered.
(6) For
the purposes of this section, a person uses a registered mark, if, in
particu1ar, he-
(a) affixes
it to goods or the packaging thereof;
(b) offers
or exposes goods for sale, puts them on the market, or stocks them for
those purposes under. the registered trade mark, or offers or supplies
services under the registered trade mark;
(c) imports
or exports goods under the mark; or
(d) uses
the registered trade mark on business papers or in advertising.
(7) A
registered trade mark is infringed by a person who applies such registered
trade mark to a material intended to be used for labelling or packaging
goods, as a business paper, or for advertising goods or services, provided
such person, when he applied the mark, knew or had reason to believe that
the application of the mark was not duly authorised by the proprietor
or a licensee.
(8) A
registered trade mark is infringed by any advertising of that trade mark
if such advertising-
(a) takes
unfair advantage of and is contrary to honest practices in industrial
or commercial matters; or
(b) is
detrimental to its distinctive character; or
(c) is
against the reputation of the trade mark.
(9) Where
the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words
as well as by their visual representation and reference in this section
to the use of a mark shall be construed accordingly.
30. Limits on effect of registered trade mark
(1) Nothing
in section 29 shall be construed as preventing the use of a registered
trade mark by any person for the purposes of identifying goods or services
as those of the proprietor provided the use-
(a) is
in accordance with honest practices in industrial or commercial matters,
and
(b) is
not such as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark.
(2 ) A
registered trade mark is not infringed where-
(a) the
use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of
goods or of rendering of services or other characteristics of goods or
services;
(b) 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 relation to services for use or available or acceptance
in any place or country outside India or in any other circumstances, to
which, having regard to those conditions or limitations, the registration
does not extend;
(c) the
use by a person of a trade mark-
(i) 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
or 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; or
(ii) in
relation to services to which the proprietor of such mark or of a registered
user conforming to the permitted use has applied the mark, where the purpose
and effect of the use of the mark is to indicate, in accordance with the
fact, that those services have been performed by the proprietor or a registered
user of the mark;
(d) 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 or services 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 or services 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 or services, as the case may be;
(e) 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.
(3) Where
the goods bearing a registered trade mark are lawfully acquired by a person,
the sale of the goods in the market or otherwise dealing in those goods
by that person or by a person claiming under or through him is not infringement
of a trade by reason only of-
(a) the
registered trade mark having been assigned by the registered proprietor
to some other person, after the acquisition of those goods; or
(b) the
goods having been put on the market under the registered trade mark by
the proprietor or with his consent.
(4) Sub-section
(3) shall not apply where there exists legitimate reasons for the proprietor
to oppose further dealings in the goods in particular, where the condition
of the goods, has been changed or impaired after they have been put on
the market.
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 57), 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 registered trade mark 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, if it
is proved that the trade mark had been so used by the registered proprietor
or his predecessor in title as to have become distinctive at the date
of registration.
32. Protection of registration on ground of distinctiveness in
certain cases
Where a
trade mark is registered in breach of sub-section (1) of section 9, it
shall not be declared invalid if, in consequence of the use which has
been made of it, it has after registration and before commencement of
any legal proceedings challenging the validity of such registration, acquired
a distinctive character in relation to the goods or services for which
it is registered.
33. Effect of acquiescence
(1) Where
the proprietor of an earlier trade mark has acquiesced for a continuous
period of five years in the use of a registered trade mark, being aware
of that use, he shall no longer be entitled on the basis of that earlier
trade mark-
(a) to
apply for a declaration that the registration of the later trade mark
is invalid, or
(b) to
oppose the use of the later trade mark in relation to the goods or services
in relation to which it has been so used, unless the registration of the
later trade mark was not applied in good faith.
(2) Where
sub-section (1) applies, the proprietor of the later trade mark is not
entitled to oppose the use of the earlier trade mark, or as the case may
be, the exploitation of the earlier right, notwithstanding that the earlier
trade mark may no longer be invoked against his later trade mark.
34. Saving for vested rights
Nothing
in this Act shall entitle the proprietor or a registered user of registered
trade mark to interfere with or restrain the use by any person of a trade
mark identical with or nearly resembling it in relation to goods or services
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 or
services be 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 or services in the name of the proprietor of 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 to
the registration of the first-mentioned trade mark.
35. Saving for use of name, address or description of goods or
services
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
of the place of business, of 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 or services.
36. Saving for words used as name or description of an article
or substance or service
(1) The
registration of a trade mark 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 or service:
PROVIDED
that, if it is proved either-
(a) that
there is a well known and established use of the said word as the name
or description of the article or substance or service by a person or persons
carrying on trade therein, not being use in relation to goods or services
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) in relation
to goods or services 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 57 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, or of the services or of any services
of the same description, as the case requires, shall be deemed to be an
entry wrongly remaining on the register;
(b) for
the purposes of any other legal proceedings 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; or
(ii) if
the trade mark contains such words and other matter, all such right of
the proprietor to the use of such words,
in relation
to the article or substance or to any goods of the same description, or
to the services or to any services of the same description as the case
requires, shall be deemed to have ceased on the date on 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.
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