Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER VI: USE OF TRADE MARK AND REGISTERED USERS
46. Proposed use of trade mark by company to be formed, etc.
(1)
No application for the registration of a trade mark in respect of any
goods or services shall be refused nor shall permission for such registration
be withheld, on the ground only that it appears that the applicant does
not use or propose to use the trade mark if the Registrar is satisfied
that-
(a) a
company is about to be formed and registered under the Companies Act,
1956 and that the applicant intends to assign the trade mark to that company
with a view to the use thereof in relation to those goods or services
by the company, or
(b) the
proprietor intends it to be used by a person, as a registered user after
the registration of the trade mark.
(2) The
provisions of section 47 shall have effect, in relation to trade mark
registered under the powers conferred by this sub-section, as if for the
reference, in clause (a) of sub-section (1) of that section, to the intention
on the part of an applicant for registration that a trade mark should
be used by him there were substituted a reference to the intention on
his part that it should be used by the company or registered user concerned.
(3) The
tribunal may, in case to which sub-section (1) applies, require the applicant
to give security for the costs of any proceedings relating to any opposition
or appeal, and in default of such security being duly given, may treat
the application as abandoned.
(4) Where
in a case to which sub-section (1) applies, a trade mark in respect of
any goods or services is registered in the name of an applicant who, relies
on intention to assign the trade mark to a company, then, unless within
such period as may be prescribed or within such further period not exceeding
six months as the Registrar may, on application being made to him in the
prescribed manner, allow, the company has been registered as the proprietor
of the trade mark in respect of those goods or services, the registration
shall cease to have effect in respect thereof at the expiration of that
period and the Registrar shall amend the register accordingly.
47. Removal from register and imposition of limitations on ground
of non-use
(1) A registered
trade mark may be taken off the register in respect of the goods or services
in respect of which it is registered on application made in the prescribed
manner to the Registrar or the Appellate Board by any person aggrieved
on the ground either-
(a) that
the trade mark was registered without any bona fide intention on the part
of the applicant for registration that it should be used in relation to
those goods or services by him or, in a case to which the provisions of
section 46 apply, by the company concerned or the registered user, as
the case may be, and that there has, in fact, been no bona fide use of
the trade mark in relation to those goods or services by any proprietor
thereof for the time being up to a date three months before the date of
the application; or
(b) that
up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually
entered in the register or longer had elapsed during which the trade mark
was registered and during which there was no bona fide use thereof in
relation to those goods or services by any proprietor thereof for the
time being:
PROVIDED
that except where the applicant has been permitted under section 12 to
register an identical or nearly resembling trade mark in respect of the
goods or services in question, or where the tribunal is of opinion that
he might properly be permitted so to register such a trade mark, the tribunal
may refuse an application under clause (a) or clause (b) in relation to
any goods or services, if it is shown that there has been, before the
relevant date or during the relevant period, as the case may be, bona
fide use of the trade mark by any proprietor thereof for the time being
in relation to-
(i) goods
or services of the same description; or
(ii) goods
or services associated with those goods or services of that description
being goods or services, as the case may be, in respect of which the trade
mark is registered.
(2) Where
in relation to any goods or services in respect of which a trade mark
is registered-
(a) the
circumstances referred to in clause (b) of sub-section (1) are shown to
exist so far as regards non-use of the trade mark in relation to goods
to be sold, or otherwise traded in a particular place in India (otherwise
than for export from India), or in relation to goods to be exported to
a particular market outside India; or in relation to services for use
or available for acceptance in a particular place in India or for use
in a particular market outside India; and
(b) a
person has been permitted under section 12 to register an identical or
nearly resembling trade mark in respect of those goods, under a registration
extending to use in relation to goods to be so sold, or otherwise traded
in, or in relation to goods to be so exported, or in relation to services
for use or available for acceptance in that place or for use in that country,
or the tribunal is of opinion that he might properly be permitted so to
register such a trade mark,
on application
by that person in the prescribed manner to the Appellate Board or to the
Registrar, the tribunal may impose on the registration of the first-mentioned
trade mark such limitations as it thinks proper for securing that that
registration shall cease to extend to such use.
(3) An
applicant shall not be entitled to rely for the purpose of clause (b)
of sub-section (1) or for the purposes of sub-section (2) on any non-use
of a trade mark which is shown to have been due to special circumstances
in the trade, which includes restrictions on the use of the trade mark
in India imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to the goods or services
to which the application relates.
48. Registered users
(1) Subject
to the provisions of section 49, a person other than the registered proprietor
of a trade mark may be registered as a registered user thereof in respect
of any or all of the goods or services in respect of which the trade mark
is registered.
(2) The
permitted use of a trade mark shall be deemed to be used by the proprietor
thereof, and shall be deemed not to be used by a person other than the
proprietor, for the purposes of section 47 or for any other purpose for
which such use is material under this Act or any other law.
49. Registration as registered user
(1) Where
it is proposed that a person should be registered as a registered user
of a trade mark, the registered proprietor and the proposed registered
user shall jointly apply in writing to the Registrar in the prescribed
manner, and every such application shall be accompanied by-
(a) the
agreement in writing or a duly authenticated copy thereof, entered into
between the registered proprietor and the proposed registered user with
respect to the permitted use of the trade mark; and
(b) an
affidavit made by the registered proprietor or by some person authorised
to the satisfaction of the Registrar to act on his behalf,-
(i) giving
particulars of the relationship, existing or proposed, between the registered
proprietor and the proposed registered user, including particulars showing
the degree of control by the proprietor over the permitted use which their
relationship will confer and whether it is a term of their relationship
that the proposed registered user shall be the sole registered user or
that there shall be any other restriction as to persons for whose registration
as registered users application may be made;
(ii) stating
the goods or services in respect of which registration is proposed;
(iii)
stating the conditions or restrictions, if any, proposed with respect
to the characteristics of the goods or services, to the mode or place
of permitted use, or to any other matter;
(iv) stating
whether the permitted use is to be for a period or without limit of period,
and, if for a period, the duration thereof; and
(c) such
further documents or other evidence as may be required by the Registrar
or as may be prescribed.
(2) When
the requirements of sub-section (1) have been complies with, the Registrar
shall register the propose registered user in respect of the goods or
services as to which he is so satisfied.
(3) The
Registrar shall issue notice in the prescribed manner of the registration
of a person as a registered user, to other registered users of the trade
mark, if any.
(4) The
Registrar shall, if so requested by the applicant, take steps for securing
that information given for the purposes of an application under this section
(other than matters entered in the register) is not disclosed to rivals
in trade.
50. Power of Registrar for variation or cancellation of registration
as registered user
(1) Without
prejudice to the provisions of section 57, the registration of a person
as registered user-
(a) may
be varied by the Registrar as regards the goods or services in respect
of which it has effect on the application in writing in the prescribed
manner of the registered proprietor of the trade mark;
(b) may
be cancelled by the Registrar on the application in writing in the prescribed
manner of the registered proprietor or of the registered user or of any
other registered user of the trade mark ;
(c) may
be cancelled by the Registrar on the application in writing in the prescribed
manner of any person on any of the following, rounds, namely:-
(i) that
the registered user has used the trade mark otherwise than in accordance
with the agreement under clause (a) of sub-section (1) of section 49 or
in such way as to cause or to be likely to cause, deception or confusion;
(ii) that
the proprietor or the registered user misrepresented, or failed to disclose,
some fact material to the application for registration which if accurately
represented or disclosed would not have justified the registration of
the registered user;
(iii)
that the circumstances have changed since the date of registration in
such a way that at the date of such application for cancellation they
would not have justified registration of the registered user;
(iv) that
the registration ought not to have been effected having regard to rights
vested in the applicant by virtue of a contract in the performance of
which he is interested;
(d) may
be cancelled by the Registrar on his own motion or on the application
in writing in the prescribed manner by any person, on the ground that
any stipulation in the agreement between the registered proprietor and
the registered user regarding the quality of the goods or services in
relation to which the trade mark is to be used is either not being enforced
or is not being complied with;
(e) may
be cancelled by the Registrar in respect of any goods or services in relation
to which the trade mark is no longer registered.
(2) The
Registrar shall issue notice in the prescribed manner in respect of every
application under this section to the registered proprietor and each registered
user (not being the applicant) of the trade mark.
(3) The
procedure for cancelling a registration shall be such as may be prescribed:
PROVIDED
that before cancelling of registration, the registered proprietor shall
be given a reasonable opportunity of being heard.
51. Power of Registrar to call for information relating to agreement
in respect of registered users
(1) The
Registrar may, at any time during the continuance of the registration
of the registered user, by notice in writing, require the registered proprietor
to confirm to him within one month that the agreement filed under clause
(a) of sub-section (1) of section 49 continues to be in force.
(2) If
the registered proprietor fails to furnish the confirmation within one
month as required under sub-section (1), the registered user shall cease
to be the registered user on the day immediately after the expiry of the
said period and the Registrar shall notify the same.
52. Right of registered user to take proceedings against infringement
(1) Subject
to any agreement subsisting between the parties, a registered user may
institute proceedings for infringement in his own name as if he were the
registered proprietor, making the registered proprietor a defendant and
the rights and obligations of such registered user in such case being
concurrent with those of the registered proprietor.
(2) Notwithstanding
anything contained in any other law, a registered proprietor so added
as defendant shall not be liable for any costs unless he enters an appearance
and takes part in the proceedings.
53. No right of permitted user to take proceeding against infringement
A person
referred to in sub-clause (ii) of clause (r) of sub-section (1) of section
2 shall have no right to institute any proceeding for any infringement.
54. Registered user not to have right of assignment or transmission
Nothing
in this Act shall confer on a registered user of a trade mark any assignable
or transmissible right to the use thereof.
Explanation
I: The right of a registered user of a trade mark shall not be deemed
to have been assigned or transmitted within the meaning of this section
in the following cases, namely:-
(a) where
the registered user being an individual enters into a partnership with
any other person for carrying on the business concerned; but in any such
case the firm may use the trade mark, if otherwise in force, only for
so long as the registered user is a member of the firm;
(b) where
the registered user being a firm subsequently undergoes a change in its
constitution; but in any such case the reconstituted firm may use the
trade mark, if otherwise in force, only for so long as any partner of
the original firm at the time of its registration as registered user,
continues to be a partner of the reconstituted firm;
Explanation
II: For the purposes of Explanation I, "firm" has the same meaning
as in the Indian Partnership Act, 1932.
55. Use of one of associated or substantially identical trade
marks equivalent to use of another
(1) Where
under the provisions of this Act, use of a registered trade mark is required
to be proved for any purpose, the tribunal may, if and, so far as it shall.
think right, accept use of a registered associate trade mark, or of the
trade mark with additions or alterations not substantially affecting its
identity, as an equivalent for the use required to be proved.
(2) The
use of the whole of a registered trade mark shall, for the purpose of
this Act, be deemed to be also use of any trade mark being a part thereof
and registered in accordance with sub-section (1) of section 15 in the
name of the same proprietor.
(3) Notwithstanding
anything in section32, the use of part of the registered trade mark in
sub-section (2) shall not be conclusive as to its evidence of distinctiveness
for any purpose under this Act.
56. Use of trade mark for export trade and use when form of trade
connection changes
(1) The
application in India of trade mark to goods to be exported from India
or in relation to services for use outside India and any other act done
in India in relation to goods to be so exported or services so rendered
outside India which, if done in relation to goods to be sold or services
provided or otherwise traded in within India would constitute use of a
trade mark therein, shall be deemed to constitute use of the trade mark
in relation to those goods or services for any purpose for which such
use is material under this Act or any other law.
(2) The
use of a registered trade mark in relation to goods or services between
which and the person using the mark any form of connection in the course
of trade subsists shall not be deemed to be likely to cause deception
or confusion on the ground only that the mark has been or is used in relation
to goods or services between which and the said person or a predecessor
in title of that person a different form of connection in the course of
trade subsisted or subsists.
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