Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER IX: CERTIFICATION TRADE MARKS
69 Certain provisions of this Act not applicable to certification trade
marks
The following provisions of this
Act shall not apply to certification trade marks, that is to say,-
(a) clauses (a) and (c) of sub-section
(1) of section 9;
(b) sections 18, 20 and 21, except
as expressly applied by this Chapter;
(c) sections 28, 29, 30, 41, 42,
47, 48, 49, 50, 52, 54 and sub-section (2) of section 56;
(d) Chapter
XII, except section 107.
70. Registration of certification trade marks
A mark
shall not be registrable as a certification trade mark in the name of
a person who carries on a trade in goods of the kind certified or a trade
of the provision of services of the kind certified.
71. Applications for registration of certification trade marks
(1) An
application for the registration of a mark as a certification trade mark
shall be made to the Registrar in the prescribed manner by the person
proposed to be registered as the proprietor thereof, and accompanied by
a draft of the regulations to be deposited under section 74.
(2) Subject to the provisions
of section 70, the provisions of sections l8, 19 and 22 shall apply in
relation to an application under this section as they apply in relation
to an application under section 18, subject to the modification that reference
therein to acceptance of an application shall be construed as reference
to authorisation to proceed with an application.
(3) In
dealing under the said provisions with an application under this section,
the tribunal shall have regard to the like considerations, so far as relevant,
as if the application were applications under section 18 and to any other
considerations relevant to applications under this section, including
the desirability of securing that a certification trade mark shall comprise
some indication that it is a certification trade mark.
72. Consideration of application for registration by the Registrar
(1) The
Registrar shall consider the application made under section 71 with regard
to the following matters, namely:-
(a) whether the applicant is competent
to certify the goods in respect of which the mark is to be registered;
(b) whether the draft of the regulations
to be filed under section 74 is satisfactory;
(c) whether in all the circumstances
the registration applied for would be to the public advantage,
and may either-
(i) refuse the application; or
(ii) accept the application and
approve the said draft of the regulations either without modification
and unconditionally or subject to any conditions or limitations, or to
any amendments or modifications of the application or of the regulations,
which he thinks requisite having regard to any of the said matters.
(2) Except
in the case of acceptance and approval without modification and unconditionally,
the Registrar shall not decide any matter under sub-section (1) without
giving the applicant an opportunity of being heard.
73. Opposition to registration of certification trade marks
When an
application has been accepted, the Registrar shall, as soon as may be
thereafter, cause the application as accepted to be advertised in the
prescribed manner, and the provisions of section 21 shall apply in relation
to the registration of the mark as they apply in relation to an application
under section 18.
74. Filing of regulations governing the use of a certification
trade mark
(1) There
shall be filed at the Trade Marks Registry in respect of every mark registered
as a certification trade mark regulations for governing the use thereof,
which shall include provisions as to the cases in which the proprietor
is to certify goods or services and to authorise the use of the certification
trade mark, and may contain any other provisions which the Registrar may
by general or special order, require or permit to be inserted therein
(including provisions conferring a right of appeal to the Registrar against
any refusal of the proprietor to certify goods or to authorise the use
of the certification trade mark in accordance with the regulations); and
regulations so filed shall be open to inspection in like manner as the
register as provided in section 148.
(2) The regulations so filed may,
on the application of the registered proprietor, be altered by the Registrar.
(3) The
Registrar may cause such application to be advertised in any case where
it appears to him expedient so to do, and where he does so, if within
the time specified in the advertisement any person gives notice of opposition
to the application, the Registrar shall not decide the matter without
giving the parties an opportunity of being heard.
75. Infringement of certification trade marks
The right
conferred by section 78 is infringed by any person who, not being the
registered proprietor of the certification trade mark or a person authorised
by him in that behalf under the regulations filed under section 74, using
it in accordance therewith, uses in the course of trade, a mark, which
is identical with, or deceptively similar to the certification trade mark
in relation to any goods or services in respect of which it is registered,
and in such manner as to render the use of the mark likely to be taken
as being a use as a trade mark.
76. Acts not constituting infringement of certification trade
marks
(1) Notwithstanding
anything contained in this Act, the following acts do not constitute an
infringement of the right to the use of a registered certification trade
mark-
(a) where a certification trade
mark is registered subject to any conditions or limitations entered on
the register, the use of any such mark in any mode, in relation to goods
to be sold or otherwise traded in any place, or in relation to goods to
be exported to any market or in relation to services for use or available
for acceptance in any place, country or territory or in any other circumstances,
to which having regard to any such limitations, the registration does
not extend;
(b) the use of a certification
trade mark in relation to goods or services certified by the proprietor
of the mark if, as to those goods or services or a bulk of which they
form part, the proprietor or another in accordance with his authorisation
under the relevant regulations has applied the mark and has not subsequently
removed or obliterated it, or the proprietor has at any time expressly
or impliedly consented to the use of the mark;
(c) the use of a certification
trade mark in relation to goods or services adapted to form part of, or
to be accessory to, other goods in relation to which the mark has been
used without infringement of the right given as aforesaid or might for
the time being be so used, if the use of the 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 mark is to indicate otherwise
than in accordance with the fact that the goods or services are certified
by the proprietor.
(2) Clause (b) of sub-:section
(1) shall not apply to the case of use consisting of the application of
a certification trade mark to goods or services, notwithstanding that
they are such goods or services as are mentioned in that clause if such
application is contrary to the regulations referred to in that clause.
(3) Where
a certification trade mark is one of two or more trade marks registered
under this Act, which are identical or nearly resemble each other, the
use of any of those trade marks in exercise of the right to the use of
that trade mark given by registration, shall not be deemed to be an infringement
of the right so given to the use of any other of those trade marks.
77. Cancellation or varying of registration of certification
trade marks
The Registrar
may, on the application in the prescribed manner of any person aggrieved
and after giving the proprietor an opportunity of opposing the application,
make such order as he fit for expunging or varying any entry in the register
to a certification trade mark, or for varying the regulations, on any
of the following grounds, namely:-
(a) that the proprietor is no
longer competent, in the case of any of the goods or services in respect
of which the mark is registered, to certify those goods or services;
(b) that the proprietor has failed
to observe any provisions of the regulations to be observed on his part;
(c) that it is no longer to the
public advantage that the mark should remain registered;
(d) that
it is requisite for the public advantage that if the mark remains registered,
the regulations should be varied.
78. Rights conferred by registration of certification trade marks
(1) Subject
to the provisions of sections 34, 35 and 76, the registration of a person
as a proprietor of certification trade mark in respect of any goods or
services shall, if valid, give to that person the exclusive right to the
use of the mark in relation to those goods or services.
(2) The exclusive right to the
use of a certification trade mark given under sub-section (1) shall be
subject to any conditions and limitations to which the registration is
subject.
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