Category Archive Intellectual Property Law

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The Designs (Amendment) Rules, 2008

Preliminary

MINISTRY OF COMMERCE AND INDUSTRY
(Department of Industrial Policy and Promotion)

NOTIFICATION

New Delhi, the 17th June, 2008

S.O. 1460(E).- Whereas, a draft of Designs (Amendment) Rules, 2007 was published as required by sub-section (3) of Section 47 ofthe Designs Act, 2000 (16 of 2000), by the notification of the Government of India, Ministry of Commerce and Industry number S.O. 137 (E) dated 23rd January, 2008 in the Gazette of India, Extraordinary, Part II, Section 3, sub-section (ii) dated 23rd January, 2008.

Andwhereas objections and suggestions were invited till the 29th February, 2008 from all persons likely to be affected .thereby;

And whereas the draft of the Designs Rules was made available to the public on the 29thJanuary, 2008 through the said Gazette dated January 23rd , 2008.’ .

And whereas no objections and suggestions have been received from the public with respect to the said draft Rules.

Now, therefore, in exercise of the powers conferred by section 47 of the Designs Act, 2000 (16 of 2000), the Central Government hereby makes the following rules, namely:-

Section 1.

1. Short title and commencement.- (1) These rules may be, called the Designs (Amendment) Rules, 2008.

(2)’ They shall come into force on the date of their publication in the Official Gazette.

Amendments

Section 2.

In the Designs Rules, 2001 (hereinafter) referred to as the principal rules), in rule 3,-

(a) for the marginal heading the following shall be substituted, namely:-
“Manner for leaving and serving documents.”

(b) for sub-rule (1), the following sub-rule shall be substituted, namely:-

“(1) Any application, notice or other document authorized or requiredto be filed, left, made or given at the Office, or to the Controller or to any other person under the Act or these rules, may be sent by hand or by a prepaid letter addressed to the Controller or to that person through post or courier service or by electronic transmission duly authenticated. If sent by a prepaid letter or courier service or by electronic transmission duly authenticated, it shall be deemed to have been filed, left, made or given at the time when the letter containing the same would have been delivered in the ordinary course ofpost or courier service or electronic transmission duly authenticated, as the case may be. In’ proving such sending, it shall be sufficient to prove that the letter was properly addressed and transmitted, provided that any application, notice or documentsent through fax or by electronic mail ‘shall also be deemed to have been filed, left, made or given if the same is clear and fully legible and its original or the paper copy, as the case may be, is submitted to the office within fifteen days from the date of receipt of the document so faxed or electronically mailed except where the fee ~ required to be accompanied with the documents.”

{e)- in sub-rule 4, the words “along with the fees” shall be omitted.

Section 3.

In rule 5 of the principal rules, in sub-rule 2, for clauses (a), (b) and (c), the following clauses shall be substituted, namely:-

“(a) The fees payable under these rules may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller and drawn on a scheduled bank at the place where the office is situated.

(b) Where a fee is payable in respect of a document, the entire fee shall accompany the document.

(c) Fees once paid in respect of any proceedings shall not ordinarily be refunded irrespective of whether the proceeding hai taken place or not.”

Section 4.

In rule 7 of the principle rules, in sub-rule (1), for the letter, figure and words “A4 size with a margin of at least one inch and a half or”, the words, brackets, figures and letters “A4 size (210 mm x 296.9 mm) with a margin of” shall be substituted.

Section 5.

In rule 14 ofthe principal rules,-

(a) in sub-rule (1), after the word “representation”, the words “including computer graphics” shall be inserted.

(b) for sub-rule (3) the following sub-rule shall be substituted,-“Each representation of the design whether to be applied to a single article or to a set, shall be on durable paper of A4 size (210 mm x 296.9 mm) (and not on cardboard) and shall appear on one side only of the paper. The figure.or figures shall be placed in an upright position on the sheet in size in which the details are clearly visible. When more figures than one are shown, these shall, where possible, be on one or more sheets, and each shall be designated (e.g., perspective view; front perspective view; front view, side view)” etc.

(c) in sub-rule (7), figures and words “5 by 4 inches or” shall be omitted.

(d) after sub-rule (8) the following sub-rules shall be inserted, namely:-

“(9) Photographs shall be pasted on the representation sheets firmly only with the help of strong adhesive, not by any other means including stapler pin and cellotape.

(10) Where photographs are used in the representation sheets, one of the four copies of the representation sheets shall not be covered with cellophane/tracing papers, or any other papers.”

Section 6.

In rule 15 ofthe principal rules, in sub.rule (2), the following words shall be inserted at the end “on an application made in form 18 with the fee specified in the first schedule.”

Section 7.

In rule 16 of the principal rule, in sub-rule (l), after the words, brackets and figures “sub section (l)”, the word, bracket and figure “and (5)” shall be inserted.

Section 8.

In rule 17 of the principal rule, the following sentence shall be inserted at the end, “After acceptance the Controller will issue the certificate of registration as specified in the Fifth schedule of the rules”.

Section 9.

In rule 18 of the principal rule, in sub-rule (1), in the proviso, the following shall be inserted at the end,-“or may be extended for a further period not exceeding three months on a request made in form 18 by the applicant or his agent along with the fee specified in the first schedule before the expiry of the stipulated period of six months”.

Section 10.

For rule 21 ofthe principal rules, the following rule shall be substituted, namely:-

21. Non-completion within stipulated period.- An application which owing to any negligence or default of the applicant, has not been completed so as to enable registration to be effected within six months or within extended period as specified in rule 18 from the date of application, shall be deemed to be abandoned”.

Section 11.

In rule 22, 25, 27, 39 of the principal rules, the word “Gazette” wherever.it occurs– the words, figures and brackets “Journal referred to in section 145 of the Patents Act 1970 (39 of 1970)” shall be substituted.

Section 12.

In rule 28 of the principal rules, in sub rule 2, for the word “lodge”, the word “file” shall be substituted.

Section 13.

In rule 29 of the principal rules,

(a) in sub-rule 1, after the word “statement” the words “and evidence” shall be inserted.

(b) in sub-rule 2, after the word “statement” the words “and evidence” shall be inserted.

(c) for sub-rules 3 and 4, the following sub-rules shall be substituted, namely:-

(3) “If the registered proprietor intends to oppose the application he shall within a time to be specified- by the Controller, file at the office a counter statement and evidence setting out the grounds on which he intends to oppose the application and shall deliver to the applicant a copy thereofsimultaneously.

(4) The applicantmay, after delivery to him of the copy ofthe registered proprietor’s counter statement and evidence leave at the office, evidence in reply by way of affidavits in support of his case and shall also deliver to the registered proprietor a copy of thereof simultaneously.”

(d) sub-rule 5 and 6 shall be omitted.

(e) for sub-rule 9, the following sub-rule shall be substituted,namely,-

“(9) The time allowed for filling the counter-statement and evidence or for leaving reply evidence shall ordinarily be one month which may ,be extended only by a special order of the Controller given on a petition with the fee specified in the fist schedule made by party seeking extension oftime.
Provided that the extension so granted shall in no case exceed three months in aggregate”.

(f) In sub-rule (10), for the words, figures and brackets “sub rule (3) to (8)”, the words, figures and brackets “sub-rules (1) to (8)” shall be substituted.

Section 14.

In rule 40 of the principal rule,
(a) in sub-rule 2, after the words “written statement” the words “and the evidence” shall be inserted.

(b) in sub-rule 3, after the words “written statement”, the words “and evidence” shall be inserted.

(c) in sub-rule 4, for the words, figures and brackets “sub-rules (4) to (13)”, the words, figures and brackets “sub-rules (3) to (11)” shall be substituted.

Section 15.

For rule 47 ofthe principal rules, the following rules shall be substituted, namely:-

“47. General Power to enlarge time:- The time prescribed by these rules for doing any act or taking any proceeding where no special provision is made thereunder may be enlarged by the Controller, for a period not exceeding three months, if he thinks fit, and upon such terms as he may direct.

47 A. Digital Signature, – The signature, as required, wherein applicable, under the rules may include digital signature”.

Schedule 1.

In the THE FIRST SCHEDULE of the principal rules,-
(a) for items numbers 2,19, 26 and entries relating thereto, the following items and entries shall respectively, be substituted, namely: –

“2  On claim under section 8(1) & (5) to proceed as an   applicant or joint applicant  2  500.00
19  On application for extension of time for filing priority   document under Rule 15 & Rule l8  18  200.00(per   month)
26  On petition under rule 29, 40, 47 for enlargement of time  500.00″

Schedule 2.

In the THE SECOND SCHEDULE of the principal rules,-

(a) “in the List of Forms, under the heading ‘Section or Rules’ against form No.2 for the words, figures and brackets “Section 8 (1)”, the words, figures and brackets “Section 8 (1) and (5)” shall be substituted, and against form No. 18 for the words and figures “rule 15”, the words and figures “rule 15 and rule 18” shall be substituted.

(b) In Form 1, for the words, number and brackets-

“(i) Name ofcountry,

(ii) Official date,

(iii) Official number.”, the words, numbers and brackets,

“(i) Name of the country/inter governmental organization,

(ii) Date of filing,

(iii) Application number,

(iv) Name of the applicant” shall be substituted.

(b) at the end; after the words “THE PATENT. OFFICE” the word “CALCUTTA” shall be omitted.

(c) In Form 2

(i) after the words “CLAIM UNDER” for the words, figures and brackets” SECTION 8 (1)”, the words, figures and brackets “SECTION 8 (1) & (5)” shall be substituted

(ii) . In Form 2 to 17 and 19 to 23, at the end, the word “CALCUTTA” shall be omitted.

(d) . In Form 18,

(a) For the words, figures and brackets “[see rule 15]”, the words, figures and brackets “[see rule 15 and rule 18]” shall be substituted.

(b) In paragraph 2, for the words “application No.__________ “the words, numbers and brackets” (i) application No.___________ or (ii) to extend the time period as specified under Rule 18 in respect of the application No……………. ” shall be substituted.

(c) at the end, after the words “THE PATENT OFFICE” , the word “CALCUTTA” shall be omitted.

(e) In all forms ofthe Second Schedule the words “The Designs Act, 2000” shall be inserted at the beginning.

Schedule 3 – List of Classed and Subclasses, with Explanatory Notes

Class 1. Foodstuffs

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-
“THE THIRD SCHEDULE
Classification of Goods
(See rule 10)
CLASS 1

Foodstuffs

Notes: (a) Including foodstuffs for human beings, foodstuffs for animals and dietetic
-foods. .

(b) Not including packages (CI. 9).

01-01 BAKERS’ PRODUCTS, BISCUITS, PASTRY, MACARONIANDOTHER CEREAL PRODUCTS, CHOCOLATES, CONFECTIONERY, ICES
01-02 FRUIT AND VEGETABLES
01-03 CHEESES, BUTTER AND BUTTER SUBSTITUTES, OTHER DAIRY PRODUCE

01-04 BUTCHERS’ MEAT (INCLUDING PORK PRODUCTS), FISH

01-05 [vacant]

01-06 ANIMAL FOODSTUFFS

01-99 MISCELLANEOUS

Class 2. Articles of clothing and haberdashery

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-
“THE THIRD SCHEDULE
Classification ofGoods
(See rule 10)
CLASS 2

Articles of clothing and haberdashery

Note: Not inc;uding articles of clothing for dolls (CI. 2’1-01), special equipment for protection against fire hazards, for accident prevention and for rescue (CI. 29), and animal clothing (CI. 30-01).

02-01 UNDERGARMENTS, LINGERIE, CORSETS, BRASSIERES, NIGHTWEAR

Notes: (a) Including orthopedic corsets and body linen.

(b) Not including household linen (Cl. 6-13).

02-02 GARMENTS

Notes: (a) Including all sorts ofgarments, and furs, bathing costumes, sports clothing and orthopedic garments, subject to the exceptions indicated under (b).

(b) Not including undergarments (Cl. 2-01), or garments to be placed in Classes 2-03; 2-04; 2-05 or 2-06.

02-03 HEADWEAR

Note: Including all kinds of headwear for men, women and children.

02-04 FOOTWEAR, SOCKS AND STOCKINGS

Note: Including special boots for sports such as football, skiing and ice hockey, orthopedic footwear and socks, as well as tights, gaiters and other legwear.

02-05 NECKTIES, SCARVES, NECKERCHIEFS AND HANDKERCHIEFS

Note: Including all “flat” clothing accessories.

02-06 GLOVES

Note: Incl,uding surgical gloves and.rubber or plastic protective gloves for household use or for various occupations or sports.
I
02-07 HABERDASHERY AND CLOTHING ACCESSORIES

Notes: (a) Including buttons, clasps for garments, for headwear and for footwear, laces, pins, hand sewing, knitting and embroidery equipment and clothingaccessories such as belts, suspenders, braces. .

.(b) Not including yams or other threads (Cl. 5-01), decorative trimmings (Cl. 5-04), sewing, knitting and embroidery machines (Cl. 15-06) or sewing kits (containers) (Cl. 3-01).

02-99 MISCELLANEOUS

Class 3. Travel goods, cases, parasols and personal belongings, not elsewhere specified

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 3

Travel goods, cases, parasols and personal belongings, not elsewhere specified

03-01 TRUNKS, SUITCASES, BRIEFCASES, HANDBAGS, KEYHOLDERS, CASES SPECIALLY DESIGNED FOR THEIR CONTENTS, WALLETS AND SIMILAR ARTICLES

Note: Not including articles for the transport of goods (CI. 9) or cigar cases and cigarette cases (CI. 27-06).

03-02 [vacant]

03-03 UMBRELLAS, PARASOLS, SUt-JSHADES AND WALKING STICKS

03-04 FANS

03-99 MISCELLAN’EOUS

Class 4. Brushware

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 4

Brushware

04-01 BRUSHES AND BROOMS FOR CLEANING

Note: Not including clothes brushes (CI. 4-02).

04-02 TOILET BRUSHES, CLOTHES BRUSHES AND SHOE BRUSHES

Note: “Toilet brushes” means brushes for corporal use; for example, for the hair, nails or teeth,
04-03 BRUSHES FOR MACHINES.

Note: “Brushes for machines” means brushes incorporated in machines or in special vehicles.

04-04 PAINT BRUSHES, BRUSHES FOR USE IN COOKING

04-99 MISCELLANEOUS

Class 5. Textile piecegoods, artificial and natural sheet material

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-
“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 5

Textile piecegoods, artificial and natural sheet material

Notes: (a) Including all textile or similar articles, sold by the yard and not made up.

(b) Not including ready-made articles (Cl. 2 or 6).

05-01 SPUN ARTICLES

Notes: (a) Including yarn and thread.

(b) Not including, for instance, rope, wire rope, string, twine (Cl. 9-06).

05-02 LACE

05-03 EMBROIDERY

05-04 RIBBONS, BRAIDS AND OTHER DECORATIVE TRIMMINGS

05-05 TEXTILE FABRICS

Note: Including textile fabrics.woven, knitted or otherwise manufactured, tarpaulins, felt and loden.

05-06 ARTIFICIAL OR NATURAL SHEET MATERIAL

Notes: (a) Including sheets whose only characteristic features are their surface ornamentation or their texture; in particular, covering sheets such as wallpaper, linoleum, self-adhesive plastic sheets, wrapping sheets and rolls of paper, subject to the exceptions indicated under (b).

(b) Not including writing paper, even in rolls (Cl. 19-01), or sheets used as building components, such as wall panels and wainscoting (Cl. 25-01).

05-99 MISCELLANEOUS

Class 6. Furnishing

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 6

Furnishing

Notes: (a) Composite furniture articles embodying components included in several subcl

(b) Sets offurniture, as far as they can be looked upon as one design;are classified in Class 6-05.

(c) Not including textile piecegoods (Cl. 5).

06-01 SEATS

Notes: (a) including all seats even if they are suitable for laying, such as benches, couches, divans [sofas], ottomans, benches for saunas and sofas.

(b) Includirig vehicle seats.

06-02 BEDS .

Notes: (a) Including mattress supports.

(b) Notincluding seats suitable for laying eel. (Cl. 6-01), such as benches, couches, divans [sofas], ottomans, benches for saunas and sofas.

06-03 TABLES ANDISIMILAR FURNITURE

06-04 STORAGE FURNITURE

Note: Including cupboards, furniture with drawers or compartments, and shelves.

06-05 COMPOSITE FURNITURE

06-06 OTHER FURNITURE AND FURNITURE PARTS

06-07 MIRRORS AND FRAMES

Note: Not including mirrors included in other classes (see Alphabetical List).
I
06-08 CLOTHES HANGERS

06-09 MATTRESSES AND CUSHIONS

06-10 CURTAINS AND INDOOR BLINDS

06-11 CARPETS, MATS AND RUGS

06-12 TAPESTRIES .

06-13 BLANKETS AND OTHER COVERING MATERIAl-S, HOUSEHOLD LINEN AND NAPERY

Note: Including furniture covers, bedspreads and table covers.

06-99 MISCELLANEOUS.

Class 7. Household goods, not elsewhere specified

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 7

Household goods, not elsewhere specified

Notes: (a) Including household appllanses and utensils operated by hand, even if motor driven.

(b) Not including ma~hines and appliances for preparing food and drink (Cl. 31).

07-01 CHINA, GLASSWARE, DISHES AND OTHER ARTICLES OF A SIMILAR NATURE

Notes: (a) Including dishes and crockery in all materials; in particular, paper and cardboard dishes.

(b) Not including cooking utensils and containers, such as glass and earthenware pots (Cl.7-02), or flower vases, flower pots and china and glassware ,of a purely ornamental nature (Cl. 11-02).’

07-02 COOKI.NG APPLIANCES, UTENSILS.AND CONTAINERS ..

07-03 TABLE KNIVES,. FORKS AND SPOONS

07-04 APPLIANCES AND UTENSILS, HAND..MANIPULATED, FOR PREPARING FOOD OR DRINK

Note: Not including appliances and utensils classified in Class 7-02 and in Class 31.

07-05 FLAT IRONS AND WASHING, CLEANING AND DRYING EQUIPMENT

Note: Not including electric household appliances for washing, cleaning or drying (Cl. 15-05).

07-06 OTHER TABLE UTENSILS

07-07 OTHER HOUSEHOLD RECEPTACLES

07-08 FIREPLACE IMPLEMENTS

07-99 MISCELLANE0US

Class 8. Tools and hardware

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification of Goods

(See rule 10)

CLASS 8

Tools and hardware

Notes: (a) Including hand-operated tools, even ifmechanical power takes the place of muscular force; for example, .electric saws and drills.

(b) Not including machines or machine tools (Cl. 15 or 31).

08-01 TOOLS AND IMPLEMENTS FOR DRILLING, MILLING OR DIGGING

08-02 HAMMERS AND OTHER SIMILAR TOOLS AND IMPLEMENTS

08~03 CUTTING TOOLS AND IMPLEMENTS

Notes: (a) Including tools and instruments for sawing.

08-04 SCREWDRIVERS AND OTHER SIMILAR TOOLS AND IMPLEMENTS

08-05 OTHE’R TOOLS AND’IMPLEMENTS

Note: Including tools which are not classified, or not to be placed, in other subclasses or Classes.

08-06 HANDLES, KNOBS AND HINGES

08-07 LOCKING OR CLOSING DEVICES

08-08 FASTENING, SUPPORTING OR MOUNTING DEVICES NOT INCLUDED IN OTHER CLASSES

Notes: (a) Including nails, screws, nuts and bolts.

(b) Not including fastening devices for clothing (Cl. 2-07), for adornment (Cl. 11-01), or for office use (Cl. 19-02).

08-09 METAL FITTINGS AND MOUNTINGS FOR DOORS, WINDOWS AND FURNITURE, AND SIMILAR ARTICLES

08-10 BICYCLE AND MOTORCYCLE RACKS

08-99 MISCELLANEOUS

Note: Including non-electric cables, regardless Ofthe material of which they are made.

Class 9. Packages and containers for the transport or handling of goods

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 9

Packages and containers for the transport or handling of goods

09-01 BOTTLES, FLASKS, POTS, CARBOYS, DEMIJOHNS, AND CONTAINERS WITH DYNAMIC DISPENSING MEANS

Notes: (a) “Pots” means those serving as containers.

(b) Not including pots regarded as crockery (Cl.7-01), or flower pots (Cl. 11-02).

09-02 STORAGE CANS, DRUMS AND CASKS

09:03 BOXES, CASES, CONTAINERS, (PRESERVE) TINS OR CANS

Note: Including freight containers.

09-04 HAMPERS, CRATES AND BASKETS

09-05 BAGS, SACHETS, TUBES AND CAPSULES

Notes: (a) Including plastic bags or sachets, with or without handle or means of closing.

(b) “Capsules” means those used for packaging.

09-06 ROPES AND HOOPING MATERIALS

09-07CLOSING MEANS AND ATTACHMENTS

Notes: (a) Including only closing means for packages.

(b) “Attachments” means, for example, dispensing and dosing devices incorporated in containers and detachable atomizers.

09-08 PALLETS,AND PLATFORM~4 FOR FORKLIFTS

09-09 REFUSE AND TRASH CONTAINERS AND STANDS THEREFOR

09-99 M~SCELLANEOUS

Class 10. Clocks and watches and other measuring instruments, checking and signalling

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 10

Clocks and watches and other measuring instruments, checking and signalling instruments

10-01 CLOCKS AND ALARM CLOCKS

10-02 WATCHES AND WRIST WATCHES

10-03 OTHER TIME-MEASURING INSTRUMENTS

Note: Including time-measuring apparatus such as parking meters, timers for kitchen use and similar instruments.

10-04 OTHER MEASURING INSTRUMENTS, APPARATUS AND DEVICES

Notes: (a) Including instruments, apparatus and devices for measuring temperature, pressure, weight, length, volume and electricity.

(b) Not including exposure meters (Cl. 16-05).

10-05 INSTRUMENTS, APPARATUS AND DEVICES FOR CHECKING, SECURITY OR TESTING

.10-06 SIGNALLING APPARATUS AND DEVICES

Note: Not including lighting or signalling devices for vehicles (CL.26-06).

10.07 CASINGS, CASES, DIALS, HANDS AND ALLOTHER PARTS AND ACCESSORIES OF INSTRUMENTS FOR MEASURING, CHECKING AND SIGNALLING

Note: “Casings” means watch and clock casings and aU ,Gilsings,being integral parts of instruments of which they protect the mechanism, with the exception of cases specially designed for their contents (CI. 3-01) or for packaging (CI. 9-03).

10-99 MISCELLANEOUS

Class 11. Articles of adornment

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 11

Articles of adornment

11-01 JEWELLERY

Notes: (a) Including fancy and imitation jewellery.

(b) Not including watches (Cl. 10-02).

11-02 TRINKETS, TABLE, MANTEL AND WALL ORNAMENTS, FLOWER VASES AND POTS

Note: Including sculptures, mobiles and statues.

11-03 MEDALS AND BADGES”

11-04 ARTIFICIAL FLOWERS, FRUIT AND PLANTS

11-O5 FLAGS, FESTIVE DECORATIONS

Notes: (a) Including garlands, streamers and, Christmas tree decorations.

(b) Not including candles (Cl. 26-04).

11-99 MISCELLANEOUS

Class 12. Means of transport or hoisting

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 12

Means of transport or hoisting

Notes: (a) Including all vehicles: land, sea, air, space and others.

(b) Including parts, components and accessories which exist only in connection with a vehicle and cannot be placed in another class; these parts, components and accessories of . vehicles are to be placed in the subclass of the vehicle in question, or in Class 12-16 if they are c.ommon to several vehicles included in different subclasses. .

(c) Not including, in principle, parts, components and accessories ofvehicles which can be placed in another class; these parts, components and accessories are to be placed in the same class as articles of the same type, in other words, having the same function. Thus, carpets or mats for automobiles are to be placed with carpets (Cl. 6-11 ); electric motors for vehicles are to be placed in Class 13-01, and non-electric motors for vehicles in Class. 15-01 (the same applies to the components of such motors); automobile headlamps are to be placed with lighting apparatus (Cl. 26-06).

(d) Not including scale models ofvehicles (Cl. 21-01).

12-01 VEHICLES DRAWN BY ANIMALS

12-02 HANDCARTS, WHEELBARROWS

12-03 LOCOMOTIVES AND ROLLING STOCK FOR RAILWAYS AND ALL OTHER RAIL VEHICLES

12-04TELPHER CARRIERS, CHAIR LIFTS AND SKI LIFTS

12-05 ELEVATORS AND HOISTS FOR LOADING OR CONVEYING

Note: Including passenger lifts, goods lifts, cranes, forklift trucks and conveyor belts.

12-06 SHIPS AND BOATS

12-07 AIRCRAFTS AND SPACE VEHICLES

12-08 MOTOR CARS, BUSES AND LORRIES

Note: Including ambulances and refrigerator vans (road).

12-09 TRACTORS

12-10 ROAD VEHICLE TRAILERS

Note: Including caravans.

12-.11 CYCLES AND MOTORCYCLES

12-12 PERAMBULATORS, INVALID CHAIRS, STRETCHERS

12-13 SPECIAL PURPOSE VEHICLES

Notes: (a) Including only vehicles not specifically intended for transport, such asstreet-cleaning vehicles, watering “lorries, fire engines, snow ploughs and breakdown lorries.

(b) Not including mixed-purpose agricultural machines (Cl. 15-03), or self-propelled machines for use in construction and civil engineering (Cl. 15-04).

12-14 OTHER VEHICLES

Note: Including sleighs and air-cushion vehicles.

12-15 TYRES AND ANTI-SKID CHAINS FOR VEHICLES

12-16 PARTS, EQUIPMENT ANQ ACCESSORIES FOR VEHICLES, NOT INCLUDED IN OTHER CLASSES OR SUBCLASSES

12-99 MISCELLANEOUS

Class 13. Equipment for production, distribution or transformation of electricity

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 13

Equipment for production, distribution or transformation of electricity

Notes: (a) Including only apparatus which produces, distributes or transforms electric current.

(b) Including electric motors, however.

(c) Not including electrically-driven apparatus, such as electric watches (Cl. 10-02), or apparatus {or the measurement of electric current (CI. 10-04).

13-01GENERATORS AND MOTORS

Note: Including electric motors for vehicles.

13-02 POWER TRANSFORMERS, ‘RECTIFIERS; BATTERIES AND ACCUMULATORS

13-03 EQUIPMENT FOR DISTRIBUTION OR CONTROL OF ELECTRIC POWER

Note: Including conductors, switches and switchboards.. I
13-99 MISCELLANEOUS

Class 14. Recording, communication or information retrieval equipment

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 14

Recording, communication or information retrieval equipment

14-01 EQUIPMENT FOR THE RECORDING OR REPRODUCTION OF SOUNDS OR PICTURES

Note: Not including photographic or cinematographic apparatus (CI. 16).

14-02 DATA PROCESSING EQUIPMENT AS WELL AS PERIPHERAL APPARATUS AND DEVICES

14-03 COMMUNICATIONS EQUIPMENT, WIRELESS REMOTE CONTROLS AND RADIO AMPLIFIERS

Note: Including telegraphic, telephone and television apparatus, as well as wireless apparatus and teleprinters.

14-04 SCREEN DISPLAYS AND ICONS

14-99 MISCELLANEOUS

Class 15. Machines, not elsewhere specified

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 15

Machines, not elsewhere specified

15-01 ENGINES

Notes: (a) Including non-electric engines for vehicles.

(b) Not including electric motors (Cl. 13).

15-02 PUMPS AND COMPRESSORS

Note: Not including hand or foot pumps (Cl. 8-05), or fire extinguishing pumps (Cl. 29-01).

15-03 AGRICULTURAL MACHINERY

Notes: (a) Including ploughs and combined machinery, i.e., both machines and vehicles, for example, reaping and binding machines

(b) Not including hand tools (Cl. 8).

15-04 CONSTRUCTION MACHINERY

Notes: (a) Including machines used in civil engineering and self-propelled machines such as excavators, concrete mixers and dredgers.

(b) Not including hoists and cranes (Cl. 12-05).

15-05 WASHING, CLEANING AND DRYING MACHINES

Notes: (a) Including appliances and machines for treating linen and clothes, such as ironing machines and wringers.

(b) Including dishwashing machines and industrial drying equipment.

15-06. TEXTILE, SEWING, KNITTING AND EMBROIDERING MACHINES, INCLUDING THEIR INTEGRAL PARTS

15-07 REFRIGERATION MACHINERY AND APPARATUS

Notes: (a) Including household refrigeration apparatus.

(b) Not including refrigerator wagons (rail) (Cl. 12-03) or refrigerator vans (road) (CI. 12-08).

15-08 [vacant]

15-09 MACHlNE TOOLS, ABRADING AND FOUNDING MACHINERY

Note: Not including earth working machinery and material separators (Cl. 15-99).

15-99 MISCELLANEOUS

Class 16. Photographic, cinematographic and optical apparatus

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 16

Photographic,’ cinematographic and optical apparatus

Note: Not including lamps for photography or filming (Cl. 26-05).

16-01 PHOTOGRAPHIC CAMERAS AND FILM CAMERAS

16-02 PROJECTORS AND VIEWERS

16-03 PHOTOCOPYING APPARATUS AND ENLARGERS

Note: Including microfilming equipment and apparatus for viewing microfilms, as well as office machines known as “photocopying” apparatus which use other than photographic processes (in particular, thermal or magnetic processes).

16-04 DEVELOPING APPARATUS AND EQUIPMENT

16-05 ACCESSORIES

Note: Including filters for photographic cameras, exposure meters, tripods and photographic flashlight apparatus.

16-06 OPTICAL ARTICLES

Notes: (a) Including spectacles and microscopes.

(b) .Not including measuring instruments embodying optical devices (Cl. 10-04).

16-99 MISCELLANEOUS

Class 17. Musical instruments

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 17

Musical instruments

Note: Not including cases for musical instruments (CI. 3-01), or equipment for the recording or reproduction of sounds (Cl. 14-01).

17-01 KEYBOARD INSTRUMENTS

Note: Including electronic and other organs, accordions, and mechanical and other pianos.

17-02 WIND INSTRUMENTS

Note: Not including organs, harmoniums and accordions (Cl. 17-01).

17-03 STRINGED INSTRUMENTS

17-04 PERCUSSION INSTRUMENTS

17-05 MECHANICAL INSTRUMENTS

Notes: (a) Including music boxes.

(b) Not including mechanical keyboard instruments (Cl. 17-01).

17-99 MISCELLANEOUS

Class 18. Printing and office machinery

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 18

Printing and office machinery

18-01 TYPEWRITERS AND CALCULATING MACHINES

Note: Not including computers and other apparatus to be placed in Class 14-02.

Notes: (a) Including typesetting machines, stereotype machines and apparatus, typographic machines and other reproducing machines such as duplicators and offset equipment, as well as addressing machines, franking and cancelling machines.

(b) Not including photocopying machinery (C1. 16-03).

18-03 TYPE AND TYPE FACES

18-04 BOOKBINDING MACHINES, PRINTERS STAPLING MACHINES, GUILLOTINES AND TRIMMERS (FOR BOOKBINDING)

Note: Including machines and similar devices for cutting paper, analogous to guillotines and trimmers.

18-99 MISCELLANEOUS

Class 19. Stationery and office equipment, artists and teaching materials

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 19

Stationery and office equipment, artists and teaching materials

19-61 WRITING PAPER, CARDS FOR CORRESPONDENCE AND ANNOUNCEMENTS

Note: Including all paper, in the widest sense ofthe term, which.is used for writing, drawing, painting or printing, such as tracing paper, carbon paper, newsprint, envelopes, greetings cards and-illustrated postcards, even ifthey embody a sound recording.

19-02 OFFICE EQUIPMENT

Notes: (a) Including equipment-used at cash desks, such as change sorters.

(b) Some office equipment is to be placed in other subclasses or classes; for example, office furniture in Class 6, office machines and equipment in Classes 14-02; 16-03; 18-01; 18-02 or 18-04, and writing materials in Class 19-01 or 19-06 (see Alphabetical List).

19-03 CALENDARS

Note: Not including-diaries (Cl. 19-04).

19-04 BOOKS AND OTHER OBJECTS OF SIMILAR OUTWARD APPEARANCE

Note: Including covers of books, bindings, albums, diaries and similar objects.

19-05 [vacant]

19-06 MATERIALS AND INSTRUMENTS FORWRITING BY HAND, FOR DRAWING, FOR PAINTING, FOR SCULPTURE, FOR ENGRAVING AND FOR OTHER ARTISTIC TECHNIQUES

Note: Not including paintbrushes (Cl. 4-04), drawing tables and attached equipment (Cl. 6-03), or writing paper (Cl. 19-01).

19-07 TEACHING MATERIALS

Notes: (a) Including maps ofall kinds, globes and planetariums.

(b) Not including audio-visual teaching aids (CI. 14-01).

19-08 OTHER PRINTED MATTER

Note: Including printed advertising materials.

19-99 MISCELLANEOUS

Class 20. Sales and advertising equipment, signs

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 20

Sales and advertising equipment, signs

20-01 AUTOMAtiC VENDING MACHINES

20-02 DISPLAY AND SALES EQUIPMENT

Note: Not including articles of furniture (Cl. 6).

20-03 SIGNS, SIGNBOARDS AND ADVERTISING DEVICES

Notes: (a) Including luminous advertising devices and mobile advertising devices.

(b) Not including packages (Cl. 9), or signalling devices (Cl. 10-06).

20-99 MISCELLANEOUS

Class 21. Games, toys, tents and sports goods

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 21

Games, toys, tents and sports goods

21-01 GAMES AND TOYS

Notes: (a) Including scale models.

(b) Not including toys for animals (CI. 30-99).

21-02 GYMNASTICS AND SPORTS APPARATUS AND EQUIPMENT

Notes: (a) Including, as sports equipment: apparatus and equipment necessary for the various sports which have no other specific purpose, such as footballs, skis and tennis rackets, to the exclusion of all other objects which may also be used in practising a given sport.

(b) Including, subject to the reservation mentioned under (a), training equipment and apparatus and equipment necessary for outdoor games.

(c) Not including sports clothing (Cl. 2), toboggans or sleighs (Cl. 12-14).

21-03 OTHER AMUSEMENT AND ENTERTAINMENT ARTICLES

Notes: (a) Including fairground roundabouts and automatic machines for games of chance.

(b) Not including games and toys (CI. 21-01), or other articles to be placed in Class 21-01 or 21-02.

21-04 TENTS AND ACCESSORIES THEREOF

Notes: (a) Including poles, pegs and other similar articles.

(b) Not including other camping articles to be placed in other classes according to their nature, such as chairs (Cl. 6-01), tables (Cl.6-03), plates (Cl. 7-01), and caravans (Cl. 12-10).

21-99 MISCELLANEOUS

Class 22. Arms, pyrotechnic articles, articles for hunting, fishing and pest killing

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE
Classification ofGoods

(See rule 10)

CLASS 22

Arms, pyrotechnic articles, articles for hunting, fishing and pest killing

22-01 PROJECTILE WEAPONS

22-02 OTHER WEAPONS

22-03 AMMUNITION, ROCKETS AND PYROTECHNIC ARTICLES

22-04 TARGETS AND ACCESSORIES

Note: Including the special device for actuating mobile targets.

22-05 HUNTING AND FISHING EQUIPMENT

Note: Not including articles of clothing (CI. 2), or weapons (CI. 22-01 or 22-02).

22-06 TRAPS, ARTICLES FOR PEST KILLING

22-99 MISCELLANEOUS

Class 23. Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification of Goods

(See rule 10)

CLASS 23

Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel

23-01 FLUID DISTRIBUTION EQUIPMENT

Note: Including pipes and pipe fittings.

23-02 SANITARY APPLIANCES

Notes: (a) Including baths, showers, washbasins, saunas, water closets, sanitary units and sanitary accessories not included in other classes.

(b). Not including pipes or pipe fittings (Cl. 23-01).

23-03 HEATING EQUIPMENT

23-04 VENTILATION AND AIR-CONDITIONING EQUIPMENT

23-05 SOLID FUEL

23-99 MISCELLANEOUS

Class 24. Medical and laboratory equipment

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 24

Medical and laboratory equipment

Note: The term “medical equipment” covers also surgical, dental and veterinary equipment.

24-01 APPARATUS AND EQUIPMENT FOR DOCTORS, HOSPITALS AND LABORATORIES

24-02 MEOfCAL1NSTRUMENTS, INSTRUMENTS AND TOOLS FOR LABORATORY USE

Note: Including only hand-operated instruments.

24-03 PROSTHETIC ARTICLES

24-04 MATERIALS FOR DRESSING WOUNDS NURSING AND MEDICAL CARE

Note: Including absorbent dressings.

24-99 MISCELLANEOUS

Class 25. Building units and construction elements

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 25

Building units and construction elements

25-01 BUILDING MATERIALS

Note: Including bricks, beams, pre-shaped strips, tiles, slates and panels.

25-02 PREFABRICATED OR PRE-ASSEMBLED BUILDING PARTS

Notes: (a) Including windows, doors, outdoor shutters, partition walls and gratings,

(b) Not including staircases (Cl. 25-04).

25-03 HOUSES, GARAGES AND OTHER BUILDINGS

25-04 STEPS, LADDERS AND SCAFFOLDS

25-99 MISCELLANEOUS

Class 26. Lighting apparatus

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 26

Lighting apparatus

26-01 CANDLESTICKS AND CANDELABRA

26-02 TORCHES AND HAND LAMPS AND LANTERNS

26-03″ PUBLIC LIGHTING FIXTURES

Note: Including outside lamps, stage lighting and search light projectors.

26-04 LUMINOUS SOURCES, ELECTRICAL OR NOT

Note: Including bulbs for electric lamps, luminous plaques and tubes and candles.

26-05 LAMPS. STANDARD LAMPS, CHANDELIERS, WALL AND CEILING FIXTURES, LAMPSHADES, REFLECTORS, PHOTOGRAPHIC AND CINEMATOGRAPHIC PROJECTOR LAMPS

26-06 LUMINOUS DEVICES FOR VEHICLES

26-99 MISCELLANEOUS

Class 27. Tobacco and smokers supplies

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 27

Tobacco and smokers supplies

27-01 TOBACCO, OIGARS AND CIGARETTES

27-02 PIPES. CIGAR AND CIGARETTE HOLDERS

27-03 ASHTRAYS

27-04 MATCHES

27-05 LIGHTERS

27-06 CIGAR CASES, CIGARETTE CASES, TOBACCO JARS AND POUCHES

Note: Not including packages (CI. 9).

27-99 MISCELLANEOUS

Class 28. Pharmaceutical and cosmetic products, toilet articles and apparatus

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification of Goods

(See rule 10)

CLASS 28

Pharmaceutical and cosmetic products, toilet articles and apparatus

28-01 PHARMACEUTICAL PRODUCTS

Notes: (a) Including for animals.

‘(b) Including chemicals in cachet; capsule, lozenge, pill and tablet forms.

(c )Not including materials for dressing wounds and nursing (Cl. 24-04).

28-02 COSMETIC PRODUCTS

Note: Including for animals.

28-03 TOILET ARTICLES AND BEAUTY PARLOR EQUIPMENT

Notes: (a) Including razors, apparatus and appliances for massaging, hair removing or hair dressing.

(b) Not including toilet and make-up brushes (CI. 4-02), or articles and equipment for animals (Cl. 30-99).

28-04 W, 3 FALSE HAIRPIECES

28-99 MISCELLANEOUS

Class 29. Devices and equipment against fire hazards, for accident prevention and for rescue

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 29

Devices and equipment against fire hazards, for accident prevention and for rescue

29-01 DEVICES AND EQUIPMENT AGAINST FIRE HAZARDS

Notes: (a) Including fire extinguishers.

(b) Not including fire engines (vehicles) (Cl. 12-13), fire-hoses and nozzles for fire-hoses (Cl. 23-01).

29-02 DEVICES AND EQUIPMENT FOR ACCIDENT PREVENTION AND FOR RESCUE, NOT ELSEWHERE SPECIFIED

Notes: (a) Including devices and equipment for animals.

(b) Not including helmets (CI. 2-03) and garments for protection against accidents (CI. 2-02; 2-04 or 2-06).

29-99 MISCELLANEOUS

Class 30. Articles for the care and handling of animals

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 30

Articles for the care and handling of animals

Note: Not including animal foodstuffs (CI. 1), or pharmaceutical and cosmetic products for animals (Cl. 28-01 or 28-02).

30-01 ANIMAL CLOTHING

30-02 PENS, CAGES, KENNELS AND SIMILAR SHELTERS

Note: Not including buildings (CI. 25).

30-03 FEEDERS AND WATERERS

30-04 SADDLERY

Note: Including collars for animals.

30-05 WHIPS AND PRODS

30-06 BEDS AND NESTS

30-07 PERCHES AND OTHER CAGE ATTACHMENTS

30-08 MARKERS, MARKS AND SHACKLES

30-09 HITCHING POSTS

30-99 MISCELLANEOUS

Class 31. Machines and appliances for preparing food or drink not elsewhere specified

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 31

Machines and appliances for preparing food or drink not elsewhere specified

Note: Not including hand-manipulated utensils, instruments and appliances for serving or preparing food or drink (Cl. 7).

31-00 MACHINES AND APPLIANCES FOR PREPARING FOOD OR DRINK, NOT ELSEWHERE SPECIFIED.

Class 99. Miscellaneous

The THIRD SCHEDULE of the principal rules shall be substituted, namely.-

“THE THIRD SCHEDULE

Classification ofGoods

(See rule 10)

CLASS 99

Miscellaneous

Note: Including all the products not included in the preceding classes.

99-00 MISCELLANEOUS

Schedule 4.

In the THE FOURTH SCHEDULE of the principal niles, :-

(a) for items number 6 and 7 and entries relating thereto, the following item and entries shall be substituted namely,

 “6  For statement and evidence under Rules 29(1) and 40(2)200.00
 7  Counter statement and evidenceurider rules 29(3) and 40(4)200:00″

Schedule 5.

After fourth Schedule ofthe principal rules, the following Schedule shall be inserted, namely:-

THE FIFTH SCHEDULE

(See Rule 17)

ORIGINAL

No.

GOVERNMENT OF INDIA

THE PATENT OFFICE

CERTIFICATE OF REGISTRATION OF DESIGN

 Design No ……………………………………………………….
Date ……………………………………………………………….
Reciprocity date*……………………………………………….
Country …………………………………………………………..

Certified that the Design of which a copy is annexed hereto has been registered as of the number and date given above in class .in respect of the application of such.design to………………………………………….

…………………………………………………………………………………… in the name of.
………………………………………………………………………………………………………………

………………………………………………………………………………………………………………

………………………………………………………………………………………………………………

………………………………………………………………………………………………………………

…………………………………………………………………….

in pursuance of and subject to the provisions of the Designs Act, 2000 and the Designs Rules, 2001.

Controller General of Patents, Designs and Trade Marks

________________________________________________________

*The reciprocity date (if any)which has been allowed and the name of the country.

Copyright in the design will subsist for ten years from the date of Registration, and may under the terms of the Act and Rules, be extended for a further period of five years.

This Certificate is not for use in legal proceedings or for obtaining registration abroad.
Date of issue”
[F. No. S/32/2007-IPR-V]
N. N. PRASAD, Jt. Secy.
Note : The principal rules were published in the Gazette of India vide number S.O. 414(E) dated the 11th May, .2001.

________________________________________________________

Printed by the Manager, Govt. of India Press, Ring Road. Mayapuri, New Delhi-110064 and Published by the Controller of Publications. Delhi-110054.

Bydeb

The Geographical Indications of Goods (Registration and Protection) Act, 1999

No.48 of 1999

[30th December, 1999]

An Act to provide for the registration and better protection of geographical indications relating to goods.

BE it enacted by Parliament in the Fiftieth Year of the Republic of India as follows:-

Chapter I – Preliminary

Section 1. Short title, Extent and Commencement

(1) This Act may be called the Geographical Indications of Goods (Registration and Protection) Act, 1999.

(2) It extends to the whole of India

(3) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint, and different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

Unless the context otherwise requires:-

(a) “Appellate Board” means the Appellate Board established under Section 83 of the Trade Marks Act, 1999;

 (b) “authorised user” means the authorised user of a geographical indication registered under Section 17;

(c) “deceptively similar” A geographical indication shall be deemed to be deceptively similar to another geographical indication if it so nearly resembles that other geographical indication as to be likely to deceive or cause confusion;

(d) “district court” has the meaning assigned to it in the Code of Civil Procedure, 1908;

(e) “geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Explanation:- For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;

 (f) “goods” means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff;

(g) “indication” includes any name, geographical or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies;

(h) “name” includes any abbreviation of a name;

(i) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;

(j) “prescribed” means prescribed by rules made under this Act;

Section 2. Definitions and interpretation

(1) In this Act,

(k) “producer”, in relation to goods, means any person who:-

(i) if such goods are agricultural goods, produces the goods and includes the person who processes or packages such goods;

(ii) if such goods are natural goods, exploits the goods;

(iii) if such goods are handicraft or industrial goods, makes or manufactures the goods, and includes any person who trades or deals in such production, exploitation, making or manufacturing, as the case may be, of the goods

(l) “register means the Register of Geographical Indications referred to in Section 6;

(m) “registered” [with its grammatical variations] means registered under this Act;

(n) “registered proprietor” in relation to a geographical indication, means any association of persons or of producers or any organisation for the time being entered in the register as proprietor of the geographical indication;

(o) “Registrar” means the Registrar of

Geographical Indications referred to in Section 3;

(p) “tribunal” means the Registrar or, as the case may be, the Appellate Board before which the proceeding concerned is pending.

(2) Words and expressions used and not defined in this Act but defined in the Trade Marks Act, 1999 shall have the meanings respectively assigned to them in that Act.

(3) In this Act, unless the context otherwise requires, any reference:-

(a) to the use of a geographical indication shall be construed as a reference to the use of a printed or other visual representation of the geographical indication.

(b) to the use of a geographical indication in relation to, goods shall be construed as a reference to the use of the geographical indication upon, or in any physical or in any other relation whatsoever, to such goods;

(c) to a registered geographical indication shall be construed as including a reference to a geographical indication registered in the register;

(d) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of Section 3;

 (e) to the Geographical Indications Registry shall be construed as including a reference to any office of the Geographical Indications Registry.

Chapter II – The Register and Conditions for Registration

Section 3. Registrar of Geographical indications

(1) The Controller-General of Patents, Designs and Trade Marks appointed under sub-section (1) of Section 3 of the Trade Marks Act, 1999, shall be the Registrar of Geographical Indications.

(2) The Central Government may appoint such 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.

Section 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.

Section 5. Geographical indications Registry and offices thereof

(1) For the purpose of this Act, there shall be established a Registry which shall be known as the Geographical Indications Registry.

(2) The head office of the Geographical Indications Registry shall be at such place as the Central Government may, by notification in the Official Gazette, specify, and for the purpose of facilitating the registrations of geographical indications, there may be established at such places as the Central Government may think fit branch offices of the Geographical Indications Registry.

(3)The Central Government may, by notification in the Official Gazette, define the territorial limits within which an office of the Geographical Indications Registry may exercise its functions.

(4) There shall be a seal of the Geographical Indications Registry.

Section 6. Register of Geographical Indications

(1) For the purposes of this Act, a record called the Register of geographical indications shall be kept at the Head office of the Geographical Indications Registry, wherein shall be entered all registered geographical indications with the names, addresses and descriptions of the proprietors, the names, addresses and descriptions of authorised users and such other matters relating to registered geographical indications as may be prescribed and such registers may be maintained wholly or partly on computer.

 (2) Notwithstanding anything contained in sub-section (I) it shall be lawful for the Registrar to keep the records wholly or partly in computer floppies or diskettes or in any other electronic form, subject to such safeguards as may be prescribed.

 (3) Where such register is maintained wholly or partly in computer floppies or diskettes or in any other electronic form under sub-section (2), any reference in this Act to any entry in the register shall be construed as the reference to the entry as maintained on computer floppies or diskettes or in any other electronic form, as the case may be.

 (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) Subject to the superintendence and direction of the Central Government the register shall be kept under the control and management of the Registrar.

(6) There shall be kept at each branch office of the Geographical Indications Registry a copy of the register and such other documents mentioned in Section 78 as the Central Government may, by notification in the Official Gazette, direct.

Section 7. Part A and Part B of the Register

(1) The register referred to in Section 6 shall be divided into two Parts called respectively Part A and B.

(2) The particulars relating to the registration of the geographical indications shall be incorporated and form part of Part A of the register in the prescribed manner.

(3) The particulars relating to the registration of the authorised users shall be incorporated and form part of part B of the register in the prescribed manner.

Section 8. Registration to be in respect of Particular goods and area

 (1) A geographical indication may be registered in respect of any or all of the goods, comprised in such class of goods as may be classified by the Registrar and in respect of a definite territory of a country, or a region or locality in that territory, as the case may be.

(2) The Registrar shall classify the goods under subsection (1), as far as may be, in accordance with the International classification of goods for the purposes of registration of geographical indication.

(3) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods referred to in sub-section (2).

(4) Any question arising as to the class within which any goods fall or in the definite area as referred to in subsection (1) in respect of which the geographical indication is to be registered or where any goods are not specified in the alphabetical index of goods published under subsection (3) shall be determined by the Registrar whose decision in the matter shall be final.

Section 9. Prohibition of Registration of certain geographical indications

 A geographical indication:

(a) the use of which would be likely to deceive or cause confusion; or

 (b) the use of which would be contrary to any law for the time being in force; or

 (c) which comprises or contains scandalous or obscene matter; or

(d) which comprise or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

 (e) which would otherwise be disentitled to protection in a court; or

(f) which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or

 (g) which although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be,

shall not be registered as a geographical indication.

Explanation 1: For the purposes of this section, “generic names or indications” in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods.

Explanation 2: In determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.

Section 10. Registration of homonymous geographical indications

Subject to the provisions of Section 7, a homonymous geographical indication may be registered under this Act, if the Registrar is satisfied, after considering the practical conditions under which the homonymous indication in question shall be differentiated from other homonymous indications and the need to ensure equitable treatment of the producers of the goods concerned, that the consumers of such goods shall not be confused of misled in consequence of such registration.

Chapter III – Procedure for and Duration of Registration

Section 11. Application for registration

(1) Any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication.

(2) The application under sub-section (1) shall contain-

(a) statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical, environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be;

(b) the class of goods to which the geographical indication shall apply;

(c) the geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured;

(d) the particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both;

(e) a statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and

 (f) such other particulars as may be prescribed.

(3) A single application may be made for registration of a geographical indication for different classes of goods and fee payable there for shall be in respect of each such class of goods.

 (4) Every application under sub-section (1) shall be filed in the office of the Geographical Indications Registry within whose territorial limits, the territory of the country or the region or locality in the country to which the geographical indication relates is situated:

Provided that where such territory, region or locality as the case may be, is not situated in India, the application shall be filed in the office of the Geographical Indications Registry within whose territorial limits the place mentioned in the address for services in India as disclosed in the application, is situated.

(5) Every applications under sub-section (1) shall be examined by the Registrar in such manner as may be prescribed.

 (6) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any, as he thinks fit.

 (7) In the case of refusal or conditional acceptance of application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at this decision.

Section 12. Withdrawal of acceptance

 Where, after the acceptance of an application for registration of a geographical indication but before its registration, the Registrar is satisfied,

(a) that the application has been accepted in error, or

(b) that in the circumstances of the case the geographical indication should not be registered or should be registered subject conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

Section 13. Advertisement of application

(1) When an application for registration of a geographical indication has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in such manner as may be prescribed.

 (2) Where after advertisement of an application-

(a) an error in the application has been corrected; or

(b) the application has been permitted to be amended under section 15, the Registrar may, in his discretion cause the application to be advertised again or instead of causing the application to be advertised again, notify in the prescribed manner, the correction made in the application.

Section 14. Opposition to registration

(1) Any person may, within three months from the date of advertisement or readvertisement of an application for registration or within such further period, not exceeding one month, in the aggregate, as the Registrar, on application made to him in such manner and on payment of such fee as may be prescribed allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

 (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so, he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in such manner and within such time as may be prescribed to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.

 (5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counterstatement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceeding before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.

 (7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.

Section 15. Correction and Amendment

The Registrar may, on such terms, as he thinks just, at any time, whether before or after acceptance of an application for registration under Section 11, permit the correction of any error or in connection with the application or permit an amendment of the application.

 Provided that if an amendment is made to a single application referred to in sub-section (3) of Section 11 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

Section 16. Registration

(1) Subject to the provisions of Section 12, when an application for registration of a geographical indication has been accepted and either =

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the applicant has been opposed and the opposition has been decided in favour of the applicant.

 The Registrar shall, unless the Central Government otherwise directs, register the said geographical indication and the authorised users, if any, mentioned in the application and the geographical indication and the authorised users when registered shall be registered as of the date of the making of the said application and the date shall, subject to the provisions of Section 84, be deemed to be the date of registration.

(2) On the registration of a geographical indication, the Registrar shall issue each to the applicant and the authorised users, if registered with the geographical indication, a certificate in such form as may be prescribed of the registration thereof, sealed with the seal of the Geographical Indication Registry.

(3) Where registration of a geographical indication is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is competed within the time specified in that behalf in the notice.

(4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or on obvious mistake.

Section 17. Application for registration as authorised user

(1) Any person claiming to be the producer of the goods in respect of which a geographical indication has been registered under section 16 may apply in writing to the Registrar in the prescribed manner for registering him as an authorised user of such geographical indication.

(2) The application under sub-section (1) shall be accompanied by a statement and such documents of facts as may be prescribed and required by the Registrar to determine as to whether such person is the producer of the goods referred to in that sub-section and such fee as may be prescribed.

(3) The provisions of this Chapter relating to-

(a) the filing and examination of the application;

(b) the refusal and acceptance of registration;

(c) withdrawal of acceptance of application;

(d) advertisement of application;

 (e) opposition to registration;

(f) correction or error in an amendment of the application and

(g) registration.

Shall apply in respect of the application and registration of authorised users referred to in sub-section (1) in the same manner as they apply for the application for registration and registration of the geographical indication.

Section 18. Duration, renewal, Removal and Restoration of registration

(1) The registration of a geographical indication shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

 (2) The registration of an authorised user shall be for a period of ten years or for the period till the date on which the registration of the geographical indication in respect of which the authorised user is registered expires, whichever is earlier.

(3) The Registrar shall, on application made in the prescribed manner, by the registered proprietor or by the authorised user and within the prescribed period and subject to the payment of the prescribed fee, renew the registration of the geographical indication or authorised user, as the case may be, for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

 (4) At the prescribed time before the expiration of the last registration of a geographical indication or the authorised user, as the case may be, the Registrar shall send notice in the prescribed manner to the registered proprietor or the authorised user, as the case may be, of the date of expiration and the conditions as the payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the geographical indication or the authorised user, as the case may be, from the register.

 Provided that the Registrar shall not remove the geographical indication or the authorised user, as the case may be, from the register, if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the geographical indication or the authorised user, as the case may be, and shall renew the registration of geographical indication or the authorised user as the case may be, for a period of ten years under sub-section (3).

 (5) Where a geographical indication or authorised user, as the case may be, has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the geographical indication or the authorised user, as the case may be, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just to do so, restore the geographical indication or the authorised user, as the case may be, to the register and renew registration of the geographical indication or authorised user, as the case may be, either generally or subject to such condition or limitation as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

Section 19. Effect of Removal from Register for Failure to Pay fee for renewal

Where a geographical indication has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another geographical indication during one year, next after the date of removal, be deemed to be a ‘geographical indication already on the register, unless the tribunal is satisfied either-

 (a) that there has been no bona fide trade use of the geographical indication which has been removed within the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the geographical indication which is the subject of the application for registration by reason of any previous use of the geographical indication which has been removed.

Chapter IV – Effect of Registration

Section 20. No action for infringement of unregistered geographical indication

(I) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered geographical indication.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.

Section 21. Rights conferred by registration

 (I) Subject to the other provisions of this Act, the registration of a geographical indication shall, if valid, give,-

 (a) to the registered proprietor of the geographical indication and the authorised user or users thereof the right to obtain relief in respect of infringement of the geographical indication in the manner provided by this Act;

(b) to the authorised user thereof the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.

 (2) The exclusive right to the use of a geographical indication given under clause (b) of sub-section (1) shall be subject to any condition and limitation to which the registration is subject.

 (3) Where the two or more persons are authorised users of geographical indications, which are identical with or nearly resemble each other, the exclusive right to the use of any of those geographical indications 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 anyone of those persons as against any other of those persons merely by registration of the geographical indications, but each of those persons has otherwise the same rights as against other persons as he would have if he were the sole authorised user.

 Section 22. Infringement or registered geographical indications

 (1) A registered geographical indication is infringed by a person who, not being an authorised user thereof,-

 (a) uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods; or

 (b) uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication.

 Explanation 1:- For the purposes of this clause, “act of unfair competition” means any act of competition contrary to honest practices in industrial or commercial matters.

 Explanation 2:- For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely:-

(i)all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor;

 (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competitor;

 (iii) geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods;

(b) uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in respect of which such registered geographical indication relates.

(2) The Central Government may, if it thinks necessary so to do for providing additional protection to certain goods or classes of goods under sub-section (3), by notification in the Official Gazette, specify such goods or class or classes of goods, for the purposes of such protection.

(3) Any person who is not an authorised user of a geographical indication registered under this Act in respect of the goods or any class or classes of goods notified under sub-section (2), uses any other geographical indication to such goods or class or classes of goods not originating in the place indicated by such other geographical indication or uses such other geographical indication to such goods or class or classes of goods even indicating true origin of such goods or uses such other geographical indication to such goods or class or classes of goods in translation of the true place of origin or accompanied by expression such as “kind”, “style”, “imitation”, or the like expression, shall infringe such registered geographical indication.

(4) Notwithstanding anything contained in this section, where the goods in respect of which a geographical indication has been registered are lawfully acquired by a person other than the authorised user of such geographical indication, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement of such geographical indication, except where the condition of goods is impaired after they have been put in the market.

Section 23. Registration to be prima facie Evidence of validity

 (1) In all legal proceedings relating to a geographical indication, the certificate of registration granted in this regard by the Registrar under this Act, being a copy of the entry in the register under the seal of the Geographical Indications Registry, shall be prima facie evidence of the validity thereof and be admissible in all courts and before the Appellate Board without further proof or production of the original.

(2) Nothing in this section shall be deemed to be affect of the right of action in respect of an unregistered geographical indication.

Section 24. Prohibition of assignment or transmission, etc.

Notwithstanding anything contained in any law for the time being in force, any right to a registered geographical indication shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement;

Provided that on the death of an authorised user his right in a registered geographical indication shall devolve on his successor in title under the law for the time being in force.

Chapter V – Special Provisions Relating to Trade Marks and Prior Users

Section 25. Prohibition of registration of geographical indication as trade mark

Notwithstanding anything contained in the Trade Marks Act, 1999, the Registrar of Trade Marks referred to in Section 3 of that Act, shall, suo motu or at the request of an interested party, refuse or invalidate the registrations of a trade mark which-

(a) contains or consists of a geographical indication with respect to the goods or class or classes of goods not originating in the territory of a country , or a region or locality in that territory which such geographical indication indicates, if use of such geographical indications in the trade mark for such goods, is of such a nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods;

(b) Contains or consists of a geographical indication identifying goods or class or classes of goods notified under sub-section (2) of Section 22.

Section 26. Protection to certain Trade marks

(1) Where a trade mark contains or consists of a geographical indication and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where rights to such trade mark have been acquired through use in good faith either-

(a) Before the commencement of this Act; or

(b) Before the date of filing the application for registration of such geographical indication under this Act; nothing contained in this Act shall prejudice the registrability or the validity of the registration of such trade mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such geographical indication.

(2) Nothing contained in this Act shall apply in respect of a geographical indication with respect to goods or class or classes of goods for which such geographical indication is identical with the term customary in common language as the common name of such goods in any part of India on or before the 1st day of January, 1995.

(3) Nothing contained in this Act shall in any way prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where such name is used in such a manner as to confuse or mislead the people.

 (4) Notwithstanding anything contained in the Trade Marks Act, 1999 or in this Act, no action in connection with the use or registration of a trade mark shall be taken after the expiry of five years from the date on which such use or registration infringes any geographical indication registered under this Act has become known to the registered proprietor or authorised user registered in respect of such geographical indication under this Act or after the date of registration of the trade mark under the said Trade Marks Act subject to the condition that the trade mark has been published under the provisions of the said Trade Marks Act, 1999 or the rules made there under by that date, if such date is earlier than the date on which such infringement became known to such proprietor or authorised user and such geographical indication is not used or registered in bad faith.

Chapter VI – Rectification and Correction of the Register

Section 27. Power to cancel or vary registration and to rectify the register

(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a geographical indication or authorised user on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

 (3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

 (4) The tribunal, of its own motion, may , after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2)

(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

Section 28. Correction of register

The Registrar may, on application made in the prescribed manner by the registered proprietor or the authorised user –

(a) correct any error in the name, address or description of the registered proprietor or the authorised user, as the case may be, of a geographical indication, or any other entry relating to the geographical indication on the register;

(b) enter any change in the name, address or description of the association of persons or of producers or any organisation or authority, as the case may be, who is registered as proprietor of a geographical indication on the register;

(c) cancel the entry of a geographical indication on the register;

(d) strike out any goods or class or classes of goods from those in respect of which a geographical indication is registered from the register, and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

Section 29. Alteration of Registered geographical indications

(1) The registered proprietor of a geographical indication may apply in the prescribed manner to the Registrar for leave to add to or alter the geographical indication in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

 (2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of the opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.

(3) Where leave is granted under this section, the geographical indication as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).

Section 30. Adaptation of entries in register to amend or substitute classification of goods

(1) The Registrar shall not make any amendment of the register which would have the effect of adding any goods or classes of goods to those in respect of which a geographical indication is registered (whether in one or
more classes) immediately before the amendment is to be made or antedating the registration of a geographical indication in respect of any goods:

 Provided that this sub-section, shall not apply when the Registrar is satisfied that compliance therewith would involve complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

(2) A proposal so to amend the register shall be brought to the notice of the registered proprietor and every authorised user of the geographical indication affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of sub-section (1).

Chapter VII – Appeals to the Appellate Board

Section 31. Appeals to the Appellate Board

(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made there under, may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal.

(2) No appeal shall be admitted if it is preferred after the expiry of the period specified under sub-section (1): Provided that an appeal may be admitted after the expiry of the period specified therefore, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.

(3) An appeal to the Appellate Board shall be in the prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the order or decision appealed against and such fees as may be prescribed.

Section 32. Bar of jurisdiction of courts, etc.

No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (1) of section 31.

Section 33. Procedure of the Appellate Board

The provisions of sub-sections (2), (3), (4), (5), (6) of section 84, section 87,section 92, section 95 and section 96 of the Trade Marks Act, 1999, shall apply to the Appellate Board in the discharge of its functions under this Act as they apply to it in the discharge of its functions under the Trade Marks Act, 1999.

Section 34. Procedure for application for rectification etc., before Appellate Board

 (1) An application for rectification of the register made to the Appellate Board under section 27 shall be in such form as may be prescribed.
(2) A certified copy of every order or judgment of the Appellate Board relating to a registered geographical indication under this Act shall be communicated to the Registrar by the Appellate Board and the Registrar shall give effect to the order of the Board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

Section 35. Appearance of Registrar in legal proceedings

(1) The Registrar shall have the right to appear and be heard –

 (a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Geographical Indications Registry is raised;

(b) in any appeal to the Board from an order of the Registrar on an application for registration of a geographical indication or authorised user –

(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or

 (ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest, and the Registrar shall appear in any case if so directed by the Board.

(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision given by him affecting it, or of the practice of the Geographical Indications Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.

Section 36. Costs of Registrar in proceedings Before Appellate Board

In all proceedings under this Act before the Appellate Board the costs of the Registrar shall be in the discretion of the Board, but the Registrar shall not be ordered to pay the costs of any of the parties.

Chapter VIII – Offences, Penalties and Procedure

Section 37. Meaning of applying geographical indications

(1) A person shall be deemed to apply a geographical indication to goods who-

 (a) applies it to the goods themselves; or

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or

 (c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a geographical
indication has been applied; or

 (d) uses a geographical indication in any manner reasonably likely to lead to the belief that the goods in connection with which it is used are designated or described by that geographical indication; or

 (e) in relation to the goods uses a geographical indication in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial documents and goods are delivered to a person in pursuance of a request or order made by reference to the geographical indication as so used.

(2) A geographical indication shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.

Section 38. Falsifying and falsely applying geographical indications

(1) A person shall be deemed to falsify a geographical indication who, either, _

(a) without the assent of the authorised user of the geographical indication makes that geographical indication or deceptively similar geographical indication; or

(b) falsifies any genuine geographical indication, whether by alteration, addition, effacement or otherwise.

 (2) A person shall be deemed to falsely apply to goods a geographical indication who, without the assent of the authorised user of the geographical indication,-

 (a) applies such geographical indication or a deceptively similar geographical indication to goods or any package containing goods;

(b) uses any package bearing a geographical indication which is identical with or deceptively similar to the geographical indication of such authorised user, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the authorised user of the geographical indication.

(3) Any geographical indication falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false geographical indication.

 (4) In any prosecution for falsifying a geographical indication or falsely applying a geographical indication to goods, the burden of proving the assent of proprietor shall lie on the accused.

Section 39. Penalty for applying false geographical indications

Any person who, –

(a) falsifies any geographical indication; or

(b) falsely applies to goods any geographical indication; or

(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a geographical indication; or

(d) applies to any goods to which an indication of the country or place in which they were made or produced or the name and the address of the manufacturer or person for whom the goods are manufactured is required to be applied under section 71, a false indication of such country, place, name or address; or

(e) tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under Section 72; or

(f) causes any of the things above-mentioned in this section to be done, shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakhs rupees:

Provided that the court may, for adequate and special reasons to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.

Section 40. Penalty for selling goods to which false geographical indication is applied

Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things to which any false Geographical indication is applied or which, being required under section 71 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or without the indications so required, shall unless he proves,-

 (a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of commission of the alleged offence no reason to suspect the geniuses of the geographical indication or that any offence had been committed in respect of the goods; or

(b) that, on demand by or on behalf of the prosecutor , he gave all the information in his power with respect to the person from whom he obtained such goods or things; or

 (c) That otherwise he had acted innocently, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakhs rupees:

 Provided that the court may, for adequate and special reasons to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.

Section 41. Enhanced penalty on second or subsequent conviction

Whoever having already been convicted of an offence under section 39 or section 40 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees:

Provided that the court may, for adequate and special reason to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees:

 Provided further that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.

Section 42. Penalty for falsely representing a Geographical indication as registered

(1) No person shall make any representation-

(a) with respect to a geographical indication, not being a registered geographical indication, to the effect that it is a registered geographical indication; or

 (b) to the effect that a registered geographical indication is registered in respect of any goods in respect of which it is not in fact registered ; or

(c) to the effect that registration of a geographical indication gives an exclusive right to the use thereof in any circumstances in which having regard to limitation entered on the register, the registration does not in fact give that right.

(2) If any person contravenes any of the provisions of sub-section (1), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.

 (3) For the purposes of this section the use in India in relation to a geographical indication of the words “registered geographical indication” or any other expression, symbol or sign like “R.G.I.” referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except-

(a) where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference to registration as a geographical indication under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or

 (b) where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a); or

(c) Where that word is used in relation to a geographical indication registered under the law of a country outside India and in relation solely to goods to be exported to that country for use in that country.

Section 43. Penalty for improperly describing a place of business as connected with the Geographical Indications Registry

If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Geographical Indications Registry, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Section 44. Penalty for falsification of entries in the register

If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Section 45. No offence in certain cases

The provisions of sections 39, 40 and 41 shall in relation to a registered geographical indication or authorised user of such geographical indication, be subject to the rights created or recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections if,-

(a) the alleged offence relates to a registered geographical indication and the act or omission is permitted under this Act; and

(b) the alleged offence relates to a registered geographical indication and the act or omission is permitted under any other law for the time being in force.

Section 46. Forfeiture of goods

(1) Where a person is convicted of an offence under section 39 or section 40 or section 41 or is acquitted of an offence under section 39 or section 40 on proof that he acted without intend or defraud, or under section 40 on proof of the maters specified in clauses (a) or clause (b) or clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed, or but for such proof as aforesaid would have been committed.

 (2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.

 (3) When, a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thirty days from the date of the direction, to the court to which in appealable cases appeal lie from sentences of the court which directed the forfeiture.

 (4) When forfeiture is directed on a conviction, the court, before whom the person is convicted, may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.

Section 47. Exemption of certain persons employed in ordinary course of business

 Where a person accused of an offence under section 39 proves,-

(a) that in the ordinary course of his business he is employed on behalf of other persons to apply geographical indications, or as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making, geographical indications;

 b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other things by way of profit or commission depend on the sale of such goods;

 (c) that, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the geographical indication; and

(d) that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the geographical indication was applied, he shall be acquitted.

Section 48. Procedure where invalidity of registration is pleaded by the accused

 (1) Where the offence charged under section 39 or section 40 or section 41 is in relation to a registered geographical indication and the accused pleads that the registration of the geographical indication is invalid, the following procedure shall be followed:-

 (a) if the court is satisfied that such defence is prima facie tenable, it shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the Appellate Board under this Act, for the rectification of the register on the ground that the registration is invalid;

 (b) if the accused proves to the court that he has made such application within the time so limited or within such further time as the court may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification;

(c) if within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the Appellate Board for rectification of the register, the court shall proceed with the case as if the registration were valid.

 (2) Where before the institution of a complaint of an offence referred to in sub section (1), any application for the rectification of the register concerning the geographical indication in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his geographical indication.

 Section 49. Offences by companies

(1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

 Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

 (2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of, any director, manager, secretary or the officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

 Explanation.- For the purpose of this section,-

(a) “company” means any body corporate and includes a firm or other association of individuals; and

 (b) “director”, in relation to a firm, means a partner in the firm

Section 50. Cognizance of certain offences and the powers of police officer for search and seizure

(1) No court shall take cognizance of an offence under section 42 or section 43 or section 44 except on complaint in writing made by the Registrar or any officer authorised by him in writing:

 Providing that in relation to clause (b) of subsection (1) of section 42, a court shall take a cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a registered geographical indication has been represented as registered in respect of any goods in respect of which it is not in fact registered.

(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.

(3) The offences under Section 39 or section 40 or section 41 shall be cognizable.

(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he satisfied that any of the offences referred to in sub-section(3) has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as practicable, be produced before the Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:

 Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on the facts involved in the offence relating to geographical indication and shall abide by the opinion so obtained.

(5) Any person having an interest in any article seized under sub-section(4), may, within fifteen days of such seizure, make an application to the Metropolitan Magistrate, as the case may be, for such article being restored to him and the Magistrate, after hearing the application and the prosecution, shall make such order on the application as he may deem fit.

Section 51. Costs of defence of prosecution

In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deemed reasonable having regard to all the circumstances of the case and the conduct of the parties and the costs so awarded shall be recoverable as if they were a fine.

Section 52. Limitation of prosecution

No prosecution for an offence Under this Act shall be commenced after the expiration of three years next after the commission of the offence charged or two years after the discovery thereof by the prosecutor, whichever expiration first happens.

Section 53. Information as to commission of offence

An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.

Section 54. Punishment for abatement in India of acts done out of India

If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in that place the act which he abetted.

Chapter IX – Miscellaneous

Section 55. 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.

Section 56. Certain persons to be public servants

Every person appointed under this Act shall be deemed to be a public servant within the meaning of section 21 of the Indian Penal Code.

Section 57. Stay of proceedings where the validity of registration of the geographical indication is questioned, etc.,

(1) where in any suit for infringement of a geographical indication the defendant pleads that registration of the geographical indication relating to plaintiff is invalid, the court trying the suit (hereinafter referred to as the court), shall,-

(a) if any proceedings for rectification of the register to the geographical indication relating to plaintiff or defendant are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of
such proceedings;

(b) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the geographical indication relating to plaintiff or defendant 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 Judicial Magistrate of the first class or 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) 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 geographical indication 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 geographical indication.

(5) The stay of a suit for the infringement of a geographical indication 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 attaching any property), during the period of the stray of the suit.

Section 58. Application for rectification of register be made to Appellate Board in certain cases

 (1) Where in a suit for infringement of a registered geographical indication the validity of the registration of the geographical indication relating to plaintiff is questioned by the defendant or where in any such suit the plaintiff questions the validity of the registration of the geographical indication relating to defendant, the issue as to the validity of the registration of the geographical indication concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 27, 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 27, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the appellate Board.

Section 59. Implied warranty on sale of indicated goods

Where a geographical indication has been applied to the goods on sale or in the contract for sale of any goods, the seller shall be deemed to warrant that the geographical indication is a genuine geographical indication and not falsely applied, 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 on contract to and accepted by the buyer.

Section 60. 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 witness;

(b)the Registrar may, subject to any rules made in this behalf under section 87, make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a civil court;

(c) The Registrar may, on an application made in the prescribed manner, review his own decision.

Section 61. Exercise of discretionary power by Registrar

Subject to the provisions of section 64, 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.

 Section 62. 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.

Section 63. 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 this 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.

Section 64. 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 the 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.

Section 65. Abandoned

 Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under 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.

Section 66. Suit for infringement, etc., to be instituted before district court

 (1) No suit,-

(a) for the infringement of a registered geographical indication; or

(b)relating to any right in a registered geographical indication; or

(c) for passing of arising out of the use by the defendant of any geographical indication which is identical with or deceptively similar to the geographical indication relating to the plaintiff, 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 authorised user.

Section 67. Relief in suit 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 66 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or account of profits, together with or without any order for the delivery- up of the infringing labels and indications 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) on account of profits in any case-

 (a) where in a suit for infringement the defendant satisfies the court-

(i) that at the time he commenced to use the geographical indication complained of in the suit he was unaware and had no reasonable ground for believing that the geographical indication of the plaintiff was on the register; and

(ii) that when he became aware of the existence and nature of the plaintiff’s right in the geographical indication, he forthwith ceased to use the geographical indication in relation to good in respect of which it was registered; or

(b) where in a suit for passing off, the defendant satisfies the court-

(i) that at the time he commenced to use the geographical indication complained of in the suit he was unaware and had no reasonable ground for believing that the geographical indication relating to the plaintiff was in use; and

 (ii) that when he became aware of the existence and nature of the geographical indication relating to the plaintiff he forthwith ceased to use the geographical indication complained of.

Section 68. Authorised user to be impleaded in certain proceedings

(1) In every proceeding under Chapter VI or under section 31, every authorised user of a geographical indication to which such proceeding relate, 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, an authorised 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 .

Section 69. 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 78 purporting to be certified by the Registrar and sealed with the seal of the Geographical Indications 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 he 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.

Section 70. Registrar and other officers not compellable to produce register, etc.,

 The Registrar or any officer of the Geographical Indications 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.

Section 71. 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 sectionn23 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 transshipment in or transit through India or otherwise.

Section 72. Certificate of validity

If in any legal proceedings for rectification of the register before the Appellate Board a decision is on contest given in favour of the registered proprietor or, as the case may be, authorised user of the geographical indication on the issue as to the validity of the registration of the geographical indication or the authorised user, 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 or the authorised user, as the case may be, on obtaining a final order or judgement in his favour affirming validity of the registration of the geographical indication or the authorised user, as the case may be, 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.

Section 73. Groundless threats of legal proceedings

(1) Where a person, by means of circulars, advertisement or otherwise, threatens a person with an action or proceeding for infringement of a geographical indication 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 authorised user of the geographical indication, 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 geographical indication is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the geographical indication.

(2) The last preceding sub-section does not apply if the registered proprietor of the geographical indication or an authorised user thereof with due diligence commences and prosecutes an action against the person threatened for infringement of the geographical indication.

(3) Nothing in this section shall render a legal practitioner or a registered geographical indications 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.

Section 74. 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.

Section 75. Trade usages, etc., to be taken into consideration

In any proceeding relating to a geographical indication, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant geographical indication legitimately used by other persons.

Section 76. 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 geographical indications agent, or

 (c) a person in the sole and regular employment of the principal.

Section 77. Indexes

 There shall be kept under the directions and supervision of the Registrar,-

 (a) an index of registered geographical indications,

(b) an index of geographical indications in respect of which applications for registration are pending,

(c) an index of the names of the proprietors of registered geographical indications, and

 (d) an index of the names of authorised users.

Section 78. Documents open to public inspection

(1) The following documents, subject to such conditions as may be prescribed, be open to public inspection at the Geographical Indications Registry, namely:-

(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 geographical indication, application for rectification before the Registrar, counterstatement thereto, and any affidavit or document filed by the parties in any proceedings before the Registrar;

 (c) the indexes mentioned in section 77; and

(d) such other documents as the Central Government may, by notification in the Official Gazette, specify:

Provided that where 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 fee as may be prescribed, obtain a certified copy of any entry in the register or any document referred to in sub-section(1).

Section 79. 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 this Act.

Section 80. Fees and surcharge

(1) There shall be paid in respect of applications and registrations 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 fee has been paid.

(3) Where a fee is payable in respect of the filing of a document at the Geographical Indications Registry, the document shall be deemed not to have been filed at the registry until the fee has been paid.

Section 81. Savings in respect of certain matters in Chapter VIII

Nothing in Chapter VIII 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) 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.

Section 82. Declarations as to title of geographical indication not registrable under the Registration Act,1908

 Notwithstanding anything contained in the Registration Act,1908, no document declaring or purporting to declare any title of a person to a geographical indication other than a registered geographical indication shall be registered under that Act.

Section 83. Government to be bound

The provisions of this Act shall be binding on the Government.

Section 84. 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 a country which is a member of a group of countries or union of countries or Inter- Governmental Organisations 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 Organisations to be a convention country or convention countries for the purposes of this Act.

(2) Nothing contained in this Act or the Trade Marks Act,1999 shall prevent a continued and similar use of geographical indication relating to a country or a country which is a member of a group of countries or union of countries or any Inter-Governmental Organisations, as the case may be, notified under sub-section(1) identifying wines or spirits in connection with goods by any citizen or domiciliary of such country who has used that geographical indication in continuous manner with regard to such goods or any goods relating to such goods, as the case may be, in any part of the territory of that country either-

(a) for at least ten years preceding the 15th day of April,1994; or

(b) in good faith preceding the date referred to in clause (a).

Section 85. Provisions as to reciprocity

Where any country or a country which is a member of a group of countries or union of countries or any 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 geographical indications as it accords to its own nationals, no nationals of such country or a country which is a member of a group of countries or union or countries or Inter-Governmental Organisations, as the case may be, shall be entitled-

 (a) to apply for the registration of, or be registered as the proprietor of geographical indications;

(b) to apply for registration or be registered as an authorised under of a geographical indication.

Section 86. Powers 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.

Section 87. 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:-

(a) the matters to be included in the Register of Geographical Indications under sub-section(1), and the safeguards to be observed in the maintenance of such register in computer floppies or diskettes under sub-section(2) of section6;

 (b) the manner of incorporation of particulars relating to registration of geographical indications in Part A under sub-section (2) and the manner of incorporation of particulars relating to the registration of the authorised users under sub-section(3) of section 7;

 (c) the classification of goods and the manner of publication of the alphabetical index of classification of goods and the definite territory or locality or region for the purpose of registration of geographical indications under sub-section(1) of section 8;

(d) the form in which and the manner in which an application for registration of a geographical indication may be made and the fees which may accompany the application under sub-section (1) and the particulars to be made in the statement of producers of goods who proposes to be initially registered with the registration under clause (f) of subsection (2) of section 11;

(e) the manner publication of advertisement of accepted application, for registration of geographical indications, etc., under sub-section(1), and the manner of notifying the corrections or amendments made in the application under sub-section(2) of section 13;

 (f) the manner in which and the fee which may accompany an application and the manner of giving notice under sub-section(1) and the manner of sending counter statement under sub-section (2) and the manner of submissions of evidence and the time therefore under sub-section(4) of section 14;

(g) the form of certificate of registration under subsection (2) and the manner of giving notice to the applicant under sub-section(3) of section 16;

(h) the manner of applying for registration as an authorised user under sub-section(1) and the manner of submitting statements and documents along with such application and the fee which may accompany such application under sub-section(2) of section 17;

 (i) the manner of making application, the time within which such application is to be made and the fee payable with each application, under sub-section (3) and the time within which the Registrar shall send notice and the manner of such notice under subsection (4) and the form in which and the fee which may accompany an application for renewal to be made under sub-section(5) of section 18;

(j) the manner of making applications under sub-sections (1) and (2) the manner of giving notice under subsection (4) and the manner of service of notice of rectification under sub-section (5) of section 27;

(k) the manner of making an application for correction, etc., under section 28;

 (l) the manner of making an application under subsection (1), the manner of advertising an application under sub-section (1), the time and manner of notice by which an application may be opposed under subsection (2)and (3) of section 29;

(m) the manner of advertisement under sub-section(2) of section 30;

(n) the form of making an appeal, the manner of verification and the fee payable under sub-section(3) of section 31;

(o) the form in which an application for rectification shall be made, under sub-section (1) of section 34;

(p) the manner of making an application for review under clause (c) of section 60;

(q) the time within which an application is to be made to the Registrar for exercising his discretionary power under Section 61;

(r) the manner of making an application and the fee payable therefore under sub-section(1) of section 64;

(s) the manner of authorising any person to act and the manner of registration of a geographical indications agent under section 76;

(t) the fee and surcharge payable for applications and registrations and other matters under sub-section(1) of section 80;

(u) any other matter which is required to be, or may be, prescribed.

(3) 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.

Bydeb

The Designs Rules, 2001

Preliminary

MINISTRY OF COMMERCE & INDUSTRY

(DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION)

NOTIFICATION

New Delhi, Dated: The 11th May, 2001

S.O. 414 (E)……….. In exercise of the powers conferred by sub-section (3) of section 1 of the Design Act, 2000 (16 of 2000), the Central Government hereby appoints the 11th day of May, 2001 as the date on which the said Act shall come into force.

S.O.(E)………… whereas a draft of Design Rules was published as required by sub-section (3) of section 47 of the Design Act, 2000 (16 of 2000), by the notification of the Government of India, Ministry of Commerce and Industry No.S.O.1069 (E) dated 29th November, 2000 at pages 56 to 115 of the Gazette of India, Extraordinary, Part II, section 3, sub-section (ii) dated the 29th November, 2000;

And whereas, objections and suggestions were invited till the 4th January, 2001 from all persons likely to be affected thereby;

And whereas, the draft of the Design Rules was made available to the public on the 4thDecember, 2000 through the said Gazette dated November 29, 2000;

And whereas, the objections and suggestions received from the public with respect to the said draft Rules have been considered by the Central Government;

Now, therefore, in exercise of the powers conferred by section 47 of the Design Act, 2000 (16 of 2000), the Central Government hereby makes the following rules, namely:-

Section 1. Short title and commencement

(1) These rules may be called the Designs Rules, 2001.
(2) They shall come into force on the date of their publication in the Official Gazette.

Section 2. Definitions

In these rules, unless there is anything repugnant in the subject or context,-

(a) “Act” means the Designs Act, 2000

(b) “Application in United Kingdom or convention country or group of countries or intergovernmental organisation” means an application made by any person in any part of United Kingdom or convention country or group of countries or inter-governmental organisation, of a design for the protection in India under the provisions of section 44 of the Act.

(c) “Office” means the Patent Office referred to in section 74 of the Patent Act, 1970 (39 of 1970)

(d) “Reciprocity Application” means an application in India under section 44 of the Act.

(e) “Set” means a number of articles of the same general character ordinarily sold together or intended to be used together, all bearing the same design, with or without modification not sufficient to alter the character or substantially to affect the identity thereof.

Section 3. Leaving and serving documents

(1)Any application, notice or other document authorised or required to be filed, left, made or given at the Office, or to the Controller or to any other person under the Act or these rules, may be sent by hand or by a prepaid letter through the post or registered post or speed post or courier service, and, if sent by a prepaid letter or registered post or speed post or courier service, shall be deemed to have been filed, left, made or given at the time when the letter containing the same would be delivered in the ordinary course of mail ,and in proving such sending, it shall be sufficient to prove that the letter was properly addressed and mailed. If the documents sent through tele-fax/e-mail, are clear and fully legible, they shall also be accepted provided that original documents corresponding to the one sent by tele-fax/e-mail is submitted to the office within fifteen days from the date of receipt of the documents so faxed/e-mailed.

(2) Any written communication addressed to a registered proprietor of a design at his address as it appears on the Register of Designs, or at his address for service, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the application or notice of opposition, or given for service, as hereinafter provided, shall be deemed to be properly addressed.

(3) Any application for registration of design, application for extension of copyright, petition for cancellation of registration of design and application for rectification of Register of Design along with the prescribed fees authorized or required may be filed, left, made or given to the branch offices also by the applicant.

(4) The branch offices shall transmit such applications or documents along with the fees to the Head Office of the Patent Office for processing and prosecuting the same.

 Section 4. Address for Service

Every applicant or opponent in any proceeding under the Act or these rules, and every person who shall hereafter become a registered proprietor of a design, shall give an address for service in India and such address may be treated, for all purpose connected with the design as the actual address of such applicant, opponent, registered proprietor. Unless such an address is given, the Controller shall be under no obligation either to proceed with the application or the opposition, or to send any notice that may be required by the Act or rules framed there under:

Provided that such address for service may include e-mail or digital address of the agent/applicant.

Section 5. Fees

(1) The fees to be paid in respect of the registration of designs, and application therefor, and in respect of other matters, with relation to Designs Act and rules framed there under, shall be those as specified in the First Schedule of the rules.

(2) (a) Fees may be paid in cash at the office, or the same may be paid by Cheque or Demand Draft on a scheduled bank payable to the Controller at Calcutta and if sent through the post or registered post or speed post or courier service shall be deemed to have been paid at the time when properly addressed and prepaid letter containing the cheque would be delivered in the ordinary course of mail.

(b) Cheques or Demand Drafts not carrying the correct amount of commission, and cheques or demand drafts on which the full value specified therein cannot be collected in cash within the time allowed for payment of the fee, shall be accepted only at the discretion of the Controller.

(c) Stamps and Indian postal order shall not be accepted in payment of fees.

(d) Subject to the approval of the competent authority any applicant or an agent may deposit money in advance once in a financial year and request the Controller to realise any fee payable by him from the said deposit and in such case date of the receipt of the request to realise the fee or the date on which the request to realise the fee is deemed to have been received, which ever is earlier, shall be taken as date of payment of fee:

Provided that the requisite amount of money is available at the credit of the person making the request.

Section 6. Forms

(1) The forms set forth in the Second Schedule, with such variations, as the circumstances of each case require, shall be used for the purposes mentioned therein.

(2) When no form is so specified for any purpose, the applicant may adopt any form specified in the Second Schedule with such modification and variation as the controller may permit.

THE SECOND SCHEDULE

(See rule 6)

List of forms

Form No.Section or RuleTitle
1Sections 5 and 44Application for registration of design/Application under reciprocal arrangement.
2Section 8(1)Claim to proceed as an applicant or joint applicant.
3Section 11(2)Application for Extension of copyright.
4Section 12(2)Application for Restoration of lapsed design
5Section 17(1)Inspection of registered design
6Section 18Request for information when registration number is given.
7Section 18Request for information when registration number is not given.
8Section 19Petition to cancel registration of design.
9Section 21Notice of intended exhibition or publication of unregistered design.
10Section 30(3)Application for registration of a document in the Register Design.
11Section 30Application for entry of name of proprietor or part proprietor in the Register
12Section 30Application for entry of mortgage or licence in the Register.
13Section 30 and rule 37Application for entry of notification of a document in the Register.
14Section 29Request for correction of clerical error.
15Section 26 and rule 41Request for certificate.
16Section 17(2)Application for certified copy of registered design.
17Section 31Application for rectification of Register.
18rule 15Application for extension of time for filing priority document.
19rule 40Notice of opposition.
20rules 29 and 40Notice of intention to attend hearing.
21Section 43Power of authority to agents.
22rule 31Request to alter name or address or address for service in Register
23Section 10Request for entries of two addresses in theRegister

Section 7. Size, etc., of documents

(1) All documents and copies of documents except drawings or representation, sent to or filed, left at the Office or otherwise furnished to the Controller shall be written, typewritten, lithographed, or printed in the English/Hindi language (unless otherwise directed), in large and legible character with deep permanent ink upon one side only of strong white paper of A4 size with a margin of at least one inch and a half or four centimeters on the left hand part thereof. Signatures thereto shall be written in a large and legible hand and any signature which is not legible or
which is written in a script other than English shall be accompanied by a transcription of the name in English in block letters.

(2) Additional copies of documents shall be filed at the Office, if at any time required by the Controller.

(3) Names and addresses of applicants and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for identification.

Section 8. Signature and verification of documents specified in sections 5, 12, 19 and 37

The documents specified in sections 5,12,19 and 37 of the Act shall be dated and signed at the foot, and shall contain a statement that the facts and matters stated therein are true to the best of the knowledge, information and belief of the person signing them.

Section 9. Agency

For all matters falling under the provisions of section 43 of the Act, applicant may, unless otherwise directed by the Controller, authorize under his personal signature, any person specified in section 43 to act as his agent and to receive all notices, requisitions and communications. The authority may be given in Form- 21.

Section 10. Classification of Goods

(1) For the purposes of the registration of designs and of these rules, article shall be classified as specified in the Third Schedule hereto.

(2) If any doubt arises as to the class to which any particular description of article belongs, it shall be determined by the Controller in consultation with the applicant wherever required.

Application for Registration

Section 11. Application

(1) An application under section 5 of the Act for the registration of a design shall be accompanied by four copies of the representation of the design and the application and each of copy of the representation of the design shall be dated and signed by the applicant or his agent.

(2) The application shall state the class in which the design is to be registered, and the article or articles to which the design is to be applied.

(3) If it is desired to register the same design in more than one class of article, a separate application shall be made in each class of article and the application shall contain the number or numbers of the registration or registrations already effected.

(4) If so required by the Controller, the applicant shall state purpose for which the article is used.

Section 12. Statement of novelty

The applicant may, and shall, if required by the Controller in any case so to do, endorse on the application and each of the representation a brief statement of the novelty he claims for his design.

Section 13. Additional copies of representation or specimens

If the controller in any case so requires, the applicant shall supply one or more representations or specimens of the design in addition to those supplied with the application.

Section 14. Representation

(1)The four copies of the design required by rule 11 shall be exactly similar
drawings, photographs, tracings or other representations of the design or shall be specimens of the design.

(2) When a design is to be applied to a set, each representation accompanying the application shall show all the various arrangements in which it is proposed to apply the design to the articles included in the set.

(3) Each representation of the design whether to be applied to a single article or to a set, shall be on durable paper of A4 size (and not on cardboard) and shall appear on one side only of the paper. The figure or figures shall be placed in an upright position on the sheet. When more figures than one are shown, these shall , where possible, be on one and the same sheet, and each shall be designated (e.g. perspective view; front view, side view).

(4) When a design is to be applied to a set, any doubt whether the given articles do or do not constitute a set shall be determined by the controller.

(5) If the specimens are not, in the opinion of the Controller, suitable for record in the office they shall be replaced by representations.

(6) Where words, letters or numerals are not of the essence of the design, they shall be removed from the representations or specimens; where they are of the essence of the design, the Controller may require the insertion of a disclaimer of any right to their exclusive use.

(7) Each representation of a design, which consists of a repeating surface pattern, shall show the complete pattern and a sufficient portion of the repeat in length and width, and shall not be of less size than 5 by 4 inches or 13.00 centimeters by 10.00 centimeters.

(8) If the name or representations of living persons appear on a design the Controller shall, if he so requires, be furnished with consents from such persons before proceeding to register the design. In the case of deceased person, the Controller may call for consent from the legal representative before proceeding with registration of the design on which the names or representations appear.

Section 15. Reciprocity application for the registration of a design

(1) Every reciprocity application for the registration of a design shall contain a statement that an application in United Kingdom or convention country or group of countries or inter-governmental organisation has been made for the protection of the design to which such reciprocity application relates and shall specify convention country or group of countries or inter-governmental organisation in which any such application has been made and the official date or dates thereof respectively. The application shall be made within six months from the date of the first application in United Kingdom or convention country or group of countries or inter-governmental organisation by the person by whom such application in United Kingdom or convention country or group of countries or inter-governmental organisation was made, or by the legal representative or assignee of the person either alone or jointly with any other person.

(2) In addition to the four copies of the representations of the design filed or left with every reciprocity application for the registration of a design, a copy of the design filed or deposited by the applicant or his predecessor in title as the case may be, in respect of the first application in United Kingdom or convention country or group of countries or inter-governmental organization, duly certified by the Official Chief or Head of the organization in which it was filed, or deposited or otherwise verified to the satisfaction of the Controller, shall be filed or left at the office at the same time as the reciprocity application or within such further time not exceeding three months as the Controller may allow.

(3) Save as aforesaid and as provided by rule 30 all proceedings in connection with a reciprocity application shall be taken within the time and in the manner required by the Act or prescribed by these rules for ordinary application.

Section 16. Manner in which a claim under sub-section (1) of section 8(1) shall be made

(1) A claim under sub-section (1) of section 8 shall be made in Form-2.

(2) The original assignment or agreement or other document affecting right,title or interest in the application or an official or notarially certified copy thereof shall also be furnished for the Controller’s inspection and the Controller may call for such other proof of title or written consent as he may require.

Section 17. Acceptance

Upon receipt of an application for registration, the Controller may accept it,if he considers that there is no lawful objection in the report of examiner to the design being registered.

Section 18. Objections

(1) If on consideration of the report of the examiner on the application referred under sub-section (1) of section 5, any objection appear to the Controller is adverse to the applicant or requires any amendment of the application, a statement of such objections shall be sent to the applicant or his agent in writing, and unless within three months from the date of official
communication of objection the applicant or his agent removes the objection or applies for hearing, the applicant shall be deemed to have withdrawn his application:

Provided that the period for removal of the objection shall not exceed the time period of six months from the date of filing of the application.

(2) If the applicant or his agent applies for a hearing under sub-rule (1) within a period of three month from the date of communication of the statement of objections or if the Controller considers it desirable to do so, whether or not the applicant has refiled his application, fix a date for hearing having regard to the time remaining for completion of the application as provided under rule 21.

(3) When a hearing has been fixed under sub-rule (2) the applicant shall be given at least 10 days notice of such fixation or such shorter notice as appear to the Controller to be reasonable in the circumstances of the case and applicant shall as soon as possible notify the Controller whether he shall attend the hearing.

(4) Hearing, as required under sub-rules (1), (2) and (3) may be allowed whenever possible on phone followed by detailed submission on tele-fax/e-mail.

(5) After hearing the applicant or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may register or refuse to register the design as he thinks fit.

 Section 19. Decision of Controller

The decision of the Controller containing the grounds and materials used by him in arriving the decision at such hearing as aforesaid shall be communicated in writing to the applicant or his agent.

 Section 20. Date for appeal

The date on which the decision of the Controller is dispatched shall be deemed to be the date of the Controller’s decision for the purpose of appeal.

Section 21. Non-completion within six months

An application which owing to any neglect or default of the applicant, has not been completed so as to enable registration to be effected within six months from the date of application, shall be deemed to be abandoned.

Section 22. Publication of the particulars of registered design under section 7

On acceptance of the design filed in respect of an application, the Controller shall direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the Official Gazette. When publishing in the Gazette, the Controller may select one or more views of the representation of the design, which, in his opinion, would depict the design best.

Section 23. Manner of making an application under sub-section (2) of section 11

An application under subsection (2) of section 11 shall be made in Form -3.

Section 24. Restoration of Designs

(1)An application for the restoration of a design under section 12 shall be made in Form – 4.

(2) Upon consideration of the application and the evidence adduced by the proprietor of the design, if any, if the Controller is satisfied that a prime facie case for the restoration of the design has not been made out he shall intimate the proprietor of the design accordingly, and unless within one month from the date of such intimation the proprietor requests to be heard in the matter, the Controller shall refuse the application.

(3) If the registered proprietor requests for hearing within the time allowed and the Controller after giving the register proprietor such a hearing, is prima facie satisfied that the failure to pay the fee for extension of copy right was unintentional, he shall allow the application for restoration.

Section 25. Payment of unpaid extension fee

(1) If the Controller decides in favour of the registered proprietor of the design, the proprietor shall pay the unpaid fees for the extension of copyright and additional fee specified in the First Schedule, within a month from the date of the order of the Controller allowing the proprietor for restoration of the deisign.

(2) The Controller shall advertise in the Official Gazette his decision on the application for restoration.

 Marking of Articles

Section 26. Marking of articles before delivery on sale

Before delivery on sale of any article to which a registered design has been applied, the proprietor of such design shall cause each such article to be marked with the word REGISTERED or with the abbreviation REGD., or with the abbreviation RD, as he may choose, and also (except in the case of articles made of soft or brittle in nature to which have been applied designs registered in different classes of articles) with the number appearing on the certificate of registration:

Provided that the requirements of this rule and clause (b) of sub-section (1) of section 15 of the Act shall be dispensed with as regards-

(i) textile goods in which the design is printed or woven, other than handkerchiefs; and

(ii) articles made of charcoal dust, which are brittle and which are not sold in single pieces.

Inspections and Searches

Section 27. Inspection of designs

Registered designs shall be open to public inspection after the notification of the said design in Official Gazette and the application together with representation of the design may be inspected on a request made in Form – 5.

Section 28. Search under section 18

(1) Request for information as specified in section 18 of the Act may be made by any person in Form 6 with the fee as specified in the Schedule of fees and shall contain the registration number of the design for which information is required.

(2) If the applicant is unable to furnish the registration number of the design, he shall lodge with the Controller, in Form 7 together with such information as is in his possession, and the Controller shall thereupon cause search to be made in the class indicated therein as much as be possible on the information supplied, and shall furnish such information as may be obtainable. Where Form 7 is accompanied by a representation or specimen of the design, such representation or specimen shall be furnished in duplicate.

Cancellation

Section 29. Cancellation of registration of designs under section 19

(1) A petition to the Controller for the cancellation of the registration of a design shall be made in duplicate in Form – 8 and shall be accompanied by a statement in duplicate setting out the nature of the applicant’s interest and the facts upon which he bases his application.

(2) If the petition for the cancellation of the registration of a design is made by person who is not the registered proprietor, a copy of the petition along with the statement shall be transmitted by the Controller to the registered proprietor.

(3) If the registered proprietor intends to oppose the application he shall within a time to be specified by the Controller, leave at the office a counter statement setting out the grounds on which he intends to oppose the application and shall, within the same time, deliver to the applicant a copy of the counter-statement.

(4) The applicant may, after delivery to him of the copy of the registered proprietor’s counterstatement, leave at the office, evidence by way of affidavits in support of his case and shall also deliver to the registered proprietor a copy thereof.

(5) The registered proprietor may, after delivery to him of the applicant’s evidence, leave at the office evidence by way of affidavits in support of his case and shall also deliver to the applicant a copy thereof.

(6) The applicant may, after delivery to him of a copy of the registered proprietor’s evidence, leave at the Office evidence in reply by way of affidavits and shall also deliver to the registered proprietor a copy of such evidence.

(7) No further statement of evidence shall be left by either party except by leave of or on requisition by the Controller.

(8) Where a document is in a language other than English and is referred to in any statement or evidence filed in connection with an petition under section 19 or opposition thereto, an attested translation thereof in English shall be furnished in duplicate.

(9) The time allowed for filling the counter-statement or for leaving evidence shall ordinarily be one month which may be extended only by a special order of the Controller given on a petition made by party seeking extension of time:

Provided that the extension so granted shall in no case exceed three months in aggregate.

(10) On completion of the filing of the statement and the evidence referred to sub-rules (3) to (8) or at such other time as he may decide, the Controller shall appoint a hearing of the petition for cancellation and shall give the parties not less than ten days’ notice of such hearing.

(11) If either party desires to be heard, he shall give to the Controller a notice in Form 20 of his intention to attend the hearing.

(12) If, at the hearing, either party intends to refer to any publication, he shall give to the Controller and to the other party not less than five days’ notice of such intention, together with the details of the publication to which he intends to refer.

(13) After hearing the party or parties desirous of being heard or without a hearing, if neither party desires to be heard or attends the hearing, the Controller shall decide on the petition and the opposition, if any, and notify his decision to the parties.

General – Register of Designs

Section 30. Registering designs

(1)When a design is accepted, there shall be entered in the Register of Design, in addition to the particulars required by the Act, the number of the design, the class in which it is registered, the date of filling the application for registration in this country, the reciprocity date, if any, claim for the registration, and such other matters as would effect the validity or proprietorship of the design.

(2) When such Register of Design is maintained wholly or partly on computer under floppies or diskettes, such computer floppies or diskettes shall be maintained under superintendence and control of Controller and in case of any dispute or doubt with regard to information of designs, the information as contained in the backup file or master file shall be final.

(3)Where the accepted design is one in respect of which a reciprocity date has been allowed, the registration, the extension or the expiration of the copyright in the said design shall be reckoned from such reciprocity date.

Section 31. Alteration of address

A proprietor of a registered design may make a request in Form 22 to the Controller for alteration of his name, or address, or addresses for service, in the Register of Design. The Controller may require such proof of alteration so requested as he may think fit before acting on the request and on satisfaction, the Controller shall cause the Register to be altered accordingly.

Section 32. Registration of documents under sub-section (3) of section 30

An application referred to in subsection (3) of section 30 shall be made in Form- 10.

Section 33. Application for entry of subsequent proprietorship

An application referred to in sub-section (1) or (2) of the section 30 shall be made to the Controller in Form 11 or 12 or 13 as the case may be.

Section 34. Particulars in applications

An application under rule 33 shall contain the name, address and nationality of the person claiming to be entitled, together with full particulars of the instrument, if any, under which he claims.

Section 35. Production of documents of title and other proof

Every assignment, and every other document containing, giving effect to or being evidence of the transmission of copyright in a registered design or affecting the proprietorship thereof or creating an interest therein as claimed in application under rule 33 shall unless the Controller otherwise directs, be presented to him either in original, or notarially certified true copy together with the application and he may call for such other proof of title or written consent as he may require for his satisfaction:

Provided that in the case of a document which is a public document, an official or certified copy thereof may be presented.

Section 36. Form of entry

The entry to be made in the Register on request under rule 34 shall be in the following form :-

“In pursuance of an application received on the

[…………………………………………………………]

Registered asProprietors
Licensees
Mortgagees
etc.
By virtue ofAssignment
Licence
Mortgage deed
etc.

dated _________________ and made between ________________

of the one part and _______________of the other part.

Section 37. Entry of notification of documents

An application for entry in the Register of Design of notification of any document (not already provided for), purporting to affect the proprietorship of a registered design, shall be accompanied by an attested copy of the document, the accuracy of such copy being certified as the Controller may direct, and the original or notarially certified true copy of the document shall at the same time be produced and left at the Office if required for further verification.

Section 38. Hours of inspection of Register

The Register of Designs shall be open to the inspection of the public at all times on which the Office is open to the public, except at times when they are required for actual official use.

Section 39. Rectification of Register

If an application is made for the rectification of the Register of Design under section 31 of the Act, the Controller shall notify all persons whose names, at the time of the application are entered on the Register as claiming an interest in the design, and shall advertise the application in the Official Gazette.

Section 40. Opposition to rectification

(1) Notice of opposition to any rectification of the Register of Design may be given within three months of the advertisement of the application for rectification.

(2) The opponent shall, within fourteen days of giving notice of opposition, leave at the office his written statement in duplicate setting out the nature of his interest, the facts upon which he bases his opposition and the relief, which he seeks.

(3) The Controller shall furnish the applicant with a copy each of the notice of opposition and the written statement.

(4)The procedure specified in sub-rules (4) to (13) for rule 29 relating to leaving evidence and hearing shall, so far as may be, apply to the hearing of the application under section 31 as they apply to the hearing of a petition under section 19.

Certificates

Section 41. Certified copies of documents

Certified copies of an entry in the Register of Design or certified copies of, or extracts from disclaimers, affidavits, declarations and other public documents in the Office, or from Register and other records, shall be furnished by the Controller on payment of the prescribed fee.

Section 42. Form etc. of affidavits

(1) The affidavits required by the Act and these rules, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, shall be drawn up in the first person, and shall be divided into paragraphs consecutively numbered; and each paragraph shall, as far as possible, be confined to one subject. Every affidavit shall state the description and true place of abode of the person making the same, shall bear the name and address of the person leaving it and shall state on whose behalf it is left.

(2) Affidavits shall be confined to such facts as the deponent is able of his own knowledge to prove, except on interlocutory applications, on which statements of his belief may be admitted, provided that the grounds thereof are stated.

(3) Affidavits shall be sworn to as follows :-

(a) In India, before any court or person having by law authority to receive evidence, or before any officer empowered by such court or person as aforesaid to administer oaths or to take affidavits;

(b) In any country or place outside India, – before a diplomatic or consular office, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 (41 of 1948) in such country of place or before a notary of the country or place, recognized by the Central Government under section 14 of the Notaries Act, 1952 (53 of 1952), or before a judge or magistrate of the country of place.

(4) The person before whom an affidavit is sworn shall state the date on which and the place where the same is sworn to and shall affix thereto his seal, if any, or the seal of the court if the affidavit is sworn to before the court or an officer empowered by that court and signed his name and state his designation and address at the end thereof.

(5) Any affidavit purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized under sub-rule (3), in testimony of the affidavit having been sworn to before him, may be admitted by the Controller without proof the genuineness of the seal or signature, or of the official position of that person.

(6) Alterations and interlineations shall, before an affidavit is sworn to or affirmed be authenticated by the initials of the person before whom the affidavit is sworn to.

(7) Where the deponent is illiterate, blind or unacquainted with the language in which the affidavit is written, a certificate by the person before whom the affidavit is sworn to, the effect that the affidavit was read, translated or explained in his presence to the deponent, and the deponent seemed perfectly to understand it and has signed the affidavit or affixed his mark in his presence, shall be attached at the end of the affidavit.

(8) Every affidavit filed before the Controller in connection with any proceeding under the Act or these rules shall be duly stamped under the provision of any law for that time being in force.

Award of Cost by Controller

Section 43. Scale of Costs

In all proceedings before the Controller, the Controller may, save as otherwise expressly provided by the Act or these rules, award such costs as he considers reasonable, having regard to all circumstances of the case provided that the amount of costs awarded in respect of any matters set forth in the Fourth Schedule to these rules shall not exceed the amount therein specified.

Miscellaneous Powers of Controller

Section 44. Exercise of discretionary power of Controller, miscellaneous power of Controller

The time within which a person entitled under section 33 of the Act, to an opportunity of being heard shall exercise his option of requiring to be heard shall be one month from the date of a notice which the Controller shall give to such person or his agent before determining the matter with reference to which such person is entitled to be heard. If within that month such person or his agent requires to be heard, the Controller shall appoint a date for the hearing and shall give ten days notice thereof: Provided that if the giving of ten day’s notice would cause an application for the registration of design to be deemed to have been abandoned before the hearing, the Controller may curtail the period of notice.

Section 45. Controller may require statement

Whether an applicant or agent desires to be heard or not, the Controller may at any time require him to submit a statement in writing within a time to be notified by the Controller, or to attend before him and make explanations with respect to such matters as the Controller may require.

Section 46. General Power of amendment

Any document for the amending of which no special provision is made by the Act may be amended, and any irregularity in procedure which, in the opinion of the Controller, may be obviated without detriment to the interest of any person, may be corrected if the Controller thinks fit, and upon such terms as he may direct.

Section 47. General Power to enlarge time

The time prescribed by these rules for doing any act or taking any proceeding thereunder maybe enlarged by the Controller, if he thinks fit, and upon such terms as he may direct.

Repeal

Section 48. Repeal

The Designs Rules, 1933 are hereby repealed:

Provided that any application or other matter pending under those rules on the date of the coming into force of these rules shall be disposed of under those rules.

Schedule 1

THE FIRST SCHEDULE

See rule 5
FEES
No. of Entryon what payableNo. of FormFee (Rs.)
1.On application for registration of design under sections 5 and 44.11000.00
2.On claim under section 8(1) to proceed as an applicant or joint applicant.2500.00
3.On application for extension of copy right under section 11(2).32000.00
4.On application for restoration of lapsed design under section 12(2).41000.00
5.Additional fee for restoration.1000.00
6.Inspection of registered design under section 17(1).5500.00
7.On request for information of design when registration no. given under Section 18.6500.00
8.On request for information of design when registration no. not given.71000.00
9.On petition for cancellation of design under section 19.81500.00
10.Notice of intended exhibition or publication of an unregistered design under section 21.9500.00
11.Application for registration of a document in Register of Design under section 30(3), –10
in respect of one design.500.00
for each additional design.200.00
12.On application for entry of name of proprietor or part proprietor in Register of Design under section 30,-11
in respect of one design.500.00
for each additional design.200.00
13.On application for entry of mortgage or licence in Register of design under section 3012
in respect of one design.500.00
for each additional design.200.00
14.Application for entry of notification of a document in the Register of Design under section 30 and rule 37,-13
in respect of one design.500.00
for each additional design.200.00
15.On request for correction of clerical error under section 29.14500.00
16.On request for certificate under section 26 and rule 41.15500.00
17.On application for certified copy of registered design under section 17(2)16500.00
18.On application for rectification of Register of Design under section 31.17500.00
19.On application for extension of time for filing priority document under rule 15.18200.00(per. month)
20.On notice of opposition under rule 40.19100.00
21.Notice of intention to attend hearing under rules 29 and 40.20500.00
22.Form for authorisation of agent or other person.21
23.On request to alter name or address or address for Service in the Register of Design under rule 31.22200.00
24.On request for entries of two addresses in the Register of Design.23200.00
25.On petition under rule 46 for amendment of any document.500.00
26.On petition under rule 47 for enlargement of time.500.00
27.Inspection of Register of Design under rule 38 (in respect of each design).250.00

Schedule 2

THE SECOND SCHEDULE

(See rule 6)

List of forms

Form No.Section or RuleTitle
1Sections 5 and 44Application for registration of design/Application under reciprocal arrangement.
2Section 8(1)Claim to proceed as an applicant or joint applicant.
3Section 11(2)Application for Extension of copyright.
4Section 12(2)Application for Restoration of lapsed design
5Section 17(1)Inspection of registered design
6Section 18Request for information when registration number is given.
7Section 18Request for information when registration number is not given.
8Section 19Petition to cancel registration of design.
9Section 21Notice of intended exhibition or publication of unregistered design.
10Section 30(3)Application for registration of a document in the Register Design.
11Section 30Application for entry of name of proprietor or part proprietor in the Register
12Section 30Application for entry of mortgage or licence in the Register.
13Section 30 and rule 37Application for entry of notification of a document in the Register.
14Section 29Request for correction of clerical error.
15Section 26 and rule 41Request for certificate.
16Section 17(2)Application for certified copy of registered design.
17Section 31Application for rectification of Register.
18rule 15Application for extension of time for filing priority document.
19rule 40Notice of opposition.
20rules 29 and 40Notice of intention to attend hearing.
21Section 43Power of authority to agents.
22rule 31Request to alter name or address or address for service in Register
23Section 10Request for entries of two addresses in the
Register

Schedule 3

THE THIRD SCHEDULE

Classification of Good

(See rule 10)

List of Classes and Subclasses, with Explanatory Notes

CLASS 01

Foodstuffs

Note: (a) Includes foodstuffs for human beings, foodstuffs for animal and dietetic foods.

(b) Not including packages (Cl. 09).

01-01 BAKERS’ PRODUCTS, BISCUITS, PASTRY, MACARONI AND OTHER CEREAL PRODUCTS. CHOCOLATES, CONFECTIONERY, ICES

01-02 FRUIT AND VEGETABLES

01-03 CHEESES, BUTTER AND BUTTER SUBSTITUTES, OTHER DAIRY PRODUCE

01-04 BUTCHER’S MEAT (INCLUDING PORK PRODUCTS), FISH

01-05 [vacant]

01-06 ANIMAL FOODSTUFFS

01-99 MISCELLANEOUS

CLASS 02

Articles of clothing and haberdashery

Note: Not including articles of clothing for dolls (Cl. 21-01), special equipment for protection against fire hazards, for accident prevention and for rescue (Cl. 29), and animal clothing (Cl. 30-01).

02-01 UNDERGARMENTS, LINGERIE, CORSETS, BRASSIERES, NIGHTWEAR

Note: (a) Including orthopedic corsets and body linen.

(b) Not including household linen (Cl. 06-13).

02-02 GARMENTS

Note: (a) Includes all sorts of garments, including furs, bathing costumes, sports clothing and orthopedic garments, subject to the exceptions indicated under (b).

(b) Not including undergarments (Cl. 02-01), or garments to be placed in Classes 02-03; 02-04; 02-05 or 02-06.

02-03 HEADWEAR

Note: Includes all kinds of headwear for men, women and children.

02-04 FOOTWEAR, SOCKS AND STOCKINGS

Note: Including special boots for sports such as football, skiing and ice hockey, orthopedic footwear and socks, as well as tights, gaiters and other legwear.

02-05 NECKTIES, SCARVES, NECKERCHIEFS AND HANDKERCHIEFS

Note: Includes all “flat” clothing accessories.

02-06 GLOVES

Note: Includes surgical gloves and rubber or plastic protective gloves for household use or for various occupations or sports.

02-07 HABERDASHERY AND CLOTHING ACCESSORIES

Note: (a) Including buttons, clasps for garments, for headwear and for footwear, laces, pins, hand sewing, knitting and embroidery equipment and clothing accessories such as bells, suspenders, braces.

(b) Not including yarns or other threads (Cl. 05-01), decorative trimmings (Cl. 05-04), sewing, knitting and embroidery machines (Cl. 15-06) or sewing kits (containers) (Cl. 03- 01).

02-99 MISCELLANEOUS

CLASS 03

Travel goods, cases, parasols and personal belongings, not elsewhere specified

03-01 TRUNKS, SUITCASES, BRIEFCASES, HANDBAGS, KEYHOLDERS, CASES SPECIALLY DESIGNED FOR THEIR CONTENTS, WALLETS AND SIMILAR ARTICLES
Note: Not including articles for the transport of goods (Cl. 09) or cigar cases and cigarette cases (Cl. 27-06).

03-02 [vacant]

03-03 UMBRELLAS, PARASOLS, SUNSHADES AND WALKING STICKS

03-04 FANS

03-99 MISCELLANEOUS

CLASS 04

Brushware

04-01 BRUSHES AND BROOMS FOR CLEANING

Note: Not including clothes brushes (Cl. 04-02).

04-02 TOILET BRUSHES, CLOTHES BRUSHES AND SHOE BRUSHES

Note: “Toilet brushes” means brushes for corporal use; for example, for the hair, nails or teeth.

04-03 BRUSHES FOR MACHINES

Note: “Brushes for machines” means brushes incorporated in machines or in special vehicles.

04-04 PAINTBRUSHES, BRUSHES FOR USE IN COOKING

04-99 MISCELLANEOUS

CLASS 05

Textile piecegoods, artificial and natural sheet material

Note: (a) Includes all textile or similar articles, sold by the yard and not made up.

(b) Not including ready-made articles (Cl. 02 or 06).

05-01 SPUN ARTICLES

Note: (a) Including yarn and thread.

(b) Not including, for instance, rope wire, string, twine (Cl. 09-06).

05-02 LACE

05-03 EMBROIDERY

05-04 RIBBONS, BRAIDS AND OTHER DECORATIVE TRIMMINGS

05-05 TEXTILE FABRICS

Note: (a) Including textile fabrics, woven, knitted or otherwise manufactured, tarpaulins, felt
and loden.

05-06 ARTIFICIAL OR NATURAL SHEET MATERIAL

Note: (a) Includes sheets whose only characteristic features are their surface ornamentation or their texture; in particular, covering sheets such as wallpaper, linoleum, self-adhesive plastic sheets, wrapping sheets and rolls of paper, subject to the exceptions indicated under (b).

(b) Not including writing paper, even in rolls (Cl. 19-01), or sheets used as building components such as wall panels and wainscoting (Cl. 25-01).

05-99 MISCELLANEOUS

CLASS 06

Furnishing

Note: (a) Composite furniture articles embodying components includes in several subclasses are classified in Class 06-05.

(b) Sets of furniture, as far as they can be looked upon as one design, are classified in Class 06-05.

(c) Not including textile piecegoods (Cl. 05)

06-01 BEDS AND SEATS

Note: Including mattress supports and vehicle seats.

06-02 [vacant]

06-03 TABLES AND SIMILAR FURNITURE

06-04 STORAGE FURNITURE

Note: Including cupboards, furniture with drawers or compartments, and shelves.

06-05 COMPOSITE FURNITURE

06-06 OTHER FURNITURE AND FURNITURE PARTS

06-07 MIRRORS AND FRAMES

Note: Not including mirrors included in other classes (see Alphabetical List).

06-08 CLOTHES HANGERS

N.B.: The French text contains a note which does not concern the English text.

06-09 MATTRESSES AND CUSHIONS

06-10 CURTAINS AND INDOOR BLINDS

06-11 CARPETS, MATS AND RUGS

06-12 TAPESTRIES

06-13 BLANKETS AND OTHER COVERING MATERIALS, HOUSEHOLD LINEN AND NAPERY

Note: Including furniture covers, bedspreads and table covers.

06-99 MISCELLANEOUS

CLASS 07

Household good, not elsewhere specified

Note: (a) Including household appliances and utensils operated by hand, even if motor driven.

(b) Not including machines and appliances for preparing food and drink (Cl. 31).

07-01 CHINA, GLASSWARE, DISHES AND OTHER ARTICLES OF A SIMILAR NATURE

Note: (a) Includes dishes and crockery in all materials; in particular, paper and cardboard dishes.

(b) Not including cooking utensils and containers, such as glass and earthenware pots (Cl. 07-02), or flower vases, flower pots and china glassware of a purely ornamental nature (Cl. 11-02).

07-02 COOKING APPLIANCES, UTENSILS AND CONTAINERS

07-03 TABLE KNIVES, FORKS AND SPOONS

07-04 APPLIANCES AND UTENSILS, HAND-MANIPULATED, FOR PREPARING FOOD OR DRINK

Note: Not including appliances and utensils classified in Class 07-02 and in Class 31.

07-05 FLATIRONS AND WASHING, CLEANING AND DRYING EQUIPMENT

Note: Not including electric household appliances for washing, cleaning or drying (Cl. 15-05).

07-06 OTHER TABLE UTENSILS

07-07 OTHER HOUSEHOLD RECEPTACLES

07-08 FIREPLACE IMPLEMENTS

07-99 MISCELLANEOUS

CLASS 08

Tools and hardware

Note: (a) Includes hand-operated tools, even if mechanical power takes the place of muscular force, or example, electric saws and drills.

(b) Not including machines or machine tools (Cl. 15 or 31).

08-01 TOOLS AND IMPLEMENTS FOR DRILLING, MILLING OR DIGGING

08-02 HAMMERS AND OTHER SIMILAR TOOLS AND IMPLEMENTS

08-03 CUTTING TOOLS AND IMPLEMENTS

Note: (a) Including tools and instruments for sawing.

(b) Not including table knives (Cl. 07-03), cutting tools and implements for kitchen use

(Cl. 31), or knives used in surgery (Cl. 24-02).

08-04 SCREWDRIVERS AND OTHER SIMILAR TOOLS AND IMPLEMENTS

08-05 OTHER TOOLS AND IMPLEMENTS

Note: Includes tools which are not classified, or not to be placed, in other subclasses or classes.

08-06 HANDLES, KNOBS AND HINGES

08-07 LOCKING FOR CLOSING DEVICES

08-08 FASTENING, SUPPORTING OR MOUNTING DEVICES NOT INCLUDED IN OTHER CLASSES

Note: (a) Including nails, screws, nuts and bolts.

(b) Not including fastening devices for clothing (Cl. 02-07), for adornment (Cl. 11-01), or for office use (Cl. 19-02).

08-09 METAL FITTINGS AND MOUNTINGS FOR DOORS, WINDOWS AND FURNITURE, AND SIMILAR ARTICLES

08-10 BICYCLE RACKS

08-99 MISCELLANEOUS

Note: Including non-electric cables, regardless of the material of which they are made.

CLASS 09

Packages and containers for the transport or handling of goods

09-01 BOTTLES, FLASKS, POTS, CARBOYS, DEMIJOHNS, AND CONTAINERS WITH DYNAMIC DISPENSING MEANS

Note: (a) “Pots” means those serving as containers.

(b) Not including pots regarded as crockery (Cl. 07-01), or flower pots (Cl. 11-02).

09-02 STORAGE CANS, DRUMS AND CASKS

09-03 BOXES, CASES, CONTAINERS, (PRESERVE) TINS OR CANS

Note: Including freight containers.

09-04 HAMPERS, CRATS AND BASKETS

09-05 BAGS, SACHETS, TUBES AND CAPSULES

Note: (a) Including plastic bags or sachets, with or without handle or means of closing.

(b) “Capsules” means those used for packaging.

09-06 ROPES AND HOOPING MATERIALS

09-07 CLOSING MEANS AND ATTACHMENTS

Note: (a) Includes only closing means for packages.

(b) “Attachments” means, for example, dispensing and dosing devices incorporated in containers and detachable atomizers.

09-08 PALLETS AND PLATFORMS FOR FORKLIFTS

09-09 REFUSE AND TRASH CONTAINERS AND STANDS THEREFOR

09-99 MISCELLANEOUS

CLASS 10

Clocks and watches and other measuring instruments, checking and signalling instruments

Note: Including electrically-driven instruments.

10-01 CLOCK AND ALARM CLOCKS

10-02 WATCHES AND WRIST WATCHES

10-03 OTHER TIME-MEASURING INSTRUMENTS

Note: Including time-measuring apparatus such as parking meters, timers for kitchen use and similar instruments.

10-04 OTHER MEASURING INSTRUMENTS, APPARATUS AND DEVICES

Note: (a) Including instruments, apparatus and devices for measuring temperature, pressure, weight, length, volume and electricity.

(b) Not including exposure meters (Cl. 16-05).

10-05 INSTRUMENTS, APPARATUS AND DEVICES FOR CHECKING, SECURITY OR TESTING

Note: Including fire and burglar alarms, and detectors of various types.

10-06 SIGNALLING APPARATUS AND DEVICES

Note: Not including lighting or signalling devices for vehicles (Cl. 26-06).

10-07 CASINGS DIALS, HANDS AND ALL OTHER PARTS AND ACCESSORIES OF INSTRUMENTS FOR MEASURING, CHECKING AND SIGNALLING

Note: “Casings” means watch and clock casings and all casings being integral parts of instruments of which they protect the mechanism, with the exception of cases specify designed for their contents (Cl. 03-01) or for packaging (Cl. 09-03).

10-99 MESCELLANEOUS

CLASS 11

Articles of adornment

11-01 JEWELLERY

Note: (a) Including fancy and imitation jewellery.

(b) Not including watches (Cl. 10-02).

11-02 TRINKETS, TABLE, MANTEL AND WALL ORNAMENTS, FLOWER VASES AND POTS

Note: Including sculptures, mobiles and statues.

11-03 MEDALS AND BADGES

11-04 ARTIFICIAL FLOWERS, FRUIT AND PLANTS

11-05 FLAGS, FESTIVE DECORATIONS

Note: (a) Including garlands, streamers and Christmas tree decorations.

(b) Not including candles (Cl. 26-04).

11-99 MISCELLANEOUS

CLASS 12

Means of transport or hoisting

Note: (a) Includes all vehicles, land, sea, air, space and others.

(b) Including parts, components and accessories which exist only in connection with a and vehicle cannot be placed in another class; these parts, components and accessories of vehicles are to be placed in the subclass of the vehicle in question, or in Class 12-16 if they are common to several vehicles included in different subclasses.

(c) Not including, in principle, parts, components and accessories of vehicles which can be placed another class; these parts, components and accessories are to be placed in the same class as articles of the same type, in other words, having the same function. Thus, carpets or mats for automobiles are to be placed with carpets (Cl. 06-11); electric motors for vehicles are to be placed in Class 13-01, and non-electric motors for vehicles in Class 15-01 (the same applies to the components of such motors); automobile headlamps are to be placed with lighting apparatus (Cl. 26-06).

(d) Not including scale models of vehicles (Cl. 21-01).

12-01 VEHICLES DRAWN BY ANIMALS

12-02 HANDCARTS, WHEELBARROWS

12-03 LOCOMOTIVES AND ROLLING STOCK FOR RAILWAYS AND OTHER RAIL VEHICLES

12-04 TELPHER CARRIERS, CHAIR LIFTS AND SKILIFTS

12-05 ELEVATORS AND HOISTS FOR LOADING OR CONVEYING

Note: Including passenger lifts, goods lifts, cranes, forklift trucks and conveyor belts.

12-06 SHIPS AND BOATS

12-07 AIRCRAFTS AND SPACE VEHICLES

12-08 MOTOR CARS, BUSES AND LORRIES

Note: Including ambulances and refrigerator vans (road).

12-09 TRACTORS

12-10 ROAD VEHICLE TRAILERS

Note: Including caravans.

12-11 CYCLES AND MOTORCYCLES

12-12 PERAMBULATORS, INVALID CHAIRS, STRETCHERS

Note: (a) :Perambulators” means hand carriage for infants.

(b) Not including toy perambulators (Cl. 21-01).

12-13 SPECIAL-PURPOSE VEHICLES

Note: (a) Includes only vehicles not specially intended for transport, such as street – cleaning vehicles, watering lorries, fire engines, snow ploughs and breakdown lorries.

(b) Not including mixed-purpose agricultural machines (Cl. 15-03), or self-propelled machines for use in construction and civil engineering (Cl. 15-04).

12-14 OTHER VEHICLES

Note: Including sleighs and air-cushion vehicles.

12-15 TYRES AND ANTI-SKID CHAINS FOR VEHICLES

12-16 PARTS, EQUIPMENT AND ACCESSORIES FOR VEHICLES, NOT INCLUDED IN OTHER CLASSES OR SUBCLASSES

12-99 MISCELLANEOUS

CLASS 13

Equipment for production, distribution or transformation of electricity

Note : (a) Includes only apparatus which produces, distributes or transforms electric current.

(b) Including electric motors, however.

(c) Not Including electrically-driven apparatus, such as electric watches (Cl. 10-02), or apparatus for the measurement of electric current (Cl. 10-04).

13-01 GENERATORS AND MOTORS

Note: including electric motors for vehicles.

13-02 POWER TRANSFORMETERS, RECTIFIERS, BATTERIES AND ACCUMULATORS

13-03 EQIUPMENT FOR DISTRIBUTION OR CONTROL OF ELECTRIC POWER

Note: Including conductors, switches and switchboards.

13-99 MISCELLANEOUS

CLASS 14

Recording, communication or information retrieval equipment

14-01 EQUIPMENT FOR THE RECORDING OR REPRODUCING OR REPRODUCTION OF SOUNDS OR PICTUREA

Note: Not including photographic or cinematographic apparatus (Cl. 16).

14-02 DATA PROCESSING EQUIPMENT AS WELL AS PERIPHERAL APPARATUS AND DEVICES

14-03 COMMUNICATIONS EQUIPMENT, WIRELESS REMOTE CONTROLS AND RADIIO AMPLIFIERS

Note: Including telegraphic, telephone and television apparatus, as well as wireless apparatus and teleprinters.

14-99 MISCELLANEOUS

CLASS 15

Machines, not elsewhere specified

15-01 ENGINES

Note: (a) Including non-electric engines for vehicles.

(b) Not including electric motors (Cl. 13).

15-02 PUMPS AND COMPRESSORS

Note: Not including hand or foot pumps (Cl. 08-05), or or fire extinguishing pumps. (Cl. 29-01).

15-03 AGRICULTURAL MACHINERY

Note: (a) Including ploughs and combined machinery, i.e. , both machines and vehicles, for examples, reaping and binding machines.

(b) Not including hand tools (Cl. 08).

15-04 CONSTRUCTION MACHINERY

Note: (a) Including machines used in civil engineering and self propelled machines such as excavators, concrete mixer and dredgers.

(b) Not including hoists and cranes (Cl. 12-05).

15-05 WASHING CLEANING AND DRYING MACHINES.

Note: Including:

(a) appliances and machines for treating lines and clothes, such as ironing machines and wringers.

(b) dishwashing machines and industrial drying equipment.

15-06 TEXTILE, SEWING, KNITTING AND EMBROIDERING MACHINES INCLUDING THEIR INTEGRAL PARTS

15-07 REFRIGERATION MACHINERY AND APPARATUS

Note: (a) Including household refrigeration apparatus.

(c) Not including refrigerator wagons (rail) (Cl. 12-03) or refrigerator vans (road) (Cl. 12-08).

15-08 [vacant]

15-09 MACHINE TOOLS, ABRADING AND FOUNDING MACHINERY

Note: Not including earth working machinery and material separators (Cl. 15-99).

15-99 MISCELLANEOUS

CLASS 16

Photographic, cinematographic and optical apparatus

Note: Not including lamps for photography or filming (Cl. 26-05).

16-01 PHOTOGRAPHIC CAMERAS AND FILM CAMERAS

16-02 PROJECTORS AND VIEWERS

16-03 PHOTOCOOPYING APPARATUS AND ENLARGERS

Note: Including microfilming equipment and apparatus for viewing microfilms, as well as office machines known as “photocopying” apparatus which use other than photographic processes (in particular, thermal or magnetic processes).

16-04 DEVELOPING APPARATUS AND EQUIPMENT

16-05 ACCESSORIES

Note: Including filters for photographic cameras, exposure meters, tripods and photographic flashlight apparatus.

16-06 OPTICAL ARTICLES

Note: (a) Including spectacles and microscopes.

(b) Not including measuring instruments embodying optical devices (Cl. 10-04).

16-99 MISCELLANEOUS

CLASS 17

Musical instruments

Note: Not including cases for musical instruments (Cl. 03-01), or equipment for the recording or reproduction of sounds (Cl. 14-01).

17-01 KEYBOARD INSTRUMENTS

Note: Including electronic and other organs, accordions, and mechanical and other pianos.

17-02 WIND INSTRUMENTS

Note: Not including organs, harmoniums and accordions, and mechanical and other pianos.

17-03 STRINGED INSTRUMENTS

17-04 PERCUSSION INSTRUMENTS

17-05 MECHANICAL INSTRUMENTS

Note: (a) Including music boxes.

(b) Not including mechanical keyboard instruments (Cl. 17-01).

17-99 MISCELLANEOUS

CLASS 18

Printing and office machinery

18-01 TYPEWRITERS AND CALCULATING MACHINES

Note: Not including computers and other apparatus to be placed in Class 14-02

18-02 PRINTING MACHINES

Note: (a) Including typesetting machines, stereotype machines and apparatus, typographic machines and other reproducing machines such as duplicators and offset equipment, as well as addressing machines, franking and cancelling machines.

(b) Not including photocopying machinery (Cl. 16-03).

18-03 TYPE AND TYPE FACES

18-04 BOOKBINDING MACHINES, PRINTERS’ STAPLING MACHINES, GUILLOTINES AND TRIMMERS (FOR BOOKBINDING)

Note: Including machines and similar devices for cutting paper, analogous to guillotines and trimmers.

18-99 MISCELLANEOUS

CLASS 19

Stationery and office equipment, artists’ and teaching materials

19-01 WRITING PAPER, CARDS FOR CORRESPONDENCE AND ANNOUNCEMENTS

Note: Includes all paper, in the widest sense of the term, which is used for writing, drawing, painting or printing, such as tracing paper, carbon paper, newsprint, envelopes, greetings cards and illustrated postcards, even if they embody a sound recording.

19-02 OFFICE EQUIPMENT

Note: (a) Including equipment used at cash desks, such as change sorters.

(b) Some office equipment is to be placed in other subclasses or classes; for example, office furniture in Class 06, office machines and equipment in Class 14-02; 16-03; 18-01; 18-02 or 18-04, and writing materials in Class 19-01 or 19-06 (see alphabetical List).

19-03 CALENDERS

Note: Not including diaries (Cl. 19-04).

19-04 BOOKS AND OTHER OBJECTS OF SIMILAR OUTWARD APPEARANCE

Note: Including covers of books, binding, albums, diaries and similar objects.

19-05 [vacant]

19-06 MATERIALS AND INSTRUMENTS FOR WRITING BY HAND, FOR DRAWING,

FOR PAINTING, FOR SCULPTURE, FOR ENGRAVING AND FOR OTHER

ARTISTIC TECHNIQUES

Note: Not including paintbrushes (Cl. 04-04), drawing tables and attached equipment (Cl. 06- 03), or writing paper (Cl. 19-01).

19-07 TEACHING MATERIALS

Note: (a) Including maps of all kinds, globes and planetariums.

(b) Not including audio-visual teaching aids (Cl. 14-01).

19-08 OTHER PRINTED MATTER

Note: Including printed advertising materials.

19-99 MISCELLANEOUS

CLASS 20

Sales and advertising equipment, signs

20-01 AUTOMATIC VENDING MACHINE

20-02 DISPLAY AND SALES EQUIPMENT

Note: Not including articles of furniture (Cl. 06).

20-03 SIGNS, SIGNBOARDS AND ADVERTISING DEVICES

Note: (a) Including luminous advertising devices and mobile advertising devices.

(b) Not includingn pacjages (Cl. 09), or signalling devices (Cl. 10-06).

20-99 MISCELLANEOUS

CLASS 21

Games, toys, tents and sports goods

21-01 GAMES AND TOYS

Note: (a) Including scale models.

(b) Not including toys for animals (Cl. 30-99).

21-02 GYMNASTIC AND SPORTS APPARATUS AND EQUIPMENT

Note: (a) Includes, as sports equipment: apparatus and equipment necessary for the various sports which have no other specific purpose, such as footballs, skis and tennis rackets, to the exclusion of all other objects which may also be used in practing a given sport.

(b) Including subject to the reservation mentioned under (a), training equipment and apparatus and equipment necessary for outdoor games.

(c) Not including sports clothing (Cl. 02), toboggans or sleighs (Cl. 12-14).

21-03 OTHER AMUSEMENT AND ENTERTAINMENT ARTICLES

Note : (a) Including fairground roundabouts and automatic machines for games of chance.

(b) Not including games and toys (Cl. 21-01), or other articles to be placed in Class
21-01 or 21- 02.

21-04 TENTS AND ACCESSORIES THEREOF

Note: (a) Including poles, pegs and other similar articles.

(c) Not including other camping articles to be placed in other classes according to their nature, such as chairs (Cl. 06-01), tables (Cl. 06-03), plates (Cl. 07-01), and caravans (Cl. 12-10).

21-99 MISCELLANEOUS

CLASS 22

Arms, pyrotechnic articles, articles for hunting, fishing and pest killing

22-01 PROJECTILE WEAPONS

22-02 OTHER WEAPONS

22-03 AMMUNITION, ROCKETS AND PYROTECHING ARTICLES

22-04 TARGETS AND ACCESSORIES

Note: Including the special device for actuating mobile targets.

22-05 HUNTING AND FISHING EQUIPMENT

Note: Not including articles of clothing (Cl. 02), or weapons (Cl. 22-01 or 22-02).

22-06 TRAPS, ARTICLES FOR PEST KILLING

22-99 MISCELLANEOUS

CLASS 23

Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel

23-01 FLUID DISTRIBUTION EQUIPMENT

Note: Including pipes and pipe fittings.

23-02 SANITARY APPLIANCES

Note: (a) Including baths, showers, washbasins, saunas, waterclosets, sanitary units and sanitary accessories not included in other classes.

(b) Not including pipes or pipe fittings (Cl. 23-01).

23-03 HEATING EQUPMENT

23-04 VENTILATION AND AIR-CONDITIONING EQUIPMENT

23-05 SOLID FUEL

23-99 MISCELLANEOUS

CLASS 24

Medical and laboratory equipment

Note: The term “medical equipment” covers also surgical, dental and veterinary equipment.

24-01 APPARTUS EQUIPMENT FOR DOCTORS, HOSPITALS AND LABORATORIES

24-02 MEDICAL INSTRUMENTS, INSTRUMENTS AND TOOLS FOR LABORATORY USE

Note: Includes only hand-operated instruments.

24-03 PROSTHETIC ARTICLES

24-04 MATERIALS FOR DRESSING WOUNDS, NURSING AND MEDICAL CARE

24-99 MISCELLANEOUS

CLASS 25

Building units and construction elements

25-01 BUILDING MATERIALS

Note: Including bricks, beams, pre-shaped strips, tiles, slates and panels.

25-02 PREFABRICATED OR PRE-ASSEMBLED BUILDING PARTS

Note: (a) Including windows, doors, outdoors shutters, partition walls and gratings.

(b) Not including staircases (Cl. 25-04).

25-03 HOUSES, GARAGES AND OTHER BUILDINGS

25-04 STEPS, LADDERS AND SCAFFOLDS

25-99 MISCELLANEOUS

CLASS 26

Lighting apparatus

26-01 CANDLESTICKS AND CANDELABRA

26-02 TORCHES AND HAND LAMPS AND LANTERNS

26-03 PUBLIC LIGHTING FIXTURES

Note: Including outside lamps, stage lighting and searchlight projectors.

26-04 LUMINOUS SOURCES, ELECTRICAL OR NOT

Note: Including bulbs for electric lamps, luminous plaques and tubes, and candles.

26-05 LAMPS, STANDARD LAMPS, CHANDELIERS, WALL AND CEILING FIXTURES, LAMPSHADES, REFLECTORS, PHOTOGRAPHIC AND CINEMATOGRAPHIC PROJECTOR LAMPS

26-06 LUMINOUS DEVICES FOR VEHICLES

26-99 MISCELLANEOUS

CLASS 27

Tobacco and smokers’ supplies

27-01 TOBACCO, CIGARS AND CIGARETTES

27-02 PIPES, CIGAR AND CIGARETTE HOLDERS

27-03 ASHTRAYS

27-04 MATCHES

27-05 LIGHTERS

27-06 CIGAR CASES, CIGARETTE CASES, TOBACCO JARS AND POUCHES

Note: Not including packages (Cl. 09).

27-99 MISCELLANEOUS

CLASS 28

Pharmaceutical and cosmetic products, toiler articles and apparatus

28-01 PHARMACEUTICAL PRODUCTS

Note: (a) Including for animals.

(b) Not including materials for dressing wounds and nursing (Cl. 24-04).

(c) Including chemicals in cachet, capsule, lozenge, pill and tablet forms.

28-02 COSMETIC PRODUCTS

Note: Including for animals.

28-03 TOILET ARTICLES AND BEAUTY PARLOR EQUIPMENT

Note (a) Including razors, apparants and appliances for hair removing or hair dressing.

(b) Not including toilet and make-up brushes (Cl. 04-02), or articles and equipment for animals (Cl. 30-99)

28-04 WIGS, FALSE HAIRPIECES

28-99 MISCELLANEOUS

CLASS 29

Devices and equipment against fire hazards, for accident prevention and for rescue

29-01 DEVICES AND EQUIPMENT AGAINST FIRE HAZARDS

Note : (a) Including fire extinguishers.

(b) Not including fire engines (vehicles) (Cl. 12-13), free-hoses and nozzles for fire-hoses (Cl. 23-01).

29-02 DEVICES AND EQUIPMENT AGAINST FOR ACCIDENT PREVENTION AND FOR RESCUE, NOT ELSEWHERE SPECIFIED

Note: (a) Including devices and equipment for animals.

(b) Not including helmets (Cl. 02-03) and garments for protection against accidents (Cl. 02-02; 02-04 or 02-06).

29-99 MISCELLANEOUS

CLASS 30

Articles for the care and handling of animals

Note: Not including animal foodstuffs (Cl. 01), or pharmaceutical and cosmetic products for animals (Cl. 28-01 or 28-02).

30-01 ANIMAL CLOTHING

30-02 PENS, CAGES, KENNELS AND SIMILAR SHELTERS

Note: Not including buildings (Cl. 25)

30-03 FEEDERS AND WATERERS

30-04 SADDLERY

Note: Including collars for animals.

30-05 WHIPS AND PRODS

30-06 BEDS AND NESTS

30-07 PERCHES AND OTHER CAGE ATTACHMENTS

30-08 MARKERS, MARLS AND SHACKLES

30-09 HITCHING POSTS

30-99 MISCELLANEOUS

CLASS 31

Machines and appliances for preparing food or drink, not elsewhere specified

Note: Not including hand-manipulated utensil, instruments and appliances for serving or preparing food or drink (Cl. 07).

31-00 MACHINES AND APPLIANCES FOR PREPARING FOOD OR DRINK, NOT ELSEWHERE SPECIFIED

CLASS 99

Miscellaneous

Note: Includes all products not included in the preceding classes.

99-00 MISCELLANEOUS

Schedule 4

THE FOURTH SCHEDULE

(see rule 43)

Scale of costs allowable in proceedings before the Controller

 Entry No.Matter in respect of which cost is to be awarded.Amount
1.For Notice of Opposition under rule 40Rs. 100.00
2.For petition for cancellation of the registration of for design under section 19.Rs. 1000.00
3.For notice of information to attend Hearing.Rs. 200.00
4.Stamps for Power of Attorney, where a professional has been appointed.The amount actually paid
5.Stamps fee in respect of relevant Affidavit.actually paid
6.For Statement under rules 29(1) and 40(2).Rs. 200.00
7.For Counter Statement under rules29(3) and 40(4)Rs. 200.00
8.For each Affidavit, if relevant.Rs. 100.00
9.For each Citation, if relevant.Rs. 100.00
10.For each unnecessary or irrelevant Affidavit or Citation.Rs. 100.00
11.For every day or part of a day of Hearing before the
Controller.
Rs. 500.00
Bydeb

The Trade and Merchandise Marks Act, 1958

Section 1. Short title extent and commencement

[Act No. 43 of 1958]

[17th October, 1958]

An Act to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise

Be it enacted by Parliament in the Ninth Year of the Republic of India as follows:

(1) The Act may be called the Trade and Merchandise Marks Act, 1958.

(2) It extends to the whole of India.1

(3) It shall come into force on such date2 as the Central Government may, by notification in the official Gazette, appoint.

——————–

1. Extended to Goa, Daman and Diu by Reg. 12 of 1962, Sec. 3 and Schedule; to Dadra and Nagar Haveli by Reg. 6 of 1963, Sec. 2 and Sch. 1: to Pondicherry by Reg. 2 of 1963, Sec. 3 and Sch. 1.

2. 25th November 1959. See Gazette of India, Extraordinary, 1959, Pt. II. Sec. 3(ii), p. 583.

Section 2. Definitions and interpretation

(1) In this Act, unless the context otherwise requires, –

(a) “Assignment” means ail assignment in writing by act of the parties concerned;

(b) “Associated trade marks” means trade marks deemed to be, or required to be, registered as associated trade marks under this Act;

(c) “Certification trade mark” means a mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registrable as such under the provisions of Chapter VIII in respect of’ those goods in the name, as proprietor of the certification trade mark, of that person;

(d) “Deceptively similar”. -A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;

(e) “District Court” has the meaning assigned to it in the Code of Civil Procedure, 1908 (5 of 1908);

(f) “False trade description” means-

(i) A trade description which is untrue or misleading in a material respect as regards the goods to which it is applied; or

(ii) Any alteration of a trade description as regards the, goods to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect; or

(iii) Any trade description which denotes or implies that there are contained, as regards the goods to which it is applied, more yards or metres than there are contained therein standard

(iv) Any marks or arrangement or combination thereof applied to goods in such manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are-, or

(v) Any false name or initials of a person applied to goods in such manner as; if such name or initials were a trade description in any case where the, name or initials-

(a) Is or are not a trade mark or part of a trade mark; and

(b) Is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods of the same description and who has not, authorised the use of such name, or initials; arid

(c) Is or are either the name or initials of a fictitious person or of some person or of some person not bona fide carrying on business in connection with such goods;

And the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Act’,

(g) “Goods” means anything, which is the subject of trade or manufacture;

(h) “High Court” means the High Court having jurisdiction under Sec. 3;

(i) “Limitations” (with its grammatical variations) means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of goods to be sold that right as to mode of use, as to use in relation to or otherwise traded in within India, or as to use in relation to goods to be exported to any market outside India;

(j) “Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof:

(k) “Name” includes any abbreviation of a name;

(l) “Package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;

(m) “Permitted use” in relation to a registered trade mark, means the use of a trade mark–

(i) By a registered user of the trade mark in relation to goods–

(a) With which he is connected in the course of trade; and

(b) In respect of which the trade mark remains registered for the time being; and

(c) For which he is registered as registered user; and

(ii) Which complies with any conditions or restrictions to which the registration of the trade mark is subject;

(n) “Prescribed” means, in relation to proceedings before a High Court, prescribed by rules made by the High Court, and in other cases, prescribed by rules made under this Act,

(o) “Register” means the Register of Trade Marks referred to in Sec.6;

(p) “Registered” (with its grammatical variations) means registered under this Act;

(q) “Registered proprietor-”, in relation to a trade mark, means the person for, the time being entered in the register as proprietor of the trade mark;

(r) “Registered trade mark” means a trade mark that is actually on the register;

(s) “Registered user” means a person who is for the time being registered as such under Sec. 49;

(t) “Registrar” means the Registrar of Trade Marks referred to in Sec. 4;

(u) “Trade description,” means any description, statement or other indication, direct or indirect, –

(i) As to the number, quantity, measure, gauge or weight of any goods; or

(ii) As to the standard of quality of any goods, according to a classification commonly used or recognised in the trade: or

(iii) As to fitness for the purposes, strength, performance or behaviour of any goods, being “drug” as defined in the Drugs Act, 1940 (23 of 1940), or “food” as defined in the Prevention of Food Adulteration Act, 1954 (37 of 1954); or

(iv) As to the place or country in which or the time at which any goods were made or produced; or

(v) As to the name and address or other indication of the identity of the manufacturer or of the person for whom the goods are manufactured; or

(vi) As to the mode of manufacture or producing any goods; or

(vii) As to the material of which any goods are composed; or

(viii) As to any goods being the subject of an existing patent, privilege or copyright,

And includes-

(a) Any description as to the use of any mark, which according to the custom of the trade is commonly taken to be an indication of arty of the above matters:

(b) The description as to any imported goods contained in a bill of entry or shipping bill;

(c) Any other description, which is likely to be misunderstood or mistaken for all or any of the said matters;

(v) “Trade mark” means-

(i) In relation to Chapter X (other than Sec. 81), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and

(ii) In relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII;

(w) “Transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment;

(x) “Tribunal” means the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending.

(2) In this Act, unless the context otherwise requires, any reference-

(a) To the use of a mark shall be construed as a reference to the use of a printed or other visual representation of the mark;

(b) To the use of a mark in relation to goods shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;

(c) To a registered trade mark shall be construed as including a reference to a trade mark registered in Part A of the register or Part B of the register, as the case may be;

(d) To the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of Sec. 4;

(e) To the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry.

Section 3. High court having jurisdiction

The High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the following cases is situate, namely:

(a) In relation to a trade mark on the Register of Trade Marks at the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor of the trade mark as entered in the register at such commencement is situate;

(b) In relation to a trade mark for which an application for registration is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant as disclosed in his application is situate;

(c) In relation to a trade mark registered in the names of joint proprietors before the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is entered first in the register at such commencement as having such place of business is situate;

(d) In relation to a trade mark for which an application for registration in the names of joint proprietors is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is first mentioned in the said application as having such place of business is situate;

(e) Where the registered proprietor or the applicant for registration as aforesaid has no place of business in India or where none of the jointly registered proprietors or none of the joint applicants as aforesaid has any place of business in India, the office of Trade Marks Registry within whose territorial limits-

(i) In relation to a trademark on the Register of Trade Marks at the commencement of this Act, the place mentioned in the address for service in India as entered in the register at such commencement;

(ii) In relation to a trade mark for which an application for registration is pending at or is made on or after such commencement, the place mentioned in the address for service in India as specified in the application; is situate

Section 4. Registrar of trade; marks

(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 1[Registrar of Trade Marks] for the purposes of this Act. 2[* * *].

(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.

——————–

1. Subs. by the Repealing and Amending Act, 1960, (58 of 1960), Sec. 3, Sch. 11, for “Registrar” (w.e.f. 20th December, 1960).

2. The words “and the Controller of Patents and Designs for the purposes of, the Indian Patents and Designs Act, 1911 “ omitted by the Patents Act, 1970 139 of 1970), Sec. 163 (w.e.f. 20th April 1972).

Section 5. The marks registry and offices thereof

(1) For the purpose of the Act there shall be established a Registry which shall be known as the Trade Marks Registry.

(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 exercises its functions.

(4) There shall be a seal of the Trade Marks Registry.

Section 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 descriptions of the proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of registered users, disclaimers, conditions, limitations and such other matters relating to registered trade marks as may be prescribed.

(2) No notice of any trust, express, implied, or constructive, shall be entered in the register and no such notice shall be receivable by the Registrar.

(3) Subject to the superintendence and direction of the Central Government, the register shall be kept under the control and management of the Registrar.

(4) 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 Sec. 125 as the Central Government may, by notification 2 in the Official Gazette, direct.

Section 7. Part a and part b of the register

(1) The register referred to in Sec. 6 shall be divided into two parts called respectively Part A and Part B.

(2) The Register of Trade Marks existing at the commencement of this Act shall be incorporated with and form part of Part A of the register, and this part shall comprise all trade marks entered in the Register of Trade Marks existing at the commencement of this Act and all trade marks which after such commencement may be entered in Part A of the register.

(3) Part B of the register shall comprise all trade marks which alter the commencement of this Act may be entered in Part B of the register.

Section 8. Registration to be in respect of particular goods

(1) Trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

Section 9. Requisites for registration in parts a and b of the register

(1) A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:

(a) The name of a company, individual or firm represented in a special or particular manner;

(b) The signature of the applicant for registration or some predecessor in his business;

(c) One or more invented words;

(d) One or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

(e) Any other distinctive mark.

(2) A name, signature or word, other than such as, fall within the descriptions in Cls. (a), (b), (c) and (d) of sub- section (1) shall not be registrable in Part A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression “distinctive” in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(4) A trade mark shall not be registered in Part B of the register unless the trade mark in relation to the goods in a respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trademark is distinctive or is capable of distinguishing as aforesaid, the Tribunal may have regard to the extent to which-

(a) A trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) By reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods-

(a) Registered in Part A of the register may be registered in Part B of the register; and

(b) Registered in Part B of the register may be registered in Part A of the register;

In the name of the same proprietor of the same trade mark or any part or parts thereof.

Section 10. Limitation as to colour

(1) A trade mark may be limited wholly or in part to one or more specified 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.

Section 11. Prohibition of registration of certain marks

A mark-

(a) The use of which would be likely to deceive or cause confusion; or

(b) The use of which would be contrary to any law for the time being in force; or

(c) Which comprises or contains scandalous or obscene matter; or

(d) Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

(e) Which would otherwise be disentitled to protection in a Court, shall not be registered as a trade mark.

Section 12. Prohibition of registration of identical or deceptively similar trade marks

(1) Save as provided in subsection (3), no trade mark shall be registered in respect of any goods or description of goods, which is identical with or deceptively similar to a trade mark, which is already registered in the name of different proprietor in respect of the same goods, or description of goods.

(2) Where separate applications arc made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications hearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.

(3) In case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, lie may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

Section 13. Prormition of registration of names of chemical elements

(1) No word which is the commonly used and accepted name of a chemical element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding in Sec. 32, be deemed for the Purpose of See. 56 to be entry made in the register without sufficient cause or an entry wrongly remaining on the registers, as the circumstances may require.

(2) This section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

Section 14. Use 0f names and representation of living persons or persons recently dead

Where an application 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.

Section 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 goods or description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of-

(a) Statement of the goods in relation to which they are respectively used or proposed to be used; or

(b) Statements 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.

Section 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 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 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 a trade mark and part thereof arc, in accordance with the provisions of sub-section (1) of Sec. 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.

(3) All trade marks registered in accordance with provisions of sub-section (3) of Sec. 15 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.

(4) 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 in respect of which it is registered, and may amend the register accordingly.

Section 17. Registration of trade marks subject to disclaimer

If a trade mark-

(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 Tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration:

Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

Section 18. Application for registration

(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register.

(2) An application shall not be made in respect of goods comprised in more than one prescribed class of goods.

(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application, as having a place of business in India is situate:

Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the, address for service in India as disclosed in the application, is situate.

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations if any, as he may think fit.

(5) In the case of an application for registration of a trade mark (other than a. certification trade mark) in Part A of the register, the Registrar may, if the applicant so desires, instead of refusing the application, treat it as an application for registration in Part B of the register and deal with the application accordingly.

(6) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

Section 19. Witbdrawal of acceptance

Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied-

(a) That the application has been accepted in error: or

(b) That in the circumstances of the case the trade mark should not be registered or should be registered subject to the conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted; the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

Section 20. Advertisement of application

(1) Where an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:

Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (2) of Sec. 9 applies or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

(2) Where-

(a) An application has been advertised before acceptance under sub-section (1); or

(b) After advertisement of an application, –

(i) An error in the application has been corrected; –

(ii) The application has been permitted to be amended under Sec. 22;

The Registrar may in his discretion cause the application to be advertised again or in any case falling under Cl. (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.

Section 21. Opposition to registration

(1) Any person may within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed mariner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement the Registrar shall serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire.

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions of limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither reside nor carries On business in India, the Registrar may require him to give security for the, costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.

Section 22. Corrections and amendment

The Registrar may on such term as he thinks just-

(a) At any time, whether before or after acceptance of an application for registration under See. 18, permit the correction of any error in or in connection with the application or permit an amendment of line application: or

(b) Permit correction of any error in, or an amendment of, a notice of opposition or a counter-statement under Sec. 21.

Section 23. Registration

(1) Subject to the provisions of Sec. 19, when an application for registration of a trade mark in Part A or Part B of the register has been accepted and either-

(a) The application has not been opposed and the time for notice of opposition has expired, or

(b) The application has been opposed and the opposition has been decided in favour of the applicant,

The Registrar shall, unless the Central Government otherwise directs, register the said trade mark in Part A or Part B of e register, as the case may be, and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to be the, provisions of Sec. 131, be deemed to be the date of registration.

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default or] the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

(4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error, or an obvious mistake.

Section 24. Jointly owned trades

(1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

(2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except-

(a) On behalf of both or all of them; or

(b) In relation to an article with which both or all of them are connected in the course of trade;

Those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in to any rights to the use of the trade mark vested in those, persons as if those rights have been vested in a single person.

Section 25. Duration, renewal and restoration of registration

(1) The registration of a trade mark shall be for a period of seven years, but may be, renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of seven years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions its to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trade mark from the register.

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, within one year from the expiration of the last registration of trade mark, on receipt of an application in the prescribed form, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of seven years from the expiration of the last registration.

Section 26. Effect of removal from register for failure to pay fee for renewal

Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the Tribunal is satisfied either-

(a) That there has been no bonafide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or

(b) That no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

Section 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 as the goods of another person or the remedies in respect thereof.

Section 28. Rights conferred by registration

(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register 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 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.

Section 29. Infringement of trade marks

(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark, which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark.

Section 30. Acts not constituting infringement

(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark-

(a) Where 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 other-wise traded in, in any place, or in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend:

(b) The use by a person of a trade mark 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 of 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;

(c) 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 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 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;

(d) The use of a registered trade mark, being one or 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.

(2) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of or other dealings in those goods by that person or by a person claiming under or through him is not an infringement of the trade mark by reason only of the trade mark having been assigned by the registered proprietor to some, other person after the acquisition of those goods.

Section 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 Sec. 56), 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 trade mark registered in Part A of the register not be held to be invalid on the ground that it was not a registrable trade mark under Sec. 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, in all legal proceedings as aforesaid, 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.

Section 32. Registration to be conclusive as to validity after seven years

Subject to the provisions of Sees. 35 and 46, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under Sec. 56) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved-

(a) That the original registration was obtained by fraud; or

(b) That the trade mark was registered in contravention of the provisions of Sec. 11 or offends against the provisions of that section on the date of commencement of the proceedings; or

(c) That the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.

Section 33. Saving for vested rights

Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling in relation to goods 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 by the proprietor or a predecessor-in-title of this; or

(b) To the date of registration of the first- mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in-title of his;

Whichever is tire earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.

Section 34. Saving for use of name, address or description of goods

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 bonafide description of the character or quality of his goods.

Section 35. Saving for words used as name or description of an article or substance

(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:

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 by a person or persons carrying on a trade therein, not being used in relation to goods 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) goods 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 Cl. (a) or Cl. (b), of the proviso to sub-section (1) are proved with respect to any words, then,-

(a) For the purposes of any proceedings under Sec. 56-

(i) 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, shall be deemed to be an entry wrongly remaining on the register:

(ii) If the trade mark contains such words and other matter, the Tribunal in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register require as a condition thereof that the proprietor shall disclaim any exclusive right to the use in relation to that article or substance and any goods of the same description, of such words:

Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of’ the registration of the trade mark in respect of which the disclaimer is made;

(b) For the purposes of any other legal proceeding 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 in relation to the article or substance in question or to any goods of the same description; or

(ii) If the trade mark contains such words and other matter, all such rights of the proprietor to the use of such words, in such relation as aforesaid;

Shall be deemed to have ceased on the date at which the use mentioned in Cl. (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 Cl. (b) of the said proviso.

Section 36. Power of registered proprietor to assign and give receipts

The person for the time being entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.

Section 37. Assignability and transmissibility of registered trade marks

Notwithstanding anything in any other law to the contrary, a registered trade mark shall subject to the provisions of this Chapter, assignable be and transmissible, Whether with or without the goodwill of the business Concerned and in respect either Of all the goods in respect of which the trade mark is registered or of Some only of the those goods.

Section 38. Assignability and transmissibility of unregistered trade marks

(1) An unregistered trade Mark shall not be assignable or transmissible except along with the goodwill of the business Concerned.

(2) Notwithstanding anything contained in sub-section (1), an unregistered trade mark may be assigned or transmitted otherwise than along with the goodwill of the business concerned if-

(a) At the time of assignment or transmission of the unregistered trade mark, it is used in the same business as a registered trade mark, and

(b) The registered trade mark is assigned or transmitted at the same time and to the same person as the unregistered trade mark; and

(c) The unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.

Section 39. Restrictions on assignment or transmission where multiple exclusive right’s would be created

(1) Notwithstanding any thing in secs. 37 and Sec. 38, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion:

Provided that an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitation imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within India otherwise than for export therefrom, or in relation to goods to be exported to the same market outside India.

(2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only application for the registration under Sec. 44 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.

Section 40. Restrictions on assignment or transmission when exclusive rights would be created in different parts of india

Notwithstanding anything in Sees. 37 and 38, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in any place in India and an exclusive right in another of these persons to the use of trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, in any other place in India:

Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor-in-title of his since the commencement of his Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or Sec. 39 if application for the registration under Sec. 44 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in case of a transmission, was made before that date.

Section 41. Conditions for assignment otherwise than in connection with the goodwill of a business

Where an assignment of a trade mark, whether registered, or unregistered, is made otherwise than in connection with the goodwill of the business in which the mark has been or is used, the assignment shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.

EXPLANATION

For the purposes of this section an assignment of a trade mark of the following description shall not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in which the mark is used, namely:

(a) An assignment of a trade mark in respect only of some of the goods for which the trade mark is registered accompanied by the transfer of the goodwill of the business concerned in those goods only; or

(b) An assignment of a trade mark, which is used in relation to goods, exported from India if the assignment is accompanied by the transfer of the goodwill of the export business only.

Section 42. Assignability and transmissibility of certification trades

A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Central Government, for which application shall be made in writing in the prescribed manner through the Registrar.

Section 43. Assignability and transimssibility of associated trade marks

Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall for all other purposes, be deemed to have been registered as separate trade marks.

Section 44. Registration of assignments and transmissions

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods -in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register:

Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court.

(2) Except for the purpose of an. application before the Registrar under subsection (1), or an appeal from an order thereon, or an application under Sec. 56 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub- section (1) shall not be admitted in evidence by the Registrar or any Court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Court, as the case may be, otherwise directs.

PROVISO TO SEC. 44 (1)-INVESTS RIGHTS TO THE REGISTRAR. -Its bare perusal would go to show that where the validity of an assignment or transmission is in dispute between the parties the Registrar may, in his discretion, refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court. Since the proviso invests the Registrar with such discretion which in the facts and circumstances of the case he may or May not exercise.1

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1. BRAKES INTERNATIONAL V. TILAK RAJ BAGGA, A.I.R. 1998 DELHI 146 AT P. 153.

Section 45. Proposed use of trade mark by company to be formed

(1) No application for the registration of a trade mark in respect of any goods 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 company is about to be formed and registered under the Companies Act, 1956 (1 of 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 by the company.

(2) The Tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.

(3) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods 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, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.

Section 46. Removal from register and imposition of limitations on ground of non-use

(1) Subject to the provisions of Sec. 47, a registered trade mark may be taken of the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to the High Court or to the Registrar 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 by him or, in a case to which the provisions of Sec. 45 apply, by the company concerned, arid that there has in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) That up to a date one month before the date of the application, continuous period of five years or longer has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

Provided that, except where the applicant has been permitted under sub-section (3) of Sec. 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that lie, might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Cl. (a) or Cl. (b) in relation to any goods, 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 goods of the same description, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered-

(a) The circumstances referred to in Cl. (b) of sub-section (1) are shown to exist so far as regards non -use of the traded mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from Initial, or in relation to goods to be exported to a particular market outside India; and

(b) A person has been permitted under sub-section (3) of Sec. 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in rotation to goods to be so sold, or otherwise traded in, Or in relation to goods to be so exported, 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 a High Court 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 Cl. (b) of subsection (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 and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.

Section 47. Defensive registration of well known trade marks

(1). When a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in Sec. 46, the mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark, and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.

(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.

(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registration are in respect of different goods, be deemed to be and shall be registered as associated trade marks.

(4) On application made in the prescribed manner to a High Court or to the Registrar, by any person aggrieved, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of sub-section (1) are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor other-wise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is registered as a defensive trade mark on the ground that there is a no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in sub-section (1).

(5) The Registrar may at any time cancel the registration as a defensive trade mark or a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.

(6) Except as otherwise expressly provided in this section the provisions of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.

Section 48. Registered users

(1) Subject to the provisions of Sec. 49, a person other than registered proprietor of a trade mark may be registered as the registered user thereof in respect of any or all of the goods in respect of which the trade mark is registered otherwise than as a defensive trade mark; but the Central Government may, by rules made in this behalf, provide that no application for registration as such shall be entertained unless the agreement between the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks.

(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 Sec. 46 or for any other purpose for which such use is material under this Act or any other law.

Section 49. Application for registration as registered users

(1) Where it is proposed that a person should be 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-

(i) 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

(ii) An affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf, –

(a) Giving particulars of the relationship, existing or proposed, between the 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 to persons for whose registration as registered users application may be made;

(b) Stating the goods in respect of which registration is proposed;

(c) Stating the conditions or restrictions, if any, proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter;

(d) 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

(iii) 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 complied with to his satisfaction, the Registrar shall forward the application together with his report and all the relevant documents to the Central Government.

(3) On receipt of an application under sub-section (2), the Central Government, having regard to all the circumstances of the case and to the interests of the general public, and the development of any industry, trade or commerce in India, may direct the Registrar-

(a) To refuse the application; or

(b) To accept the application either absolutely or subject to any conditions, restrictions or limitations which the Central Government may think proper to impose:

Provided that no direction for refusing the application or for its acceptance conditionally shall be made unless the applicant has been given an opportunity of being heard.

(4) The Registrar shall dispose of the application in accordance with the directions issued by the Central Government under sub-section (3).

(5) The Central Government and 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.

(6) The Registrar shall issue notice in the prescribed manner of the registration of a person as a registered user, to the registered users of the trade mark, if any.

Section 50. Existing registration of registered users not to have effect after three years

Notwithstanding anything contained in any law for the time being in force or in any contract or agreement, every registration made before the commencement of this Act of a registered user shall cease to have effect after the expiration of three years from such commencement.

Section 51. Power of registered user to take proceedings against infringement

(1) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof and if the proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.

(2) Notwithstanding anything contained in any other law, a proprietor so added, as defendant shall be liable for any costs unless he enters an appearance and takes part in the proceedings.

Section 52. Power of registrar to take vary or cancel registration as registered user

(1) Without prejudice the provisions of See. 56, to the registration of a person as a registered user-

(a) May be varied by the Registrar as regards the goods in respect of which or any conditions or restrictions subject to 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 grounds, namely:

(i) That the registered user has used the trade mark otherwise than by way of the permitted use, or in such a 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 have justified the refusal of the application for 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 have justified the refusal of an application for 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 of his own motion or on the application in writing in the prescribed manner of 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 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 in relation to which the trade mark is no longer registered.

(2) The Registrar shall, before varying any registration under Cl. (a) of sub-section (1) or canceling any registration on any of the grounds mentioned in sub-clause (ii) or sub- clause (iii) of sub-clause (iv) of Cl. (c) of that subsection, forward the application made in that behalf for the consideration of the Central Government and the Central Government may, after making such inquiry as it thinks fit, issue such directions to the Registrar as it thinks fit, and the Registrar shall dispose of’ the application in accordance with such directions.

(3) The Registrar shall issue notice in the prescribed manner of every application under this section to the registered proprietor and each registered user (not being the applicant) of trade mark.

Section 53. 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 (1)

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, it’ 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 re-constituted firm may use the trade mark, if otherwise in force, only for so long as any partner of the original firm at the time on its registration as registered user, continues to be a partner of the reconstituted firm.

EXPLANATION (2)

For the purpose of Exp. 1, “firm” has the same meaning as in the Indian Partnership Act, 1932 (9 of’ 1932).

Section 54. Use of one of associated or substantially identical trade 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 registered associated 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 purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in accordance with sub- section (1) of Sec. 15 in the name of the same proprietor.

Section 55. 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 and any other act done in India in relation to goods to be so exported which, if done in relation to goods to be sold 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 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 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 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.

Section 56. Power to cancel or vary registration and to rectify the register

(1) Or application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The Tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The Tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

(5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

(6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.

Section 57. Correction of register

(1) The Registrar may, on application made in the prescribed manner by the registered proprietor,-

(a) Correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark;

(b) Enter any change in the name, address and description of the person who is registered as proprietor of a trade mark;

(c) Cancel the entry of a trade mark on the register:

(d) Strike out any goods or classes of goods from those in respect of which a trade mark is registered;

(e) Enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark, and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, address or description of the registered user.

Section 58. Alteration of registered trade marks

(1) The registered proprietor of trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.

(3) Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).

Section 59. Adaptation of entries in register to amended or substituted classification of goods

(1) The Registrar shall not, in exercise of any power conferred on him by rules made with reference to Cl. (a) of sub- section (2) of Sec. 133, make any amendment of the register which would have the effect of adding any goods or class of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods:

Provided that this sub-section shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as case may be, would not affect any substantial quantity of goods and would riot substantially prejudice the rights of any person.

(2) A proposal so to amend the register shall be notified to the registered proprietor of the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provision of’ sub-section (1).

Section 60. Certain provisions of this act not applicable to certification trade mark

The following provisions of this Act shall not apply to certification trade marks, that is to say, –

(a) Section 9;

(b) Sections 18, 20 and 21, except as expressly applied by this Chapter;

(c) Sections 28, 29, 30, 39, 40, 41, 45, 46, 47, 48, 49, 51, 52, 53, and sub-section (2) of Sec. 55;

(d) Chapter X, except Sec. 81;

(e) Any provision the operation of which is limited by the terms;

Section 61. Registration of certification trade mark

(1) A certification trade mark shall be registrable only in Part A of the register.

(2) 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.

(3) In determining whether a certification trade mark is adapted to distinguish in accordance with the provisions of Cl. (c) of sub-section (1) of Sec. 2, the Tribunal may have regard to the extent to which-

(a) The mark is inherently so adapted distinguish in relation to the goods in question; and

(b) by reason of the use of the mark or of any other circumstances, mark is in fact so adapted to distinguish in relation to the goods in question.

Section 63. Consideration of application for registration by central government

(1) When authorisation to proceed with an application under Sec. 62 has been given, the Registrar shall forward the application to the Central Government.

(2) The Central Government shall consider the application so forwarded 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 regulation to be deposited under Sec. 65 is satisfactory:

(c) Whether in all the circumstances the registration applied for would be to the public advantage, and may either-

(i) Direct that the application shall not be accepted; or

(ii) Direct the Registrar to accept the application and approve the said draft of the regulations either without modification and unconditionally or subject to any conditions of limitations, or to any amendments or modification of the application or of the regulations, which it thinks requisite having regard to any of the said matters.

(3) Except in the case of a direction for acceptance and approval without modification and unconditionally the Central Government shall not decide any matter under sub-section (2) without giving to the applicant an opportunity of being heard.

(4) Notwithstanding anything contained in this section, the Central Government may, at the request of the applicant made through the Registrar, consider the application with regard to any of the matters referred to in sub-section (2) before authorisation to proceed with the application is given, but the Central Government shall be at liberty to re-consider any matter on which it has given a decision under this sub-section if any amendment of modification is thereafter made in the application or in the draft of the regulations.

Section 64. Opposition to registration of certification trade marks

(1) 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 Sec. 21 shall apply in relation to the registration of the mark as they apply in relation to an application under Sec. 18.

(2) In deciding any matter relating to opposition proceedings under the provisions aforesaid the Tribunal shall have regard only to the considerations referred to in sub-section (3) of Sec. 62, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Central Government under sub-section (3) of this section of any opposition relating to any of the matters referred to in Sec. 63.

(3) When notice of opposition is given relating to any of the matters referred to in Sec. 63, the Central Government shall, after hearing the parties, if so required by them, and considering any evidence and having regard to the matters aforesaid, direct the Registrar-

(a) To refuse registration; or

(b) To register the mark either absolutely or subject to such conditions or limitations, or amendments or mofidications of the application or of the regulations to be deposited under Sec. 65, as the Central Government may think proper to impose or make, and the Registrar shall dispose of the matter in accordance with the directions issued by the Central Government under this sub- section.

Section 65. Deposit of regulations governing the use of a certification trade marks

(1) There shall be deposited at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulation approved by the Central Government for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the certification trade mark, and may contain any other provisions which the Central Government 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 deposited shall be open to inspection in like manner as the register.

(2) The regulation so deposited may on the application of the registered proprietor be altered by the Registrar with the consent of the Central Government.

(3) The Central Government may cause such application to be advertised in any case where it appears to it does so, if within the time specified in the advertisement any person gives notice of opposition to the application, the Central Government shall not decide the matter without giving the parties an opportunity of being heard.

Section 66. Rights conferred by registration of certification trade marks

(1) Subject to the provisions of Sees. 33, 34 and 68, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods.

(2) The exclusive tight 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.

Section 67. Infringements of certification trade marks

The right conferred by such person who, not being the registered proprietor mark or a person authorised by him in that behalf under regulations deposited under Sec. 65, 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 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 used as a trade mark .

Section 68. Acts not constituting arrangement 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 registered certification trade marks:

(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 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 certified by the proprietor of the mark if, as to those goods 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 goods 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 are so adapted and neither the purpose nor the effect of the use of mark to indicate otherwise than in accordance with the fact that the goods 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, notwithstanding that they are such goods as are mentioned in that clause if such application is contrary to the regulations refered 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.

Section 69. Cancellation or varying of registration

The Central Government may, on the application in the prescribed manner of any person aggrieved or on the recommendation of the Registrar, and after giving the proprietor an opportunity of opposing the application or recommendation, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on any of the following grounds, namely:

(a) That the proprietor is no longer competent, in the case of any of the goods in respect of which the mark is registered, to certify those goods;

(b) That the proprietor has failed to observe any provisions of the deposited regulations to be observed on his part;

(c) That it is so 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. and neither a High Court nor the Registrar shall have any jurisdiction to make an order under Sec. 56 on any of those grounds

Section 70. Registrar to give effect to orders of central government

The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made by the Central Government under Sec. 69.

Section 71. Textile goods

The Central Government may prescribe classes of goods (in this Chapter referred to as textile goods) to the trade marks used in relation to which the provisions of this Chapter shall apply; and subject to the said provisions, the other provisions of this Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods.

Section 72. Restriction on registration of textile goods

(1) In respect of textile goods being piece goods-

(a) No mark consisting of a line heading alone shall be registrable as a trade mark;

(b) A line heading shall not be deemed to be adapted to distinguish;

(c) The registration of a trade mark shall not give any exclusive right to the use of a line heading.

(2) In respect of any textile goods the registration of letters of numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.

Section 73. Refused textile marks list

(1) No addition shall, after the commencements of this Act, be made to the Refused Textile Marks List maintained under the Trade Marks ACT, 1940 (5 OF 1940).

(2) A mark already entered on the Refused Textile Marks List may, however, be continued to be so entered:

Provided that an application therefor is made in the prescribed manner and with the prescribed fee within one year after the commencement of this Act, in which case it will be retained in the List for a period of Seven years from the date of the application.

Section 74. Stamping of piece goods, cotton yarn and thread

(1) Piece goods, such as, are ordinarily sold by length or by the piece, which have been manufactured, bleached, dyed, -printed or finished in premises which are a factory, as defined in the Factories Act, 1948 (63 of 1948), shall not be removed for sale from the last of such premises in which they underwent any of the said processes without having conspicuously stamped in international form of’ Indian numerals on each piece the length thereof in standard yards, or in standard yards and a fraction of such a yard, or in standard metres, or in standard metres and a fraction of such a metre, according to the real length of the piece, and, except when the goods are sold from the factory for export from India, without being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in India of the piece.

(2) Cotton yarn such as is ordinarily sold in bundles, and cotton thread, namely, sewing, darning crochet or handicraft thread, which have been manufactured, bleached, dyed or finished in any premises not exempted by the rules made under Sec. 75 shall not be removed for sale from those premises unless, in accordance with the said rules in the case of yarn-

(a) The bundles are conspicuously marked with an indication of the weight of yarn in the English or the metric system in each bundle; and

(b) The count of the yarn contained in the bundle and in the case of thread each unit is conspicuously marked with the length or weight of thread in the unit and in such other manner as may be required by the said rules, and

(c) Except where the goods are sold from the premises for export from India, unless each bundle or unit is conspicuously marked with the name of the manufacturer or of the wholesale purchaser in India of the goods:

Provided that the rules made under Sec. 75 shall exempt all premises where the work is done by members of one family with or without the assistance of not more than ten other employees, and all premises controlled by a cooperative society where not more than twenty workers are employed in the premises.

Section 75. Determination of character of textile goods by sampling

(1) For the purposes of this Act, the Central Government may make rules,-

(a) T provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, gauge or weight, for the number of samples to be selected and tested and for the selection of the samples;

(b) To provide for the, manner in which for the purposes of Sec. 74 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dyeing or finishing of cotton. yarn or cotton thread from the provisions of that section: and

(c) declaring what classes of goods are included in the expression “piece goods such as are ordinary sold by length or by the piece” for the purpose of Sec. 74 of this Act or Sec. 18 of the Sea Customs Act, 1878 (S of 1878).

(2) With respect to any goods for the selection and testing of samples of which provision is not made in any rules for the time being in force under sub-section (1), the Court or officer of customs, as the case may be, having occasion to ascertain the number, quantity, measure, gauge or weight of the goods, shall, by order in writing, determine the number of samples to be selected and tested and the manner in which the samples are to be selected.

(3) The average of the results of the testing in pursuance of rules under sub-section (1) or of an order under sub-section (2) shall be prima facie evidence of the number, quantity, measure, gauge or weight, as the case may be, of the goods.

(4) If a person having any claim to, or in relation to, any -goods of which samples have been selected and tested in pursuance of rules under sub-section (2), or of an order under sub-section (1), desires that any further samples of the goods be selected and tested, such further samples shall, on his written application and on the payment in advance by him to the Court or officer of customs, as the case may be, of such sums for defraying the cost of the further selection and testing as the Court or officer may from time to time require, be selected and tested to such extent as may be permitted by rules made by the Central Government in this behalf or as, in the case of goods with respect to which provision is not made in such rules, the Court or officer of customs may determine in the circumstances to be reasonable, the samples being selected in the manner prescribed under sub-section (1), or in sub-section (2), as the case may be.

(5) The average of the results of the testing referred to in sub- section (3)and of the further testing under sub-section (4) shall be conclusive proof of the number, quantity, measure, gauge or weight, as the case may be, of the goods.

Section 76. Meaning of applying trade marks and trade descriptions

(1) A person shall be deemed to apply a trade mark or mark or: trade description to goods who-

(a) Applies it to the goods themselves; or

(b) Applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or

(c) Places, encloses, or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade mark or mark or trade description has been applied; or

(d) Uses a trade mark or mark or trade description in any manner reasonably likely to lead to the belief that the goods in connection with which it is used are designated or described by that trade mark or mark or trade description; or

(e) In relation to the goods uses a trade mark or trade description in any sign, advertisement, invoice, catalogue, business letter, business Paper, price list, or other Commercial document, and good are reference to the trade mark or trade description as so used.

(2) A trade mark or mark or trade description shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.

Section 77. Falsifying and falsely applying trade marks

(1) A person shall be deemed to falsify a trade mark who, either,-

(a) Without the assent. of the proprietor of the trade nearly makes that trade mark or a deceptively similar mark: or

(b) Falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.

(2) A person shall be deemed to falsely apply to goods a trade mark who, without the assent of the proprietor of the trade mark,-

(a) Applies such trade mark or a deceptively similar mark, to goods or any package containing goods;

(b) Uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling, or wrapping therein any goods other than the genuine goods Of the proprietor of the trade mark.

(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods, the burden of proving the assent of the proprietor shall lie on the accused.

Section 78. Penalty for applying false trade marks, trade descriptions, etc

(a) Falsifies any trade mark; or

(b) Falsely applies to goods any trade mark; or

(c) Makes, dispose of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying, or of being used for falsifying, a trade, mark; or –

(d) Applies any false trade description to goods, or

(e) Applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied under See. 117, a false indication of such country, place, name or address; or

(f) Tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under Sec. 117; or

(g) Causes any of the things above mentioned in this section to lie done, shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which may extend to two years, or with fine, or with both:

Provided that where the offence under this section is in relation to goods or any package containing goods which are drugs within ‘the Hearing of Cl. (b) of Sec. 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940) or “food” as defined in Cl. (v) of Sec. 2 of the Prevention of Food Adulteration Act, 1954 (37 of 1954) the offender shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.

APPLICABILITY OF SEC. 300-(I), C.R.P. C. -In the instant case, the seizure of different bundles of beedies from the premises in question indicates that the person responsible for manufacturing those beedies was guilty of violating three different registered trade marks. The infringement of such trade mark was a separate and distinct offence under Sees. 78 and 79 of the Trade and Merchandise Marks Act, 1958. That being so, the learned Magistrate was clearly in error in coming to the conclusion that sub-section (1) of Sec. 300 of the Code was attracted. In fact, the accused were never tried nor could they have been tried for the infringement of the trade mark belonging to the petitioner’s principal in the earlier two cases. Those two cases dealt with distinct and separate offences pertaining to two different trade marks. The learned Magistrate was in error in thinking that the case fell within the purview of sub-section (1) of Sec. 300 of the Code.1

PENAL PROVISION. -The law in its wisdom seeks to punish the guilty who commits the sin, and not the person who is innocent.2

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1. Mangalprasad Jethalal Upadhyay v. Thakkar Anaji Ranchhoddas, 1983 Cr. L.J. 309 at pp. 312, 313: Sumeet Machines P. Ltd. v. Sumeet Research and Holdings Ltd., 1993 L.W. (Cr.) 40 at p. 47 (Mad.).

2. A.B Sulochana v. c. Dharmalingam, A.I.R. 1987 S.C. 242 at p. 244.

Section 79. Venality for selling goods to which a false trademark or false traded description is applied

Any person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or manufacture, any goods or things to which any false trade mark or false description is applied or which, being required under Sec. 117 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer or the person for whom the goods are manufactured, are without the indication so required, shall, unless, lie proves,-

(a) That, having taken all reasonable precautions against committing an offence against this section, he had at the time of the committed of the alleged offence no reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods; and

(b) That, on demand by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods or things, or

(c) That otherwise he had acted innocently, be punishable with imprisonment for a term which may extend to two years or with fine, or with both:

Provided that when the offence against this section is in relation to goods or any package containing goods which are drugs as defined in Cl. (b) of Sec. 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940) or “food” as defined in Cl. (v) of Sec. 2 of the Prevention of Food Adulteration Act, 1954 (37 of 1954) the offender shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both. by anyone outside the territory by post, as has been done by the plaintiff, for the purpose of present proceedings, but that would not be sufficient to give cause of action for the suit. Defendant had admittedly advertised his product in a local Bikaner newspaper and no deliberate act of the defendant could be said to be committed within this jurisdiction. If the newspaper had wider publication or was freely sold in other jurisdictions or if the defendant had given the insertion with the intention of a wider publicity, the position would have been different. On the existing material, prima facie, it would be doubtful if the Delhi High Court would have jurisdiction to deal with this cause of action.1

SUIT FOR INFRINGEMENT OF TRADE MARK-INTERM INJUNCTION WHEN CANNOT BE GRANTED. -As for Harsha the plaintiffs registration is of the year 1975 and the plaintiff was apparently not using it in February, 1975 when the plaintiff served a notice on the defendant because the wrongful use of the trade mark Harsha was not mentioned in the notice. That apart, defendants have placed on record not only the various newspapers in which they have been extensively advertising the mark but also the bills for the period 1965 onwards which would appear to show that the defendants had been either manufacturing, marketing or dealing in sewing machines with this trade mark since 1965. It would, thus, appear that there would be very little apprehension of any confusion in the course of trade of any attempt to pass off the goods of the defendant as that of the plaintiff because, by and large, the plaintiff does not deal with the proverbial “unwary customer”, who is likely to be confused. Thus it is clear a view that no restraint would be justified on the facts and circumstances of this case. 2

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1. Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co., Bikaner, A.I.R. 1982 Delhi 230 at p. 231.

2. ibid. at pp. 232. 233: Power Control and Appliances Co. v. Sumeet Machines Pvt. Ltd.. A.I.R. 1993 Mad. 120 at p. 128, 129.

Section 80. Penalty for removing piece goods, etc. Contrary to sec. 74

If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in Sec. 74, or sells or exposes for sale or has in his possession for sale or for any purpose of trade manufacture piece goods or cotton yarn or cotton thread, which is not marked as required by that section every such piece and every such bundle of yam and all such thread and everything used for the packing thereof shall be forfeited to Government and such persons shall be punishable with fine which may extend to one thousand rupees.

Section 81. Penalty for falsely representing a trade marks as registered

(1) No person shall make any representation-

(a) With respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or

(b) With respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or

(c) To the effect that a registered trade mark is registered in respect of any goods in respect of which it is not in fact registered; or

(d) To the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not in fact give that right.

(2) If any person contravenes any of the provisions of sub- section (1), he shall be punishable with imprisonment for a term, which may extend to six months, or with fine, which may extend to five hundred rupees, or with both.

(3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered” or of any other expression whether expressly or implicitly to registration, shall be deemed to import a reference to registration in the register, except-

(a) Where that word or other expression is used in direct association with other words delineated in characters at least as large as those in which that word or other expression is delineated and indicating that the reference is to registration as a trade mark under the law of- a Country outside India being a country under the law of which the registration referred to is in fact in force; or

(b) Where that, other expression is of itself such as to indicate that the reference is to such registration as is mentioned in Cl. (a): or

(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India India in relation soley to goods to be exported to that country.

Section 82. Penalty for Improperly describing a place of business as connected with the trade marks office

If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that is place of business is or is officially connected with, the Trade Marks Office, lie shall be pubnishable with imprisonment for a term which may extend to six months, or with fine, or with both.

Section 83. Penalty for falsification of entries in the register

If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing knowing, the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Section 84. No offence in certain cases

The provisions of Sees. 77, 78 and 79 shall, in relation to registered trade -nark or proprietor of such mark, be subject to the rights created or recognised by this Act, and no act or omission shall be deemed to be an offence under Sec. 77 or Sec. 78 or Sec. 79 if,-

(a) The alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and

(b) The alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law for the time being in force.

Section 85. Forfeiture of goods

(1) Where a person is convicted of an offence under Sec. 78 or Sec. 79 or is acquitted of an offence under Sec. 78 on proof that he acted without intent to defraud, or under Sec. 79 on proof of the matters specified in Cls. (a), (b) and (c) of the section, the Court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed, or but for such proof as aforesaid would have been committed.

(2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.

(3) When Then a forfeiture is directed on an acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thirty days from the date of the direction, to the Court to which in appealable cases appeals lie from sentences of the Court which directed the forfeiture.

(4) When a forfeiture is directed on a conviction the Court, before whom the person is convicted, may order any forfeited articles to be destroyed or otherwise disposed of as the Court thinks fit.

Section 86. Exemption of certain persons employed in ordinary course of business

Where a person accused of an offence under Sec. 78 proves–

(a) That in the ordinary course of his business he is employed on behalf of other persons to apply trade marks or trade description, or, as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making trade marks; and

(b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other things by way of profit or commission dependent on the sale on such goods; and

(c) That, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commissions of the alleged offence, no reason to suspect the genuineness of the trade mark or trade description; and

(d) That, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the trade mark or trade description was applied he shall be acquitted.

Section 87. Procedure where invalidity of registration is pleaded by the accused

(1) Where the offence charged under Sec. 78 or Sec. 79 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed:

(a) If the Magistrate is satisfied that such defence is prima facie tenable, he shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act, for the rectification of the register on the ground that the registration is invalid:

(b) If the accused proves to the Magistrate that he has made such application within the time so limited or within such further time as the Magistrate may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification and of the appeal, if any, therefrom:

(c) If within a period of three months or within such extended time as may be allowed by the Magistrate, the accused fails to apply to the High Court for rectification of the register, the Magistrate shall proceed with the case as if the registration were valid.

(2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the Tribunal, the Magistrate shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.

Section 88. Offences by companies

(1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company, and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of, any director, manager, secretary or other officer of the company such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

EXPLANATION

For the purposes of this section, –

(a) “Company” means any body corporate and includes a firm or other association of individuals, and

(b) “Director” in relation to a firm means a partner in the firm.

Section 89. Cognizance of certain offences

(1) No Court shall take cognizance of an offence under Sec. 8 1, Sec. 82 or Sec. 83 except on complaint in writing made by the Registrar or any officer authorised by him in writing.

(2) No Court inferior to that of a Sessions Judge, Presidency Magistrate or Magistrate of the first class shall try an offence under this Act.

Section 90. Evidence of origin of goods imported by sea

In the case of goods brought into India by sea, evidence of the port of shipment shall, in a prosecution or an offence under this Act or under Cl. (d), Cl. (dd), Cl. (e), Cl. (0, Cl. (h), Cl.(i) or Cl. 0) of Sec. 18 of the Sea Customs Act, 1878 (8 of 1878), be prima facie evidence of the place or country in which the goods were made or produced.

Section 91. Costs of defence or procession

In any prosecution under this Act the Court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the Court deemed reasonable having regard to all the circumstances of the case and the conduct of the parties. Costs so awarded shall be recoverable as if they were a fine.

Section 92. Limitation of prosecution

No. Prosecution for an Offence under this Act or under Cl. (d), Cl. (dd), Cl. (e), Cl. (f), Cl. (h), Cl. (i) or Cl. (j) of Sec. 18 of the Sea Customs Act, 1878 (8 of 1878), shall be Commenced after the expiration of three years next after the commission of the offence charged, or two years after the discovery thereof by the prosecutor, whichever expriration first happens.

Section 93. Information as to commission of offence

An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter, shall not be compelled in any Court to say whence he got any information as to the commission of any offence against this Act.

Section 94. Punishment of abetment in india of acts done out of india

If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment which he would be liable if he had himself committed in that place the act which he abetted.

Section 95. Instruction by central government as to permissible variations to be observed by criminal courts

The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity , measure, gauge or weight, which are to be recognised by Criminal Courts as permissble in the case of any goods.

Section 96. Implied warranty on sale of marked goods

On the sale or in the contract for the sale of any goods to which a trade mark or mark or trade description has been applied, 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 some writing signed by or on behalf of the seller and delivered at the time of the sale or contract to and accepted by the buyer.

Section 97. Power 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 commission for the examination of witnesses;

(b) The Registrar may, subject to any rules made in this behalf under Sec. 133, 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 to authorise the use of the mark:

(c) The Registrar may, on an application made in the, prescribed manner, review his own decision.

Section 98. Exercise of discretionary power by registrar

Subject to the provisions of Sec. 101, 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 presibed time) giving to that person an opportunity of being heard.

Section 99. Evidence before the 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.

Section 100. Death of party to a proceeding

If a person who is a party to a proceeding under this Act (not being a proceeding in 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-iii-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.

Section 101. 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 the 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 notify 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.

Section 102. 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 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.

Section 103. 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 in Part A or Part B of the register, give advice as to whether the trade mark appears to him prima facie to be inherently adapted to distinguish, or capably of distinguishing as the case may be.

(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 adapted to distinguish, or is not capable of distinguishing, as the case may 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.

Section 104. Procedure before central government

In all proceedings under this Act before the Central Government, evidence shall given by the affidavit:

Provided that the Central Government May, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purpose have all the powers of a Civil Court referred to in Cl. (a) of Sec. 97.

Section 105. Suit for infringement, etc. To be instituted before district court

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 plaintiff’s trade mark whether registered or unregistered,

Shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.

Section 106. Reliefs 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 Sec. 105, includes an injunction (subject to such terms, if any, as the Court thinks fit) and the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

(2) Notwithstanding anything contained in sub-section (1), the Court shall not grant relief by way of damages (other than nominal damages) or an 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

(b) Where in a suit for infringement the defendant satisfies the Court-

(i) That at the time he commenced to uses 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 registered user using by way of permitted use; and

(ii) That when he became aware of the existence and nature of the plaintiffs right in the trade mark, he forthwith ceased to use the trade mark in relation to goods 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 plaintiffs trade mark, he forthwith ceased to use the trade mark complained of.

Section 107. Application for rectification op register to be made to high court 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 Cl. (d) of sub-section (1) of Sec. 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 not-withstanding anything contain in Sec. 46, sub-section (4) of Sec. 47 or Sec. 56, such application shall be made to the High Court and not to the Registrar.

(2) Subject to the provisions of subsection (1) where an application for rectification of the register made to the Registrar under Sec. 46 or sub-section (4) of Sec. 47 or Sec. 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court.

Section 108. Procedure for application for rectification before a high court

(1) An application for rectification of the register made to a High Court under Sec. 46, sub-section (4) of Sec. 47 or Sec. 56 shall be in such from and shall contain such particulars as may be prescribed.

(2) Every such application shall be heard by a single Judge of the High Court:

Provided that any such Judge may, if he thinks fit, refer the application at any stage of the proceedings for decision to a Bench of that High Court.

(3) Where any such application is heard by a single Judge of the High Court, an appeal shall lie from the order made by him on application to a Bench of the High Court.

(4) Subject to the provision of this Act and the rules made thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of 1908), shall apply to applications to a High Court under this section.

(5) A certified copy of every order or judgment of the High Court or of the Supreme Court, as the case may be, relating to a registered trade mark under this section shall be communicated to the Registrar by that Court and the Registrar shall give effect to the order of the Court and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

Section 109. Appeals

(1) No appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government or from any act or order of the Registrar for purpose of giving effect to any such decision, order or direction.

(2) Save as otherwise expressly provided in sub-section (1) or in any other provision of this Act, an appeal shall lie to the High Court within the prescribed period from any order or decision of the Registrar under this Act or the rules made thereunder.

(3) Every such appeal shall be preferred by petition in writing and shall be in such form and shall contain such particulars as may be prescribed.

(4) Every such appeal shall be heard by a single Judge of the High Court:

Provided that any such Judge may, if lie so thinks fit, refer the appeal at any stage of the proceeding to a Bench of the High Court.

(5) Where an appeal is heard by a single Judge, a further appeal shall lie to a Bench of the High Court.

(6) The High Court in disposing of an appeal under this section shall have the power to make any order which the Registrar could make under this Act.

(7) In an appeal by an applicant for registration against a decision of the Registrar under Sec. 17 or Sec. 18 or Sec. 2 1, it shall not be open, save with the express permission of the Court, to the Registrar or any party opposing the appeal to advance grounds other than those recorded in the said decision or advanced by the party in the proceeding before the Registrar, as the case may be, and where any such additional grounds are advanced, the applicant for registration may, on giving notice in the prescribed manner, withdraw his application without being liable to pay the costs of the Registrar or the parties opposing his application.

(8) Subject to the provisions of this Act and of the rules made thereunder, the provisions of the Code of Civil Procedure, 1908 (5 of 1908), shall apply to appeals before a High Court under this Act.

Section 110. Power of high courts to make rules

The High Court may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it.

Section 111. Stay of proceedings where the validity of registration of the trade mark is questioned etc

(1) An application for rectification of the register made to a High Court under section 46, sub section (4) of sec. 47 or Sec. 56 shall be such from and shall contain such particulars as may be prescribed.

(2) Every such application shall be heard by a single Judge of the High Court:

Provided that any such Judge may, if he thinks fit, refer the application at any stage of the proceedings for decision to a Bench of that High Court:

(a) The defendant pleads’s the registration of the plaintiff’s trade mark is invalid; or

(b) The defendant raises a defence under Cl. (d) of sub-section (1) of Sec. 30 and the plaintiff pleads the invalidity of the 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 plaintiffs or defendant’s trade mark are pending before the Registrar or the High Court, 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 plaintiff s 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 High Court 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 Cl. (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 validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the Court making any interlocutory order (including any order granting an injunction, directing accounts to be kept, appointing a Receiver or attaching any property), during the period of the stay of the suit.

Section 112. Appearance of register in legal proceedings

(1) The Registrar shall have the right to appear and be heard-

(a) In any legal proceeding before a High Court in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;

(b) In any appeal to the High Court from an order of the Registrar on an application for registration of a trade mark-

(i) Which is not opposed, and the application is either refused by the Registrar or is accepted by him subjected to any amendments, modifications, conditions, or limitations or

(ii) Which has been opposed and the Registrar considers that his appearance is necessary in the public interest,

In addition, the Registrar shall appear in any case if so directed by the Court.

(2) Unless the High Court otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing, signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue, or of the grounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.

Section 113. Costs of registrar in proceedings before high court

In all proceedings under this Act before a High Court the costs of the Registrar shall be in the discretion of the High Court, but the Registrar shall not be ordered to pay the costs of any of the parties.

Section 114. Registered user to be impleaded in certain proceedings

(1) In every proceeding under Chapter VII or under Sec. 109, 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

(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.

Section 115. 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 Sec. 125, purporting to be certified by the Registrar and scaled 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 thing having been done or not done.

Section 116. Registrar and other officer not compellable to produce register, etc

The Registrar or any other 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 of special cause.

Section 117. 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 the 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 interest 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 Sec. 23 of the General Clauses Act, 1897 (10 of 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 1[Commissioner of Customs] is satisfied at the time of importation that they are intended for exportation whether after transshipment in or transit through India or other-wise.

——————–

1. Subs. by the Finance Act, 1995 (22 of 1995), Sec. 88, for the words “Chief Customs Officers”.

Section 118. Power to require information in respect of imported goods bearing false trade marks

(1) Where goods, which are prohibited to be imported into India Under Cl. d), Cl. (dd), Cl. (e), Cl.(f), Cl. (h), Cl. (i) Cl. (j) of Sec. 18 of the Sea Customs Act, 1878 (8 of 1878), and are liable to detention and confiscation on importation under that Act, are imported into India, the 1[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 at-id 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.

(2) The importer or his agent shall, within fourteen days, comply with requirement as aforesaid, and if he fails to do so he shall be punishable with fine which may extend to five hundred rupees.

(3) Any information obtained from the importer of the -foods or, its agent under this section may be communicated by the 1[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.

——————–

1. Subs. by the Finance Act, 1995 (22 of 1995), Sec. 55, for the words “Chief Customs Officers”.

Section 119. Certificate of validity

If in any legal proceeding for rectification of the register before a High Court 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 High Court 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 judgment in his favour affirming the validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges and expenses as between legal practitioner and client.

Section 120. Groundless threats of legal proceedings

(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceedings 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 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 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 subsection (1) of Sec. 51, 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 mark’s 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 interior to a District Court.

Section 121. Address for service

An address for service stated in an application or notice of opposition shall for the purpose 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.

Section 122. Trade usage, etc. To be taken into consideration

In any suit or other proceeding relating to a trade mark, the Tribunal shall admit evidence of the usage of the trade concerned and of an relevant trade mark or trade name or get up legitimately used by other person. –

Section 123. 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.

Section 124. 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 registrations 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.

Section 125. Documents open to public inspection

(1) Save as otherwise provided in sub-section (5) of Sec. 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 Sec. 65, and all applications under Sec. 66 for varying such regulations;

(d) The index mentioned in Sec. 124: 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 as the Trade Marks Registry.

(2) Any person may, on 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).

Section 126. 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.

Section 127. Fees

(1) There shall be paid in respect of applications and registration and other matters under this Act such fees 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 fee 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 he deemed not to have been filed at the Registry until the fee has been paid.

Section 128. Savings in respect of certain matters in chapter x

Nothing in Chapter X shall-

(a) Exempt any person from any suit or other proceeding which might, but for anything in that Chapter, be brought against him,

(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 Chapter X or against Cl. (d), Cl. (dd), Cl. (e), Cl. (f), Cl. (h), Cl. (i), or Cl. (j) of Sec. 18 of the Sea Customs Act, 1878 (8 of 1878) 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.

Section 129. Declaration as to ownership of trade not registrable under the Indian registration act, 1908

Notwithstanding anything contained in the Indian Registration Act, 1908 (16 of 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.

Section 130. Government to be bound

The provisions of this Act shall be binding on the Government.

Section 131. Special provision relating to application for registration from citizens of convention countries

(1) With a view to the fulfilment of a treaty, convention or arrangement, with any country 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 to be a convention country for the purpose of this Act.

(2) Where a person has made an application for the registration of a trade mark in a convention country 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, 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 and that date shall be deemed for the purpose of this Act to be the date of registration.

(3) Where applications have been made for the registration of trade mark in two or more convention countries, 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.

Section 132. Provisions as to reciprocity

Where any country 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 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 in Part A or Part B of the register,

(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 i-nark under Sec. 49.

Section 133. Power of central government to a rules

(1) The Central Government may, by notification in the Official Gazette and subject to the conditions of previous publication, make rules to carry out the purposes 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:

(a) The classification of goods for the purpose of the registration of trade marks, and the empowering of the Registrar to amend the register so far as may be necessary for the purpose of adapting the entries therein to any amended or substituted classification;

(b) The making of duplicates of trade marks and other documents connected therewith

(c) The securing and regulating the publication, sale or distribution of copies of trade marks and other documents connected therewith;

(d) The additional matters to be entered in the register;

(e) The conditions and restrictions subject to which the register, the Refused Textile Marks List and other document its may be inspected,

(f) The form of certificates or registration;

(g) The further documents, information or evidence, which should accompany an application under sub-section (1) of Sec. 49;

(h) The prescribing of classes of goods as textile goods for the purposes of Sec. 71:

(i) The awarding of cost by the registrar under Sec. 97;

(j) The conditions subject to which a person, may be registered as a trade mark’s agent, and the conditions subject to which an agent referred to in Sec. 123 may act;

(k) The fees to be paid under this Act;

(l) The establishment Of Offices of the Trade Marks Registry for facilitating the working of this Act, the territorial jurisdiction of each office of the Trade Marks Registry and preparation of the copies of the register to be kept at such offices;

(m) The transfer of applications and proceedings pending at the commencement of this Act is any office of the Registry to the appropriate office of the Registry:

(n) The manner in which in proceedings under this Act before the Central Government or the Registrar, applications shall be made, notices given and i-natters advertised;

(o) The times or periods required by this Act to be prescribed,

(p) The regulation generally of the business of the Trade Marks Registry and of the offices established under Cl. (l) and the regulation of all things by this Act placed under the direction or control of the Central Government or the Registrar:

(q) The number of samples to be selected and tested and for the selection of the samples for the purpose of Sec. 75;

(r) The manner in which cotton yarn and cotton thread shall be marked with the particulars required by Sec. 74, and the exemption of certain premises from the provisions of that section;

(s) The classes of goods included in the expression “piece goods” such as are ordinarily sold by length or by the piece” for the purposes of Sec. 74, and Cl. (f) of Sec. 18 of the Sea Customs Act, 1878;

(t) Any other matter which is required to be or may be prescribed.

Section 134. Laying of rules before; parliament

1[Laying of rules before; parliament. Every rule made 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 session aforesaid, both Houses agree in making any modification in the rule or both souses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no annulment shall be without prejudice to the validity of anything 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.]

——————–

1. Subs by Act 4 of 1986, Sec. 2 and Sch. (w.e.f. 15th May, 1986).

Section 135. Amendments

The enactments Specified in the Schedule shall be amended in the Manner Specified therein.

Section 136. Repeals and savings

(1) The Indian Marchandise Marks Act, 1889 (4 of 1889), and the Trade Marks Act, 1940 (5 of 1940), are hereby repealed.

(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorization, consent, application, request, or thing made, issued, given or done under the India Merchandise Marks.

Act, 1889 (4 of 1889), or] the Trade Marks Act, 1940 (5 of 1940), shall, if in force at the commencement of this Act, continue 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) Notwithstanding anything contained in 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.

Schedule

AMENDMENTS

(See Sec. 135)

YearNoShort titleAmendment
186045The Indian Panel Code.(i) In the heading to Chapter XVIII, the words “TRADE OR” shall be omitted.
(ii) In the heading above Sec. 478, the word “trade” shall be omitted;
(iii) Sees. 478 and 480 shall be omitted:
(iv) In Sec. 482, the words “any false trade mark or” shall be omitted;
(v) In Sec. 483, the words “trade mark or” shall be omitted;
(vi) For Sec. 465, the following section shall be substituted, namely-
485. Making or possession of any instrument for counterfeiting a property mark. -Whoever makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a property mark, or has in his possession a property mark for the purpose of denoting that any goods belong to a person to whom they do not belong, shall be punished with imprisonment of either description for a term which may extend to three years, or with fine, or with both,”
18711The specific relief Act, 1877.vii) In Sec. 486, for the words “whoever sells, or exposes, or has in possession for sale or any purpose of trade or manufacture, any goods or things with a counterfeit trade mark or property mark”, the words “Whoever sells, or exposes. or has in possession for sale, any goods or things with a counterfeit property mark” shall substituted.
18711The Specific Relief Act, 1877In Sec. 54, the explanation and illustration (w) shall be omitted.
18788The Sea Customs Act, 1878.In Sec. 18, –
(i) For Cl. (d), the following clause shall be substituted, namely:
(d) Goods having applied thereto a false trade mark within the meaning of Sec. 77 of the Trade and Merchandise Marks Act, 1958;
(dd) Goods having applied thereto a false trade description within the meaning of Cl. (p of sub-section (1) of Sec. 2. of the Trade and Merchandise Marks Act, 1958, otherwise than in relation to any of the matters specified in subclauses (ii) and (iii) of Cl. (u) of that sub-section.”;
(ii) In Cl. (D, in sub-clause (ii), for the words “standard yards”, the words “standard yards or in standard metres” shall be substituted;
(iii) For Cl. (h), the following clause shall be substituted, namely:
(h)Goods, which are required by a notification under Sec. I 1 7 of the Trade and Merchandise Marks Act, 1958, to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer or the person for whom the goods were manufactured unless such goods show such indication applied in the manner specified in the notification,”
(iv) In Cl. (i), in sub-clause (ii) For the words and figures “under Sec. 20 of the Indian Merchandise Marks Act 1989 (4 of 1889), the words and figures “under Sec. 75 of the Trade and Merchandise Marks Act, 1958” shall be substituted;
(v) In Cl. (fl, in sub-clause (ii), for the words and figures “under Sec. 20 of the Indian Merchandise Marks Act, 1889 (4 of 1889)”, the words and figures “under Sec. 75 of the Trade and Merchandise Marks Act, 1958” shall be substituted.
18985The Code of Criminal Procedure, 1898.In Sch. II, –
(i) In the heading to Chapter XVIII, the words “Trade OR” shall be omitted;
(ii) In the heading above Sec. 482 the words “trade and” shall be omitted:
(iii) In the second columns of the entry relating to Sec. 482, the words “trade or” shall be omitted;
(iv) In the second column of the entry relating to Sec. 483, the words “trade or” shall be omitted;
(v) In the second column of the entry relating to Sec. 485, the words “or trade” shall be omitted;
(vi) In the second column of the entry relating to Sec. 486, the words “or trade” shall be omitted.
Bydeb

The Designs Act, 2000

Chapter 1 – Preliminary

Published in the Gazette of India (Extraordinary Part II-Section I) dated May 12, 2000

THE DESIGNS ACT, 2000

No. 16 of 2000

[25th May, 2000]

An Act to consolidate and amend the law relating to protection of designs.

BE it enacted by Parliament in the Fifty first Year of the Republic of India as follows:-

Section 1. Short title, extent and Commencement

(1) This Act may be called the Design Act, 2000.

(2) It extends to the whole of India.

(3) It shall come into force on such date as the Central Government may, by notification, appoint and different dates may be appointed for different provisions of this Act and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

Section 2. Definition

 In this Act, unless there is anything repugnant in the subject or context.

(a) “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately;

(b) “Controller” means the Controller-General of Patents, Designs and Trade Marks referred to in Section 3;

(c) “copyright” means the exclusive right to apply a design to any article in any class in which the design is registered;

 (d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957

(e) “High Court” shall have the same meaning as assigned to it in clause (i) of sub-section (I) of section 2 of the Patents Act, 1970;

(f) “legal representative” means a person who in law represents the estate of a deceased person;

(g) “original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application;

 (h) “Patent Office” means the patent office referred to in section 74 of the Patents Act, 1970.

(i) “prescribed” means prescribed by rules under this Act; and

(j) “proprietor of a new or original design”,-

(i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;

(ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and

(iii) in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.

Chapter II – Registration of Designs

Section 3. Controller and other officers

(1) The Controller General of Patents, Designs and Trade Marks appointed under sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs for the purposes of this Act.

(2) For the purposes of this Act, the Central Government may appoint as many examiners and other officers and with such designations, as it thinks fit.

 (3) Subject to the provisions of this Act, the officers appointed under sub-section (2) shall discharge under the superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time by general or special order in writing, authorise them to discharge.

(4) Without prejudice to the generality of the provisions of sub-section (3), the Controller may by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under sub-section (2) and deal with such mater himself either de novo or from the stage it was so withdrawn or transfer the same to another officer appointed under sub-section (2) 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.

Section 4. Prohibition of registration of certain designs

A design which

 (a) is not new or original; or

b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter shall not be registered.

Section 5. Application registration of designs

(1) The Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality, register the design under this Act.

Provided that the Controller shall before such registration refer the application for examination, by an examiner appointed under sub-section (2) of section 3, as to whether such design is capable of being registered under this Act and the rules made thereunder and consider the report of the examiner on such reference.

(2) Every application under Sub-Section (1) shall be in the prescribed form and shall be filed in the Patent Office in the prescribed manner and shall be accompanied by the prescribed fee.

(3) A design may be registered in not more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question.

 (4) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person, person aggrieved by any such refusal may appeal to the High Court.

 (5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.

(6) A design when registered shall be registered as of the date of the application for registration.

 Section 6. Registration on to be in respect of particular article

(1) A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles.

(2) Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final.

(3) Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated.

(a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or

(b) on the ground of the design having been previously published in India or in any other country, by reason only that it has been applied to article in respect of which it was previously registered:

 Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.

(4) Where any person makes an application for the registration of a design in respect of any article and either-

(a) that design has been previously registered by another person in respect of some other article; or

(b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of the section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.

Section 7. Publication of particulars of registered Design

The Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection.

Section 8. Power of Controller to make orders regarding substitution of application etc.

(1) If the Controller is satisfied on a claim made in the prescribed manner at any time before a design has been registered that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for registration of the design or by operation of law, the claimant would, if the design were then registered, be entitled thereto or to the interest of the applicant therein,or to an undivided share of the design or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accordingly as the case may require.

(2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one two or more joint applicants for registration of a design except with the consent of the other joint applicant or applicants.

(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of a design unless-

(a) the design is identified therein by reference to the number of the application for the registration; or

(b) there is produced to the Controller an acknowledgement by the person by whom the assignment or agreement was made that the assignment or agreement relates to the design in respect of which that application is made; or

(c) the rights of the claimant in respect of the design have been finally established by the decision of a court; or

 (d) the Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under sub-section (5).

 (4) Where one of two or more joint applicants for registration of a design dies at any time before the design has been registered, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

 (5) If any dispute arises between joint applicants for registration of a design whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.

 Section 9. Certificate of registration

(1) The Controller shall grant a certificate of registration to the proprietor of the design when registered.

 (2) The Controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.

Section 10. Register of designs

(1) There shall be kept at the Patent Office a book called the register of designs, wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matter as may be prescribed and such register may be maintained wholly or partly on computer, floppies or diskettes, subject to such safeguards as may be prescribed.

 (2) Where the register is maintained wholly or partly on computer floppies and diskettes under sub-section (1), any reference in this Act to any entry in the register shall be construed as the reference to entry so maintained on computer, floppies or diskettes.

 (3) The register of designs existing at the commencement of this Act shall be incorporated with and form part of the register of designs under this Act.

 (4) The register of designs shall be prima facie evidence of any matter by this Act directed or authorized to be entered therein.

Chapter III – Copyright in Registered Designs

Section 11. Copyright on registration

(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.

 (2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copy-right for a second period of five years from the expiration of the original period of ten years.

Section 12. Restoration of lapsed designs

(1) Where a design has ceased to have effect by reason of failure to pay the fee for the extension of copyright under sub-section (2) of section 11, the proprietor of such design or his legal representative and where the design was held by two or more persons jointly, then, with the leave of the Controller one or more of them without jointing the others, may, within one year from the date on which the design ceased to have effect, make an application for the restoration of the design in the prescribed manner on payment of such fee as may be prescribed.

(2) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.

Section 13. Procedure for disposal of applications for restoration of lapsed designs

 (1) If, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is satisfied that the failure to pay the fee for extension of the period of copyright was unintentional and that there has been no undue delay in the making of the application, the Controller shall upon payment of any unpaid fee for extension of the period of copyright together with prescribed additional fee restore the registration of design.

 (2) The Controller may, if he thinks fit as a condition of restoring the design, require that any entry shall be made in the register of any document or matter which under the provision of this Act, has to be entered in the register but which has not been so entered.

Section 14. Rights of proprietor of lapsed design which have been restored

 (1) Where the registration of a design is restored, the rights of the registered proprietor shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the benefit of applying the design between the date when the registration of the design ceased to have effect and the date of restoration of the registration of the design.

(2) No suit or other proceeding shall be commenced in respect of piracy of a registered design or infringement of the copyright in such design committed between the date on which the registration of the design ceased to have effect and the date of the restoration of the design.

Section 15. Requirements before delivery on sales

 (1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall-

 (a) (if exact representations or specimens were not finished on the application for registration) furnish to the Controller the prescribed number of exact representations or specimens of the design; and, if he fails to do so, the Controller may, after giving notice thereof to the proprietor, erase his name from the register and thereupon the copyright in the design shall cease; and Requirements before delivery on sales.

(b) causes each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

(2) Where a representation is made to the Central Government by or on behalf of any trade or industry that in the interest of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Central Government may, if it thinks fit, by rule under this Act, dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as it thinks fit.

Section 16. Effect of disclosure on copyright

The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person, other than the proprietor of the design, and the acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.

Section 17. Inspection of registered designs

(1) During the existence of copyright in a design, any person on furnishing such information as may enable the Controller to identify the design and on payment of the prescribed fee may inspect the design in the prescribed manner.

 (2) Any person may, on application to the Controller and on payment of such fee as may be prescribed, obtain a certified copy of any registered design.

Section 18. Information as to existence of copyright

On the request of any person furnishing such information as may enable the Controller to identify the design, and on payment of the prescribed fee, the Controller shall inform such person whether the registration still exists in respect of the design, and, if so, in respect of what classes of articles, and shall state the date of registration, and the name and address of the registered proprietor.

Section 19. Cancellation of registration

(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

 (d) that the design is not registrable under this Act; or

(e) it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.

Section 20. Designs to bind Government. 30 of 1970

A registered design shall have to all intents the like effect as against the Government as it has against any person and the provisions of Chapter XVII of the Patents Act, 1970 shall apply to registered designs as they apply to patents.

Chapter IV – Industrial and International Exhibitions

Section 21. Provisions as to exhibitions

The exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition to which the provisions of this section have been extended by the Central Government by notification in the Official Gazette, or the publication of a description of the design, during or after the period of the holding of the exhibition, or the exhibition of the design or the article or the publication of a description of the design by any person else-where during or after the period of the holding of the exhibition, without the privity or consent of the proprietor, shall not prevent the design from being registered or invalidate the registration thereof:

Provided that-

(a) the exhibitor exhibiting the design or article, or publishing a description of the design, gives to the Controller previous notice in the prescribed form; and

(b) the application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.

Chapter V – Legal Proceedings

Section 22. Piracy of registered design

(I) During the existence of copyright in any design it shall not be lawful for any person-

 (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious
imitation thereof, or

(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

2. (1) If any person acts in contravention of this section, he shall be liable for every contravention-

(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or

(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:

Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:

Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge.

(3) In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.

 (4) Notwithstanding anything contained in the second proviso to sub-Section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court in which the suit or such other proceeding is pending, to the High Court for decision.

 (5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.

Section 23. Application of certain of the provisions the Act as to the patents to designs

The provisions of the Patents Act, 1970 with regard to certificates of the validity of a patent, and to the remedy in case of groundless threats of legal proceedings by a patentee shall apply in the case of registered designs in like manner as they apply in the case of patents, with the substitution of references to the copyright in a design for reference to a patent, and of references to the proprietor of a design for references to patentee, and of references to the design for references to the invention.

Chapter VI – General Fees

Section 24. Fees

(1) There shall be paid in respect of the registration of designs and applications therefor and in respect of other matters relating to designs under this Act such fees may be prescribed.

(2) A proceeding in respect of which a fee is payable under this Act or the rules made thereunder shall be of no effect unless the fee has been paid.

Provisions as to Registers and other Documents in the Patent Office.

Section 25. Notice of trust not to be entered in registers

There shall not be entered in any register kept under this Act, or be receivable by the Controller, any notice of any trust expressed, implied or constructive.

Section 26. Inspection of and extracts from registers

Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act; and certified copies, sealed with the seal of the Patent Office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee:

Provided that where 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.

Section 27. Privilege of reports of Controller

Reports of or to the Controller made under this Act other than the report referred to in section 45 shall not in any case be published or be open to public inspection.

Section 28. Prohibition and publication of specification, drawings, etc where application abandoned, etc.

 Where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations or specimens left in connection with the application shall not at any time be open to public inspection or be published by the Controller.

Section 29. Power for Controller to Correct Clerical errors

The Controller may, on request in writing accompanied by the prescribed fee correct any clerical error in the representation of a design or in the name or address of the proprietor of any design, or in any other matter, which is entered upon the register of designs.

Section 30. Entry of assignment and transmitions in registers

 (1) Where a person becomes entitled by assignments, transmission or other operation of law to the copyright in a registered design, he may make application in the prescribed form to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such design, and shall cause an entry to be made in the prescribed manner in the register of the assignment, transmission or other instrument affecting the title.

 (2) Where any person becomes entitled as mortgage, licensee or otherwise to any interest in a registered design, he may make application to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, cause notice of the interest to be entered in the prescribed manner in the register of designs, with particulars of the instrument, if any, creating such interest.

(3) For the purposes of sub-section (1) or sub-section (2) an assignment of a design or of a share in a design, a mortgage, licence or the creation of any other interest in a design shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of an instrument embodying all the terms and conditions governing their rights and obligation and the application for registration of title under such instrument is filed in the prescribed manner with the Controller within six months from the execution of the instrument or within such further period not exceeding six months in the aggregate as the Controller on application made in the prescribed manner allows:

 Provided that the instrument shall, on entry of its particulars in the register under sub-section (1) or sub-section (2), have the effect from the date of its execution.

 (4) The person registered as the proprietor of a design shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licenses as to, or otherwise deal with, the design and to give effectual receipts for any consideration for any such assignment, licence or dealing:

Provided that any equities in respect of the design may be enforced in like manner as in respect of any other moveable property.

(5) Except in the case of an application made under section 31, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of sub-sections (1) and (2) shall not be admitted in evidence in any court in proof of the title to copyright in a design or to any interest therein, unless the court, for reasons to be recorded in writing, otherwise directs.

Section 31. Rectification of Register

 (1) The Controller may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the register of designs of any entry, or by any entry made in such register without sufficient cause, or by any entry wrongly remaining on such register, or by an error or defect in any entry in such register, make such order for making, expunging or varying such entry as he thinks fit and rectify the register accordingly.

 (2) The Controller may in any proceeding under this section, decide any question that may be necessary or expedient to decide in connection with the rectification of a register.

 (3) An appeal shall lie to the High Court from any order of the Controller under this section; and the Controller may refer any application under this section to the High Court for decision, and the High Court shall dispose of any application so referred.

 (4) Any order of the Court rectifying a register shall direct that notice of the rectification be served on the Controller in the prescribed manner who shall upon the receipt of such notice rectify the register accordingly.

(5) Nothing in this section, shall be deemed to empower the Controller to make any such order canceling the registration of a design as is provided for in section 19.

Chapter VII – Power and Duties of Controller

Section 32. Powers of Controller in Proceedings under Act

Subject to any rules in this behalf, the Controller in any proceedings before him under this Act s hall have the powers of a civil court for the purpose of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of under documents, issuing commissions for the examining of witnesses and awarding costs and such award shall be executable in any court having jurisdiction as if it were a decree of that court.

Section 33. Exercise of the discretionary power by Controller

Where any discretionary power is by or under this Act given to Controller, he shall not exercise that power adversely to the applicant for registration of a design without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard.

Section 34. Power of Controller to take directions of the Central Government

The Controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the Central Government for directions in the matter.

Section 35. Refusal to register a design in certain cases

(1) The Controller may refuse to register a design of which the use would, in his opinion, be contrary to public order or morality.
(2) An appeal shall lie to the High Court from an order of the Controller under this section.

Section 36. Appeals to the High Court

(1) Where an appeal is declared by this Act to lie from the Controller to the High Court, the appeal shall be made within three months of the date of the order passed by the Controller.

 (2) In calculating the said period of three months, the time (if any) occupied in granting a copy of the order appealed against shall be excluded.

(3) The High Court may, if it thinks fit, obtain the assistance of an expert in deciding such appeals, and the decision of the High Court shall be final.

(4) The High Court my make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it.

Chapter VIII – Evidence, etc.

Section 37. Evidence before the Controller

 Subject to any rules made under section 44, in any proceeding under this before the Controller, the evidence shall be given by affidavit in the absence of directions by the Controller to the before the contrary; but in any case in which the Controller thinks it right so to do he may to take evidence viva voce in lieu of or in addition to evidence by affidavit or may allow any party to be cross examined on the contents of his affidavit.

 Section 38. Certificate of Controller to be evidence

A certificate purporting to be under the hand of the Controller as to entry, matter or thing which he is authorised by this Act, or any rules made thereunder to make or do, shall be prima-facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone.

Section 39. Evidence of documents in patent office

Printed or written copies or extracts, purporting to be certified by Controller and sealed with the seal of the Patent Office , of documents in the Patent Office , and of or from registers and other books kept there, shall be admitted in evidence in al courts in India, and in all proceedings, Office without further proof for production of the originals:

Provided that a court may, if it has reason to doubt the accuracy or authenticity of the copies tendered in evidence, require the production of the originals or such further proof as it considers necessary.

Section 40. Application & notices by post

Any application, notice or other document authorized or required to be left, made or given at the Patent Office or to the Controller, or to any other person under this Act, may be sent by post.

Section 41. Declaration by infant, lunatic, etc.

(1) If any person , is by reason of infancy , Lunacy or other disability, incapable of making any statement or doing anything required or permitted by or under this Act, the lawful guardian, committee or manager (if any) of the person subject to the disability, or , if there be none , any person appointed by any court possessing jurisdiction in respect of his property , may make such statement or a statement as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

 (2) An appointment may be made by the court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any person interested in the making of the statement or the doing of the thing.

Section 42. Avoidance of certain restrictive conditions

 (1) It shall not be lawful to insert-

(i) in any contract for or in relation to the sale or lease of an article in respect of which a design is registered; or

(ii) in a licence to manufacture or use an article in respect of which a design is registered; or

(iii) in a licence to package the article in respect of which a design is registered, a condition the effect of which may be-

(a) to require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor or his nominees , or to prohibit him from acquiring or to restrict I in any manner or to any extent his right to acquire from any person or to prohibit him from acquiring except from the vendor, lessor, or licensor or his nominees any article other than the article in respect of which a design is registered; or

(b) to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee, to use an article other than the article in respect of which a design is registered which is not supplied by the vendor, lessor or licensor or his nominee, and any such condition shall be void.

 (2) A condition of the nature referred to in clause (a) or clause (b) of sub-section (1) shall not cease to be a condition failing within that sub-section merely by reason of the fact that the agreement containing it has been entered into separately, whether before or after the contract relating to the sale, lease or licence of the article in respect of which a design is registered.

(3) In proceeding against any person for any act in contravention of section 22, it shall be a defence to prove that at the time of such contravention there was in force a contract relating to the registered design and containing a condition declared unlawful by this section:

Provided that this sub-section shall not apply if the plaintiff is not a party to the contract and proves to the satisfaction of the court that the restrictive condition was inserted in the contract without his knowledge and consent, express or implied.

(4) Nothing in this section shall-

 (a) affect a condition in a contract by which a person is prohibited from selling goods other than those of particular person;

(b) validate a contract which, but for this section, would be invalid;

(c) affect a condition in a contract for the lease of, or licence to use, an article in respect of which a design is registered, by which the lessor or licensor reserves to himself or his nominee the right to supply such new parts of the article, in respect of which a design is registered, as may be required or to put or keep it in repair;

(5) The provisions of this section shall also apply to contracts made before the commencement of this Act if, and in so far as, any restrictive conditions declared unlawful by this section continue in force after the expiration of one year from such commencement

Chapter IX – Agency

Section 43. Agency

(1) All applications and communications to the Controller under this Act may be signed by , and all attendances upon the Controller may be made by or through a legal practitioner or by or through an agent whose name and address has been entered in the register of patent agents maintained under section 125 of the Patents Act, 1970.

(2) The Controller may, if he sees fit, require –

(a) any such agent to be resident in India;

(b) any person not residing in India either to employ an argent residing in India;

 (c) the personal signature or presence of any applicant or other person.

Chapter X – Powers etc. of Central Government

Section 44. Receiprocal arrangement with the United Kingdom and other convention countries or group of countries of intergovernmental organisations

 (1) Any person who has applied for protection for any design in the United Kingdom or any of other convention countries or group of countries or countries which are members of inter-governmental organisations, or his legal representative or assignee shall, either alone or jointly with any other person, be entitled to claim that the registration of the said design under this Act shall be in priority to other applicants and shall have the same date as the date of the application in the United Kingdom or any of such other convention countries or group of countries or countries which are members of inter-governmental organisations, as the case may be:

Provided that-

(a) the application is made within six months from the application for protection in the United Kingdom or any of such other convention Countries or group of countries or countries which are members of inter-governmental organisations, as the case may be; and

 (b) nothing in this section shall entitle the proprietor of the design to recover damages for piracy of design, design happening prior to the actual date on which the design is registered in India.

 (2) The registration of a design shall not be invalidated by reason only of the exhibition or use of or the publication of a description or representation of the design in India during the period specified in this section as that within which the application may be made;

 (3) The application for registration of a design of a design under this section must be made in the same manner as an ordinary application under this Act.

(4) Where it is made to appear to the Central Government that the legislature of the United Kingdom or any such other convention country or a country which is member of any group of countries or inter-governmental organisation as may be notified by the Central Government in this behalf has made satisfactory provision for the protection of designs registered in India, the Central Government may, by notification in the Official Gazette, direct that the provisions of this section, with such variations or additions, if any, as may be set out in such notification, shall apply for the protection of designs registered in the United Kingdom or that other convention country or such country which is member of any group of countries or intergovernmental organisation, as the case may be.

 Explanation- (1) For the purposes of this section, the expression “convention countries”, “group of countries” or “inter-governmental organisation” means, respectively, such countries, group of countries or inter-governmental organisation to which the Paris Convention for Protection of Industrial Property, 1883 as revised at Stockholm in 1967 and as amended in 1979 or the Final Act, embodying the results of the Uruguay Round of Multilateral Trade Negotiations, provided for the establishment of World Trade Organisation applies.

 Explanation- (2) Where more than one application for protection referred to in sub-section (1) have been made for similar protections in the United Kingdom or one or more convention countries, group of countries or countries which are members of inter-governmental organisations, the period of six months referred to in clause (a) of that sub-section, shall be reckoned from the date of which the earlier or the earliest application , as the case may be, of such applications has been made.

 Section 45. Report of the Controller to be placed before Parliament

The Central Government shall cause to be placed before both House of Parliament once a year a report respecting the execution of this Act by or under the Controller.

Section 46. Protection of security of India

Notwithstanding anything contained in this Act, the Controller shall-

 (a) Not disclose any information relating to the registration of a design or any application relating to the registration of a design under this Act, which he considers prejudicial to the interest of the security of India; and

(b) take any action regarding the cancellation of registration of such designs registered under this Act which the Central Government may, by notification in the Official Gazette, specify in the interest of the interest of the security of India.

Explanation: – For the purposes of this section, the expression “security of India” means any action necessary for the security of Indian which relates to the application of any design registered under this Act to any article used for war or applied directly or indirectly for the purposes of military establishment or for the purposes of war or other emergency in international relations.

Section 47. Power of Central Government to make rules

(1) The Central Government may, by notification in the Official Gazette, make rules for carrying out the purposes of this Act.

(2) In particular, and without prejudice to the generally of the forgoing power, such rules may provide for all or any of the following matters, namely:-

(a) the form of application, the manner of filing it at the Patent Office and the fee to be accompanied with it, under sub-section (2) of section 5;

 (b) the time within which the registration is to be effected under subsection
(5) of section 5;

(c) the classification of articles for registration under sub-section (1) of section 6;

(d) the particulars of design to be published and the manner of their publication under section 7;

 (e) the manner of making claim under sub-section (1) of section 8;

(f) the manner of making application to the Controller under subsection (5) of section 8;

 (g) the additional matters required to be entered in the register of design and safegurard to be made in maintaining such register in computer floppies or diskettes under sub-section (1) of section 10.

(h) the manner of making application and fee to be paid for extension of the period of copy right and the fee payable thereto, under sub-section (2) of section 11;

(i) the manner of making application for restoration of design and the fee to be paid with it under sub-section (1) of section 12;

 (j) the manner of verification of statement contained in an application under sub-section (2) of section 12;

(k) the additional fee to be paid for restoration of the registration of design under sub-section (1) of section 13;

(l) the provisions subject to which the right of the registered proprietor shall be under sub-section (1) of section 14;

 (m) the number of exact representation or specimen of the design to be furnished to the Controller under clause (a) of sub-section (1) of section 15;

(n) the mark, words or figures with which the article is to be marked denoting that the design is registered under clause (b) of sub-section (1) of section 15;

(o) the rules to dispense with or modify as regards any class or description of articles any of the requirements of section 15 as to marking under sub-section (2) of that section;

(p) the fee to be paid for and the manner of inspection under subsection (1) of section 17;

 (q) the fee to be paid to obtain a certified copy of any design under sub-section (2) of section 17;

 (r) the fee on payment of which the Controller shall inform under section 18;

 (s) the form for giving notice to the Controller under clause (a) of the proviso to section 21;

(t) the fee to be paid in respect of the registration of designs, and application therefor, and in respect of other matters relating to designs under sub-section (1) of section 24;

 (u) the fee to be paid for giving certified copy of any entry in the register under section 26;

 (v) the fee to be accompanied with request in writing for correcting any clerical error under section 29;

 (w) the form in which an application for registration as proprietor shall be made and the manner in which the Controller shall cause an entry to be made in the register of the assignment, transmission or other instruments effecting the title under sub-section (1) of section 30;

 (x) the form in which an application for title shall be made and the manner in which the Controller shall cause notice of the interest to be entered in the register of designs with particulars of the instrument, if any, creating such interest under sub-section (2) of section 30;

(y) the manner of filing an application for registration and for making application for extension of time as referred to in subsection (3) of section 30;

(z) the manner of making application to the Controller for rectification of register under sub-section (1) of section 31;

(za) the manner in which the notice of rectification shall be served on the Controller under sub-section (4) of section 31;

(zb) the rules regulating the proceedings before the Controller under section 32;

(zc) the time which shall be granted to the applicants for being heard by the Controller under section 33;

 (zd) the fee to be accompanied with an appeal under sub-section (1) of section 36;

 (ze) any other matter which is required to be, or may be, prescribed.

(3) The power to make rules under this section shall be subject to the conditions of the rules being made after previous publication.

(4) Every rule made 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 session aforesaid, both House 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 Act.

Chapter XI – Repeal and Saving

Section 48. Repeal and savings

(1) The Designs Act, 1911 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 Designs Act, 1911, shall, 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 design pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.

(4) Notwithstanding anything contained in this Act, any proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act has not been passed.

 (5) Notwithstanding anything contained in sub-section (2), the date of expiration of the copyright in the design registered before the commencement of this Act shall, subject to the provisions of this Act, be the date immediately after the period of five years for which it was registered or the date immediately after the period of five years for which the extension of the period of copyright for a second period from the expiration of the original period has been made.

Bydeb

The Trade Marks Act, 1999

Chapter 1 Preliminary

1. Short title, extent and commencement. –

(Act No. 47 of 1999)

An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.

Be it enacted by Parliament in the Fiftieth Year of the Republic of India as follows:-

(1) This Act may be called the Trade Marks Act, 1999.

(2) It extend to the whole of India.

(3) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint:

Provided that different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

2. Definitions and interpretation.—

(1) In this Act , unless the context otherwise requires, –

(a) “Appellate Board” means the Appellate Board established under section 83:

(b) “assignment” means an assignment in writing by act of te parties concerned;

(c) “associated trade Marks” means trade marks deemed to be, or required to be, registered as associated trade marks under this Act;

(d) “Bench ” means a Bench of the Appellate Board;

(e) “certification trade mark” means a mark capable of distinguishing the goods or service in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of service not so certified and registrable as such under Chapter IX in respect of those goods or service in the name, as proprietor of the certification trade mark , of that person;

(f) “Chairman” means the Chairman of the Appellate Board.

(g) “collective mark” means a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others.

(h) “deceptively similar”, – A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

(i) “false trade description” means-

(I) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied or

(II) any alteration of a trade description as regards the goods or services to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect, or

(III) any trade description which denotes or implies that there are contained, as regards the goods to which it is applied, more yards or meters than there are contained therein standard yards or standard meters, or

(IV) any marks or arrangement or combination thereof when applied-

(a) to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are.

(b) in relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some persons other than the person whose services they really are, or

(V) any false name or initials of a person applied to goods or service in such manner as if such name or initials were a trade description in any case where the name or initials-

(a) is or are not a trade mark or part of a trade mark, and

(b) is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorized the use of such name or initials, and

(c) is or are either the name or initials of a fictions person or some person not bona fide carrying on business in connection with such goods or services.

And the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Act.

(j) “goods” means anything which is the subject of trade or manufacture.

(k) “Judicial Member” means a Member of the Appellate Board appointed as such under this Act, and includes the Chairman and the Vice-Chairman.

(l) “limitations” (with its grammatical variations) means any limitation of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right a to mode or area of use within India or outside India.

(m) “mark” includes a device, brand, heading, lable, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

(n) “Member” means a Judicial Member or a Technical Member of the Appellate Board and includes the Chairman and the Vice-Chairman.

(o) “name” includes and abbreviation of a name.

(p) “notify” means to notify in the Trade Mark Journal published by the Registrar.

(q) “package” includes any case, box, container, covering, folder, recetacle, vessel, casket, bottle, wrapper, labler, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.

(r) “permitted use: in relation to a registered trade mark, means the use of trade mark-

(i) by a registered user of the trade mark in relation to goods or service-

(a) with which he is connected in the course of trade, and

(b) in respect of which the trade mark remains registered for the time being, and

(c) for which he is registered as registered user, and

(d) which complies with any conditions or limitations to which the registration of registered user is subject, or

(ii) by a person other than the registerd proprietor and registered user in relation to goods or services-

(a) with which he is connected in the course of trade, and

(b) in respect of which the trade mark remains registered for the time being, and

(c ) by consent of such registered proprietor in a written agreement, and

(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject.

(s) “prescribed” means prescribed by rules made under this Act.

(t) “register” means the Register of Trade Mark referred to in sub-section (1) of section 6.

(u) “registered” (with its grammatical variations) means registered under this Act.

(v) “registered proprietor” in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark.

(w) “registered trade mark” means a trade mark which is actually on the register and remaining in force.

(x) “registered user” means a person who is for the time being registered as such under section 49.

(y) “Registrar” means the Registrar of Trade Mark referred to in section 3.

(z) “service” means service of any description which is made available to potential users and includes the provisions of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.

(za) “trade description” means any description, statement or other indication, direct or indirect,-

(i) as to the number, quantity, measure, gauge or weight of any goods, or

(ii) as to the standard of quality of any goods or services according to a classification commonly used or recognized in the trade, or

(iii) as t fitness fr the purpose, strength, performance or behaviour of any goods, being “drug” as defined in the Drugs and Cosmetics Act, 1940 (23 of 194)) or “food” as defined in the Prevention of Food Adulteration Act, 1954 (37 of 1954), or

(iv) as to the place or country in which or the time at which any goods or services were made, produced or provided, as the case may be, or

(v) as to the name and address or other indication of the identity of the manufacturer or of the person providing the services of the person for whom the goods are manufactured or services are provided, or

(vi) as to the mode of manufacture or producing any goods or providing services, or

(vii) as to the material of which any goods are composed, or

(viii) as to any goods being the subject of an existing patent, privilege or copyright, and includes-

(a) any description as to the use of any mark which according to the custom of the trade is commonly taken to be an indication of any of the above matters.

(b) the description as to any imported goods contained in any bill of entry or shipping bill.

(c) any other description which is likely to be misunderstood or mistaken for all or any of the said matters.

(zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours , and

in relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark, and

in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.

(zc) “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment.

(zd) “Technical Member” means a Member who is not a Judicial Member.

(Ze) “tribunal” means the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending.

(zf) “Vice-Chairman” means a Vice-Chairman of the Appellate Board.

(zg) “well-known trade mark” in relation to any goods or service, means a mark which has becomes so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.

In this Act, unless the context otherwise requires, any reference – to “trade-mark” shall include reference to “collective mark” or “certification trade mark”.

To the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark.

To the use of a mark.- in relation to goods, shall be construed as a reference to the use of the mark upon, or n any physical or in any other relation whatsoever, to such goods.

In relation to goods, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services.

To the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 3.

To the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry.

For the purposes of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with description of goods and descriptions of services.

For the purposes of this Act, “existing registered trade mark” means a trade mark registered under the Trade and Merchandise Marks Act, 1958 (43 of 1958) immediately before the commencement of this Act.

Chapter 2 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 Mark for the purposes of this Act.

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 such-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 (43 of 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.

Comments

This section deals with the establishment of the Trade Marks Registry and branch offices. It provides that the Trade Marks Registry established under the Trade and Merchandise Marks Act, 1958 shall be the Trade Marks Registry for the purposes of this Act.

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 commencement of this Act, shall be incorporated in and form part of the register under this Act.

Comments

This section contains provisions regarding maintenance of a Register of Trade Marks at head office wherein particulars of registered trade marks and other prescribed particulars, except notice of trust, shall be recorded. A copy of the Register is to be kept at each branch office. It provides for maintenance of records in computer floppies or diskettes or in any other electronic form.

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.

Comments

Registrar is required to classify goods and services in accordance with the International classification for the purpose of registration of trade marks and his decision is 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 (12 of 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.

Comments

This section stipulates that the trade marks which are devoid of any distinctive character or 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 goods or rendering of the services or other characteristics of the goods or service or which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade shall not be registered, unless it is shown that the mark has in fact acquired a distinctive character as a result of use before the date of application. It also provides that a mark shall not be registered as trade marks if (i) it deceives the public or causes confusion, (ii) it contains or comprises of any matter likely to hurt the religious susceptibilities, (iii) it contains scandalous or obscene matter, (iv) its use is prohibited. It further provides that if a mark consists exclusively of (a) the shape of goods which form the nature of goods themselves, or (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value of the goods then it shall not be registered as trade mark.

Test of similarity

In order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to misled a person usually dealing with one to accept the other if offered to him; Mumtaz Ahmed v. Pakeeza Chemicals; AIR 2003 All 114.

Apart from the structural, visual and phonetic similarity or dissimilarity, the question has to be considered from the point of view of man of average intelligence and imperfect collection. Secondly, it is to be considered as a whole and thirdly it is the question of his impression; BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd., AIR 2002 Bom 361.

It is common knowledge that ’bidis’ are being used by persons belonging to poorer and illiterate or semi-literate class. Their level of awareness is not high. It cannot be expected of them that they would comprehend and understand the fine differences between the two labels, which may be detected on comparing the two labels when placed side by side. The essential features of the two labels are common. In view of above, there appears to be deceptive similarity between the two labels; Mohd. Iqbal v. Mohd. Wasim, AIR 2002 MP 162.

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 12, 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 cause 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 application 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 good 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.

Comments

This section provides relative grounds for the refusal of registration of a trade mark. A trade mark cannot be registered if because of (i) its identity with an earlier trade mark and similarity of goods or services, (ii) its similarity to an earlier trade mark and the identity or similarity of the goods and services, there is likelihood of confusion. It also provides that a trade mark cannot be registered which is identical with or similar to an earlier trade mark and which is to be registered for goods and services which are not similar to those for which earlier trade mark is registered in the name of a different proprietor if, or to the extent, the earlier trade mark is a well-known trade mark in India. It further provides that a trade mark cannot be registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law.

Registration is not matter of right

Even if the appellant’s proposed trade mark satisfies the conditions under the Act, the appellant is not entitled as a matter of right to the registration of trade mark. It is open to the Registrar to decline to register the appellant’s trade mark; Geep Flashlight Industries Ltd. v. Registrar of Trade Mark, AIR 1972 Del 179.

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.

Comments

This section provides for registration of same or similar trade mark by more than one proprietor in the case of honest concurrent use or other special circumstances.

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.

Comments

This section provides that international non-proprietary names declared by World Health Organisation from time to time or deceptively similar names shall not be registered as trade marks.

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.

Comments

If a trade mark 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 then written consent of the living person or the legal representative of the deceased person is required to be furnished.

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.

Comments

This section provides that if the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he can apply to register the whole and the part as separate trade marks.

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.

Comments

This section provides that where a trade mark which is registered, or is the subject of an application for registration 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 nearly so resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may require that the trade marks shall be entered in the register as associated trade marks.

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 trade mark—

(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.

Comments

If a trade mark consists of several matters, its registration shall confer exclusive right on the proprietor to use the trade mark as a whole. But when a trade mark contains any part which is not subject of a separate application or which is not separately registered by the proprietor, or contains any matter which is common to the trade mark 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.

Chapter 3 Procedure for and Duration of Registration

18. Application for registration.—

(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

(2) A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services.

(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate:

Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

Comments

For the registration of a trade mark an application is to be made to the Registrar. A single application can be made for registration of a trade mark for different classes of goods and services by paying prescribed fee for each such class of goods and services.

19. Withdrawal of acceptance.—

Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied—

(a) that the application has been accepted in error; or

(b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted,

the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

Comments

This section provides for withdrawal of acceptance of an application, before its registration, when the acceptance is in error, etc., after hearing the applicant.

20. Advertisement of application.—

(1) When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:

Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

(2) Where—

(a) an application has been advertised before acceptance under sub-section (1); or

(b) after advertisement of an application,—

(i) an error in the application has been corrected; or

(ii) the application has been permitted to be amended under

section 22,

the Registrar may in his discretion cause the application to be advertised again or in any case falling under clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.

Comments

This section provides for advertisement of an application, either after acceptance or before acceptance, so as to afford the public an opportunity to oppose the registration of the mark.

21. Opposition to registration.—

(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.

(7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.

Comments

Any person can give notice in writing of opposition to the registration within three months from the date of advertisement or re-advertisement of an application for registration.

22. Correction and amendment.—

The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application:

Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

Comments

This section provides for correction of any error in or in connection with the application or amendment of the application either before or after acceptance of the application.

23. Registration.—

(1) Subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either—

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration.

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

(4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

Comments

This section makes it mandatory on the Registrar to register the trade mark where the procedure for registration of a trade mark has been completed viz., the application has been accepted and either the application has not been opposed or the opposition has been dismissed.

24. Jointly owned trade marks.—

(1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

(2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except—

(a) on behalf of both or all of them; or

(b) in relation to an article or service with which both or all of them are connected in the course of trade,

those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

Comments

This section provides for registration of jointly owned trade marks where the mark is used or proposed to be used in relation to goods or services connected with all the joint applicants.

25. Duration, renewal, removal and restoration of registration.—

(1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:

Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

26. Effect of removal from register for failure to pay fee for renewal.—

Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either—

(a) that there has been no bona fide trade use of the trade mark which

has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

Comments

This section provides that where a trade mark has been removed from the register for failure to pay the renewal fee, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register.

Chapter 4 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.

Comments

This section provides that no infringement action will lie in respect of an unregistered trade mark, but recognises the common law rights of the trade mark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies 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 particular, 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.

Comments

Infringement: Onus to prove

It is well settled that the plaintiff must prove the essential features of his registered mark have been copied. The onus to prove ’deception’ is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its “essential features”. The identification of an essential feature depends partly on the Courts own judgement and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark; S.M. Dyechem Ltd. v. Cadbury (India) Ltd., AIR 2000 SC 2114.

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.

Comments

If the use of mark is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of a trade mark. There is no infringement in (1) Where the use is in relation to goods or services to indicate the kind, quality, quantity, etc., of the goods or of rendering of services. (2) Use of the trade mark in a manner outside the scope of registration where a trade mark is registered subject to conditions or limitations. (3) Where a person uses the mark in relation to goods or services for which the registered owner had once applied the mark, and had not subsequently removed it or impliedly consented to its use. (4) A trade mark registered for any goods may be used in relation to parts and accessories to other goods, or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin. (5) The use of registered trade mark being one of two or more registered trade marks which are identical or similar, in exercise of the right to the use of that registered trade mark.

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.

Comments

Meaning of the expression ’distinctive in relation to the goods’

The expression ’distinctive in relation to the goods’ in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations in relation to use within the extent of registration; Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Mark, AIR 1977 Cal 413. See also Consolidated Food Corp. v. Brandon & Co., AIR 1965 Bom 35.

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.

Comments

The proprietor of the earlier trade mark or other earlier right cannot contest the validity of registration of a subsequent trade mark, if he has acquiesced in the use of the subsequent trade mark for a continuous period of five years, unless he can prove that the registration of the subsequent trade mark was not obtained in good faith. The proprietor of the later mark also is not entitled to oppose the use of the earlier 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 of the registration of the first mentioned trade mark.

Comments

This section provides for protecting the vested rights, so that the proprietor of registered trade mark or a registered user cannot interfere with the use of any identical or similar mark if the person has been using the mark from an earlier date.

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.

Comments

This section provides that the registered proprietor or the registered user cannot interfere with any bona fide use by a person of his one name, or his predecessor in business, his place of business or bona fide description of the character or quality of the 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 used 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 purpose 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 service 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.

Comments

This section prevents a person from asserting any exclusive right, by virtue of trade mark or patent, over a word which has come to be associated as the name or description of an article. If there is a well known and established use of the word in a descriptive sense, and that is the only practicable name of description of an article, the validity of registration of such word as trade mark can be challenged. The provisions of this clause extend to services.

Chapter 5 Assignment and Transmission

37. Power of registered proprietor to assign and give receipts.—

The person for the time being entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.

Comments

This section provides that a registered proprietor has the power to assign the trade mark for any consideration and to give effectual receipts for any consideration for such assignment.

38. Assignability and transmissibility of registered trade marks.—

Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.

Comments

This section provides that a registered trade mark is assignable and transmissible with or without the goodwill of the business concerned.

39. Assignability and transmissibility of unregistered trade marks.—

An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.

Comments

This section provides that unregistered trade mark can be assigned or transmitted with or without the goodwill of the business concerned.

40. Restriction on assignment or transmission where multiple exclusive rights would be created.—

(1) Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to—

(a) same goods or services;

(b) same description of goods or services;

(c) goods or services or description of goods or services which are associated with each other,

of trade marks nearly resembling each other or of identical trade mark, if having regard to the similarity of the goods and services and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion:

Provided that an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within India otherwise than for export therefrom, or in relation to goods to be exported to the same market outside India or in relation to services for use at any place in India or any place outside India in relation to services available for acceptance in India.

(2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the assignment insofar as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.

Comments

This section contains restriction on assignments or transmissions of trade mark where multiple exclusive rights would be created in more than one person, which would be likely to deceive or cause confusion. Nevertheless, such assignment is not deemed to be invalid, if having regard to the limitations imposed, the goods are to be sold in different markets—either within India or for exports. The provisions also apply to services.

1. Restriction on assignment or transmission when exclusive rights would be created in different parts of India

Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law—

(a) an exclusive right in one of the persons concerned, to the use of the trade mark limited to use in relation to goods to be sold or otherwise traded in, in any place in India, or in relation to services for use, or services available for acceptance in any place in India; and

(b) an exclusive right in another of these persons concerned, to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to—

(i) the same goods or services; or

(ii) the same description of goods or services; or

(iii) services which are associated with those goods or goods of that description or goods which are associated with those services or services of that description,

limited to use in relation to goods to be sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India:

Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 40 if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.

42. Assignability and transmissibility of certification trade marks.—

A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which application shall be made in writing in the prescribed manner.

Comments

This clause deals with the assignability and transmissibility of certification trade marks. Assignment of certification trade marks can only be done with the consent of the Registrar. Consequent to the proposal to vest the final authority for disposal of application for certification trade marks on the Registrar, this clause seeks to make necessary change in the law by the substitution of the word “Registrar” for the words “Central Government”.

43. Assignability and transmissibility of certification trade marks.-—

A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which application shall be made in writing in the prescribed manner.

44. Assignability and transmissibility of associated trade marks.—

Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trade marks.

Comments

This clause requires that associated trade marks shall be assignable and transmissible only as a whole but they will be treated as separate trade marks for all other purposes. It corresponds to the provision contained in section 43 of the existing Act.

45. Registration of assignments and transmissions.—

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register:

Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.

(2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs.

Comments

This section provides that where the validity of an assignment is in dispute between the parties, the Registrar can refuse to register such transaction unless the rights of parties are determined by the competent court.

It further lays down that any instrument or document on the basis of which no entry has been made is not admissible in evidence before the Registrar or any court.

Chapter 6 Use of Trade Marks 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 (1 of 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 a 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 a 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.

Comments

This section contains two exceptions providing for registration of a trade mark—(1) by a person who proposes to assign the trade mark to a company to be formed and registered under the Companies Act, 1956 and (2) by a person who proposes to use the trade mark by a registered user as and when the mark is registered.

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 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 complied with, the Registrar shall register the proposed 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 grounds,

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.

Comments

Registration of registered user may be varied or cancelled, inter alia, on the ground that the registered user has used the trade mark not in accordance with the agreement or the proprietor/user has failed to disclose any material facts for such registration or that the stipulation in the agreement regarding the quality of goods is not enforced or that the circumstances have changed since the date of registration, etc. Notice and opportunity of hearing is provided before cancellation of registration.

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 1, “firm” has the same meaning as in the Indian Partnership Act, 1932 (9 of 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 associated 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 section 32, 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.

Chapter 7 Rectification and Correction of the Register

57. Power to cancel or vary registration and to rectify the register.—

(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

58. Correction of register.—

(1) The Registrar may, on application made in the prescribed manner by the registered proprietor,—

(a) correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark;

(b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark;

(c) cancel the entry of a trade mark on the register;

(d) strike out any goods or classes of goods or services from those in respect of which a trade mark is registered,

and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.

(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, address or description of the registered user.

59. Alteration of registered trade marks.—

(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.

(3) Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).

60. Adaptation of entries in register to amended or substituted classification of goods or services.—

(1) The Registrar shall not make any amendment of the register which would have the effect of adding any goods or classes of goods or services to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods or services:

Provided that this sub-section, shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods or services and would not substantially prejudice the rights of any person.

(2) A proposal so to amend the register shall be brought to the notice of the registered proprietor of the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of sub-section (1).

Chapter 8 Collective Marks

61. Special provisions for collective marks.—

(1) The provisions of this Act shall apply to collective marks subject to the provisions contained in this Chapter.

(2) In relation to a collective mark the reference in clause (zb) of sub-section (1) of section 2 to distinguishing the goods or services of one person from those of others shall be construed as a reference to distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.

62. Collective mark not to be misleading as to character or significance.—

A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of public in particular if it is likely to be taken to be something other than a collective mark, and in such case the Registrar may require that a mark in respect of which application is made for registration comprises some indication that it is a collective mark.

63. Application to be accompanied by regulations governing use of collective marks.—

(1) An application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark.

(2) The regulations referred to in sub-section (1) shall specify the persons authorised to use the mark, the conditions of membership of the association and, the conditions of use of the mark, including any sanctions against misuse and such other matters as may be prescribed.

64. Acceptance of application and regulations by Registrar.—

If it appears to the Registrar that the requirements for registration are satisfied, he shall accept the application together with the regulations, either unconditionally or subject to such conditions including amendments of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted shall notify the regulations.

65. Regulations to be open to inspection.—

The regulations referred to in sub-section (1) of section 63 shall be open to public inspection in the same way as the register as provided in section 148.

66. Amendment of regulations.—

Any amendment of regulations referred to in sub-section (1) of section 63 shall not be effective unless the amended regulations are filed with the Registrar, and accepted and published by him in accordance with section 64.

67. Infringement proceedings by registered proprietor of collective mark.—

In a suit for infringement instituted by the registered proprietor of a collective mark as plaintiff the court shall take into account any loss suffered or likely to be suffered by authorised users and may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such authorised users.

68. Additional grounds for removal of registration of collective mark.—

The registration of a collective mark may also be removed from the register on the ground—

(a) that the manner in which the collective mark has been used by the proprietor or authorised user has caused it to become liable to mislead the public as a collective mark; or

(b) that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark.

Explanation I.—For the purposes of this Chapter, unless the context otherwise requires, “authorised user” means a member of an association authorised to use the registered collective mark of the association.

Explanation II.—For the purposes of this Act, use of a collective mark by an authorised user referred to in Explanation I shall be deemed to be the use by the registered proprietor thereof.

Chapter 9 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 18, 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 references therein to acceptance of an application shall be construed as references to authorisation to proceed with an application.

(3) In dealing under the said provision with an application under this section, the tribunal shall have regard to the like considerations, so far as relevant, as if the application were application 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 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 as 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 thinks 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.

Chapter 10 Special Provisions for Textile Goods

79. Textile goods.—

The Central Government may prescribe classes of goods (in this Chapter referred to as textile goods) to the trade marks used in relation to which the provisions of this Chapter shall apply; and subject to the said provisions, the other provisions of this Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods.

80. Restriction on registration of textile goods.—

(1) In respect of textile goods being piece goods—

(a) no mark consisting of a line heading alone shall be registrable as a trade mark;

(b) a line heading shall not be deemed to be capable of distinguishing;

(c) the registration of trade mark shall not give any exclusive right to the use of a line heading.

(2) In respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.

Comments

This section provides that in respect of textile goods being piece goods (i) no mark consisting of a line heading alone can be registered as a trade mark, (ii) a line heading cannot be deemed to be capable of distinguishing, (iii) the registration of trade mark cannot give any exclusive right to the use of a line heading. It further provides that in respect of textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to the prescribed conditions and restrictions.

81. Stamping of piece goods, cotton yarn and thread.—

(1) Piece goods, such as are ordinarily sold by length or by the piece, which have been manufactured, bleached, dyed, printed or finished in premises which are a factory, as defined in the Factories Act, 1948 (63 of 1948), shall not be removed for sale from the last of such premises in which they underwent any of the said processes without having conspicuously stamped in international form of Indian numerals on each piece the length thereof in standard yards, or in standard yards and a fraction of such a yard, or in standard metres or in standard metres and a fraction of such a metre, according to the real length of the piece, and, except when the goods are sold from the factory for export from India, without being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in India of the piece.

(2) Cotton yarn such as is ordinarily sold in bundles, and cotton thread, namely, sewing, darning, crochet or handicraft thread, which have been manufactured, bleached, dyed or finished in any premises not exempted by the rules made under section 82 shall not be removed for sale from those premises unless, in accordance with the said rules in the case of yarn—

(a) the bundles are conspicuously marked with an indication of the weight of yarn in English or the metric system in each bundles; and

(b) the count of the yarn contained in the bundles and in the case of thread each unit is conspicuously marked with the length or weight of thread in the unit and in such other manner as may be required by the said rules; and

(c) except where the goods are sold from the premises for export from India, unless each bundle or unit is conspicuously marked with the name of the manufacturer or of the wholesale purchaser in India of the goods:

Provided that the rules made under section 82 shall exempt all premises where the work is done by members of one family with or without the assistance of not more than ten other employees, and all premises controlled by a co-operative society where not more than twenty workers are employed in the premises.

82. Determination of character of textile goods by sampling.—

(1) For the purposes of this Act, the Central Government may make rules—

(a) to provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, gauge or weight, for the number of samples to be selected and tested and for the selection of the samples;

(b) to provide, for the manner in which for the purposes of section 81 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dying or finishing of cotton yarn or cotton thread from the provisions of that section; and

(c) declaring what classes of goods are included in the expression “piece goods such as are ordinarily sold by length or by the piece” for the purpose of section 81, of this Act or clause (n) of sub-section (2) of section 11 of the Customs Act, 1962 (52 of 1962).

(2) With respect to any goods for the selection and testing of samples of which provision is not made in any rules for the time being in force under sub-section (1), the court or officer of customs, as the case may be, having occasion to ascertain the number, quantity, measure, gauge or weight of the goods, shall by order in writing, determine the number of samples to be selected and tested and the manner in which the samples are to be selected.

(3) The average of the results of the testing in pursuance of rules under sub-

section (1) or of an order under sub-section (2) shall be prima facie evidence of the number, quantity, measure, gauge or weight, as the case may be, of the goods.

(4) If a person having any claim to, or in relation to, any goods of which samples have been selected and tested in pursuance of rules under sub-section (1), or of an order under sub-section (2), desires that any further samples of the goods be selected and tested, such further samples shall, on his written application and on the payment in advance by him to the court or officer of customs, as the case may be, of such sums for defraying the cost of the further selection and testing as the court or officer may from time to time require, be selected and tested to such extent as may be permitted by rules made by the Central Government in this behalf or as, in the case of goods with respect to which provision is not made in such rules, the court or officer of customs may determine in the circumstances to be reasonable, the samples being selected in the manner prescribed under sub-section (1), or in sub-section (2), as the case may be.

(5) The average of the results of the testing referred to in sub-section (3) and of the further testing under sub-section (4) shall be conclusive proof of the number, quantity, measure, gauge or weight, as the case may be, of the goods.

83. Establishment of Appellate Board1.—

The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act.

Chapter 11 Appellate Board

84. Composition of Appellate Board.—

(1) The Appellate Board shall consist of a Chairman, Vice-Chairman and such number of other Members, as the Central Government may, deem fit and, subject to the other provisions of this Act, the jurisdiction, powers and authority of the Appellate Board may be exercised by Benches thereof.

(2) Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification2 in the Official Gazette, specify.

(3) Notwithstanding anything contained in sub-section (2), the Chairman—

(a) may, in addition to discharging the functions of the Judicial Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the case may be, the Technical Member, of any other Bench;

(b) may transfer a Member from one Bench to another Bench;

(c) may authorise the Vice-Chairman, the Judicial Member or the Technical Member appointed to one Bench to discharge also the functions of the Judicial Member or the Technical Member, as the case may be, of another Bench.

(4) Where any Benches are constituted, the Central Government may, from time to time, by notification, make provisions as to the distribution of the business of the Appellate Board amongst the Benches and specify the matters which may be dealt with by each Bench.

(5) If any question arises as to whether any matter falls within the purview of the business allocated to a Bench, the decision of the Chairman shall be final.

Explanation.—For the removal of doubts, it is hereby declared that the expression “matter” includes an appeal under section 91.

(6) If the Members of a Bench differ in opinion on any point, they shall state the point or points on which they differ, and make a reference to the Chairman who shall either hear the point or points himself or refer the case for hearing on such point or points by one or more of the other Members and such point or points shall be decided according to the opinion of the majority of the Members who have heard the case, including those who first heard it.

85. Qualifications for appointment as Chairman, Vice-Chairman, or other Members.—

(1) A person shall not be qualified for appointment as the Chairman unless he—

(a) is, or has been, a Judge of a High Court; or

(b) has, for at least two years, held the office of a Vice-Chairman.

(2) A person shall not be qualified for appointment as the Vice-Chairman, unless he—

(a) has, for at least two years, held the office of a Judicial Member or a Technical Member; or

(b) has been a member of the Indian Legal Service and has held a post in Grade I of that Service or any higher post for at least five years.

(3) A person shall not be qualified for appointment as a Judicial Member, unless he—

(a) has been a member of the Indian Legal Service and has held the post in Grade I of that Service for at least three years; or

(b) has, for at least ten years, held a civil judicial office.

(4) A person shall not be qualified for appointment as a Technical Member, unless he—

(a) has, for at least ten years, exercised functions of a tribunal under this Act or under the Trade and Merchandise Marks Act, 1958 (43 of 1958), or both, and has held a post not lower than the post of a Joint Registrar for at least five years; or

(b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law.

(5) Subject to the provisions of sub-section (6), the Chairman, Vice-Chairman and every other Member shall be appointed by the President of India.

(6) No appointment of a person as the Chairman shall be made except after consultation with the Chief Justice of India.

86. Term of office of Chairman, Vice-Chairman and other Members.—

The Chairman, Vice-Chairman or other Members shall hold office as such for a term of five years from the date on which he enters upon his office or until he attains,—

(a) in the case of Chairman and Vice-Chairman, the age of sixty-five years; and

(b) in the case of a Member, the age of sixty-two years,

whichever is earlier.

87. Vice-Chairman or senior-most Member to act as Chairman or discharge his functions in certain circumstances.—

(1) In the event of or any vacancy in the office of the Chairman by reasons of his death, resignation or otherwise, the Vice-Chairman and in his absence the senior-most Member shall act as Chairman until the date on which a new Chairman, appointed in accordance with the provisions of this Act to fill such vacancy, enters upon his office.

(2) When the Chairman is unable to discharge his functions owing to his absence, illness or any other cause, the Vice-Chairman and in his absence the senior-most Member shall discharge the functions of the Chairman until the date on which the Chairman resumes his duty.

88. Salaries, allowances and other terms and conditions of service of Chairman, Vice-Chairman and other Members.—

(1) The salaries and allowances payable to, and other terms and conditions of service (including pension, gratuity and other retirement benefits) of the Chairman, Vice-Chairman and other Members shall be such as may be prescribed.

(2) Notwithstanding anything contained in sub-section (1), a person who, immediately before the date of assuming office as the Chairman, Vice-Chairman or other Member was in service of Government, shall be deemed to have retired from service on the date on which he enters upon office as the Chairman, Vice-Chairman or other Member.

89. Resignation and removal.—

(1) The Chairman, Vice-Chairman or any other Member may, by notice in writing under his hand addressed to the President of India, resign his office:

Provided that the Chairman, Vice-Chairman or any other Member shall, unless he is permitted by the President of India to relinquish his office sooner, continue to hold office until the expiry of three months from the date of receipt of such notice or until a person duly appointed as his successor enters upon his office or until the expiry of his term of office, whichever is earlier.

(2) The Chairman, Vice-Chairman or any other Member shall not be removed from his office except by an order made by the President of India on the ground of proved misbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in which the Chairman, Vice-Chairman or other Member had been informed of the charges against him and given a reasonable opportunity of being heard in respect of those charges.

(3) The Central Government may, by rules, regulate the procedure for the investigation of misbehaviour or incapacity of the Chairman, Vice-Chairman or other Member referred to in sub-section (2).

90. Staff of Appellate Board.—

(1) The Central Government shall determine the nature and categories of the officers and other employees required to assist the Appellate Board in the discharge of its functions and provide the Appellate Board with such officers and other employees as it may think fit.

(2) The salaries and allowances and conditions of service of the officers and other employees of the Appellate Board shall be such as may be prescribed.

(3) The officers and other employees of the Appellate Board shall discharge their functions under the general superintendence of the Chairman in the manner as may be prescribed.

91. Appeals to Appellate Board.—

(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal.

(2) No appeal shall be admitted if it is preferred after the expiry of the period specified under sub-section (1):

Provided that an appeal may be admitted after the expiry of the period specified therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.

(3) An appeal to the Appellate Board shall be in the prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the order or decision appealed against and by such fees as may be prescribed.

92. Procedure and powers of Appellate Board.—

(1) The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure, 1908 (5 of 1908) but shall be guided by principles of natural justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of places and times of its hearing.

(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908) while trying a suit in respect of the following matters, namely:—

(a) receiving evidence;

(b) issuing commissions for examination of witnesses;

(c) requisitioning any public record; and

(d) any other matter which may be prescribed.

(3) Any proceeding before the Appellate Board shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the Indian Penal Code (45 of 1860), and the Appellate Board shall be deemed to be a civil court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973 (2 of 1974).

93. Bar of jurisdiction of courts, etc.—

No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (1) of section 91.

94. Bar to appear before Appellate Board.—

On ceasing to hold office, the Chairman, Vice-Chairman or other Members shall not appear before the Appellate Board or the Registrar.

95. Conditions as to making of interim orders.-

Notwithstanding anything contained in any other provisions of this Act or in any other law for the time being in force, no interim order (whether by way of injunction or stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless –

(a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to the party against whom such appeal is made or proposed to be made, and

(b) opportunity is given to such party to be heard in the matter.

96. Power of Chairman to transfer cases from one Bench to another.—

On the application of any of the parties and after notice to the parties, and after hearing such of them as he may desire to be heard, or on his own motion without such notice, the Chairman may transfer any case pending before one Bench, for disposal, to any other Bench.

97. Procedure for application for rectification, etc., before Appellate Board.—

(1) An application for rectification of the register made to the Appellate Board under section 57 shall be in such form as may be prescribed.

(2) A certified copy of every order or judgment of the Appellate Board relating to a registered trade mark under this Act shall be communicated to the Registrar by the Board and the Registrar shall give effect to the order of the Board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

98. Appearance of Registrar in legal proceedings.—

(1) The Registrar shall have the right to appear and be heard—

(a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;

(b) in any appeal to the Board from an order of the Registrar on an application for registration of a trade mark—

(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or

(ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest,

and the Registrar shall appear in any case if so directed by the Board.

(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.

99. Costs of Registrar in proceedings before Appellate Board.—

In all proceedings under this Act before the Appellate Board the costs of the Registrar shall be in the discretion of the Board, but the Registrar shall not be ordered to pay the costs of any of the parties.

100. Transfer of pending proceedings to Appellate Board.—

All cases of appeals against any order or decision of the Registrar and all cases pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate Board from the date as notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.

Chapter 12 Offences, Penalties and Procedure

101. Meaning of applying trade marks and trade descriptions.—

(1) A person shall be deemed to apply a trade mark or mark or trade description to goods or services who—

(a) applies it to the goods themselves or uses it in relation to services; or

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, or

(c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade mark or mark or trade description has been applied; or

(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to the belief that the goods or services in connection with which it is used are designated or described by that trade mark or mark or trade description; or

(e) in relation to the goods or services uses a trade mark or trade description in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial document and goods are delivered or services are rendered to a person in pursuance of a request or order made by reference to the trade mark or trade description as so used.

(2) A trade mark or mark or trade description shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.

102. Falsifying and falsely applying trade marks.—

(1) A person shall be deemed to falsify a trade mark who, either,—

(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or

(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.

(2) A person shall be deemed to falsely apply to goods or services a trade mark who, without the assent of the proprietor of the trade mark,—

(a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods;

(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.

(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused.

103. Penalty for applying false trade marks, trade descriptions, etc.—

Any person who—

(a) falsifies any trade mark; or

(b) falsely applies to goods or services any trade mark; or

(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or

(d) applies any false trade description to goods or services; or

(e) applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied under section 139, a false indication of such country, place, name or address; or

(f) tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under section 139; or

(g) causes any of the things above-mentioned in this section to be done,

shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.

Comments

Any person who (i) falsifies any trade mark; or (ii) falsely applies to goods or services any trade mark; or (iii) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or (iv) applies any false description to goods or services; or (v) applies to any good to which an indication of the country or place in which they are made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied, a false indication of such country, place, name or address; (vi) tempers with, alters or effaces an indication of origin; or (vii) causes any of the things above-mentioned to be done, shall be punishable with imprisonment for six months to three years and with fine of fifty thousand rupees to two lakh rupees.

104. Penalty for selling goods or providing services to which false trade mark or false trade description is applied.—

Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied or which, being required under section 139 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or services provided, as the case may be, are without the indications so required, shall, unless he proves,—

(a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods or services; or

(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods or things or services; or

(c) that otherwise he had acted innocently,

be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.

Comments

This section provides that any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied or which being required to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or services provided, are without the indications so required, shall be punishable with imprisonment for six months upto three years and with fine from fifty thousand rupees to two lakh rupees.

105. Enhanced penalty on second or subsequent conviction.—

Whoever having already been convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees:

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees:

Provided further that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.

Comments

This section provides that whoever has already been convicted is again convicted shall be punishable for the second and for every subsequent offence with imprisonment which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees. The court is, however, empowered to impose a sentence of imprisonment for a term less than one year and a fine of less than one lakh rupees for adequate and special reasons to be mentioned in the judgment.

106. Penalty for removing piece goods, etc., contrary to section 81.—

If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 81 or sells or exposes for sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees.

Comments

This section provides that if any person removes or attempts to remove for sale piece goods or cotton yarn or cotton threads which are not marked in accordance with the provisions of the Act, all such goods will be forfeited to the Government and the person shall be punishable with fine upto one thousand rupees.

107. Penalty for falsely representing a trade mark as registered.—

(1) No person shall make any representation—

(a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; or

(b) with respect to a part of a registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or

(c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered; or

(d) to the effect that registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitation entered on the register, the registration does not in fact give that right.

(2) If any person contravenes any of the provisions of sub-section (1), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.

(3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered”, or of any other expression, symbol or sign referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except—

(a) where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or

(b) where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a); or

(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country or in relation to services for use in that country.

Comments

This section makes false representation of a trade mark as registered as an offence. The punishment for the offence is imprisonment for a term which may extend to three years or with fine or with both. It also provides that where the mark in question is registered under the law of the country outside India, the use of the word or other expression to denote such registration in foreign country is permissible.

108. Penalty for improperly describing a place of business as connected with the Trade Marks Office.—

If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Comments

The use of any words which would lead to the belief that a person’s place of business is officially connected with the Trade Marks Office is a punishable offence with imprisonment for a term which may extend to two years or fine or with both.

109. Penalty for falsification of entries in the register.—

If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Comments

This section contains provisions for penalty for falsification of entries in the register. This offence is punishable with imprisonment extending to two years or fine or with both. This clause corresponds to section 83 of the existing Act.

110. No offence in certain cases.—

The provisions of sections 102, 103, 104 and 105 shall, in relation to a registered trade mark or proprietor of such mark, be subject to the rights created or recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections if,—

(a) the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and

(b) the alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law for the time being in force.

Comments

This section provides that when an act or omission shall not be deemed to be an offence under sections 102, 103, 104 and 105, if the alleged offence relates to a registered or unregistered mark, the act or omission is permitted by this Act or under any other law.

111. Forfeiture of goods.—

(1) Where a person is convicted of an offence under section 103 or section 104 or section 105 or is acquitted of an offence under section 103 or section 104 on proof that he acted without intent to defraud, or under section 104 on proof of the matters specified in clause (a), clause (b) or clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed, or but for such proof as aforesaid would have been committed.

(2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.

(3) When a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thirty days from the date of the direction, to the court to which in appealable cases appeals lie from sentences of the court which directed the forfeiture.

(4) When a forfeiture is directed on a conviction, the court, before whom the person is convicted, may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.

Comments

This section provides that the court can direct forfeiture to Government of all the goods relating to which an offence has been committed. The court may either order the forfeited goods to be destroyed or otherwise disposed of. Where an appeal against conviction lies, the appeal will also lie against the forfeiture.

112. Exemption of certain persons employed in ordinary course of business.—

Where a person accused of an offence under section 103 proves—

(a) that in the ordinary course of his business he is employed on behalf of other persons to apply trade marks or trade descriptions, or as the case may be, to make dies, blocks, machines, plates, or other instruments for making, or being used in making, trade marks; and

(b) that in the case which is the subject of the charge he was so employed, and was not interested in the goods or other thing by way of profit or commission dependent on the sale of such goods or providing of services, as the case may be; and

(c) that, having taken all reasonable precautions against committing the offence charged, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark or trade description; and

(d) that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the trade mark or trade description was applied, he shall be acquitted.

Comments

This section provides that if the person accused of an offence proves, inter alia, that he had at the time of commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description and that in the ordinary course of business he is employed on behalf of the other persons to apply trade mark or trade description including dies, blocks, machines, etc., he shall not be liable to any punishment.

113. Procedure where invalidity of registration is pleaded by the accused.—

(1) Where the offence charged under section 103 or section 104 or section 105 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed:—

(a) If the court is satisfied that such defence is prima facie tenable, it shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the Appellate Board under this Act, for the rectification of the register on the ground that the registration is invalid.

(b) If the accused proves to the court that he has made such application within the time so limited or within such further time as the court may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification.

(c) If within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the Appellate Board for rectification of the register, the court shall proceed with the case as if the registration were valid.

(2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.

Comments

This section provides that if the court is satisfied with the defence of invalidity of the registration, it may adjourn the proceedings for three months to enable an application for rectification of the register to be filed before the Appellate Board. If the accused proves that he has made such application, further proceedings shall stand stayed till the disposal of rectification application. On the other hand, if within the period allowed by the court, the accused fails to apply for rectification before the Appellate Board, the court is bound to proceed with the case as if registration is valid. It also provides that where any application for rectification is pending before the institution of the criminal proceedings, the court shall stay the proceedings in the prosecution pending the outcome of the rectification application and determine the charge in conformity thereof to the extent that the complainant relies on the registration of this mark.

114. Offences by companies.—

(1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of, any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

Explanation.—For the purposes of this section—

(a) “company” means any body corporate and includes a firm or other association of individuals; and

(b) “director”, in relation to a firm, means a partner in the firm.

115. Cognizance of certain offences and the powers of police officer for search and seizure.—

(1) No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar or any officer authorised by him in writing:

Provided that in relation to clause (c) of sub-section (1) of section 107, a court shall take cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a registered trade mark has been represented as registered in respect of any goods or services in respect of which it is not in fact registered.

(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.

(3) The offences under section 103 or section 104 or section 105 shall be cognizable.

(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:

Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so obtained.

(5) Any person having an interest in any article seized under sub-section (4), may, within fifteen days of such seizure, make an application to the Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be, for such article being restored to him and the Magistrate, after hearing the applicant and the prosecution, shall make such order on the application as he may deem fit.

116. Evidence of origin of goods imported by sea.—

In the case of goods brought into India by sea, evidence of the port of shipment shall, in a prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under clause (d) of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of the said Act for the protection of trade marks relating to import of goods, be prima facie evidence of the place or country in which the goods are made or produced.

Comments

Where the goods are brought into India by sea, evidence of port of shipment will be prima facie evidence of the country of origin in any prosecution for an offence under the Act or the Customs Act, 1962.

117. Costs of defence or prosecution.—

In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deems reasonable having regard to all the circumstances of the case and the conduct of the parties and the costs so awarded shall be recoverable as if they were a fine.

118. Limitation of prosecution.—

No prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under clause (d) of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of the said Act for the protection of trade marks, relating to import of goods shall be commenced after expiration of three years next after the commission of the offence charged, or two years after the discovery thereof by the prosecutor, whichever expiration first happens

119. Information as to commission of offence.—

An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say whence he got any information as to the commission of any offence against this Act.

120. Punishment of abetment in India of acts done out of India.—

If any person, being within India, abets the commission, without India, of any act which, if committed in India, would, under this Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and be punished therefor with the punishment to which he would be liable if he had himself committed in that place the act which he abetted.

Comments

This section provides that any person in India abetting the commission of any offence which, if committed in India would be an offence shall be tried for such abetment and shall be punished.

121. Instructions of Central Government as to permissible variation to be observed by criminal courts.—

The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight which are to be recognized by criminal courts as permissible in the case of any goods.

Chapter 13 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 (45 of 1860).

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 plaintiff’s 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 a 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 attaching 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.

Comments

This section provides that in certain cases, the application for rectification of register

should be made to the Appellate Board. Where in a suit for infringement of a registered trade mark, the validity of the registered trade mark is questioned, the validity of the mark is determined only on an application for the rectification of the registered trade mark made 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.

Comments

This section provides that on goods for sale if a trade mark or trade description is given or applied, there is implied warranty that the mark is a genuine mark.

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.

Comments

This section provides that the Registrar shall have all the powers of a civil court, including award of reasonable costs, subject to rules to be made in this behalf, except that he will have no power to award costs to any party on an appeal over the refusal of the proprietor of a certification trade mark to certify the goods.

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.

Comments

This section provides that in case of death of a party to a proceeding during the course of the proceedings, the Registrar, on proof to his satisfaction may allow substitution of his successor or may allow the proceeding to continue with the surviving parties.

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.

Comments

If the Registrar is of the opinion that the applicant has defaulted in the prosecution of his application, he may by a notice require him to remedy the default after giving him an opportunity to be heard. He may treat the application as abandoned unless the default is remedied within the time specified by him.

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 plaintiff’s 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 (5 of 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.

Comments

This section stipulates that the forum for institution of infringement proceedings, etc., is the District Court. The term “District Court having jurisdiction” includes a District Court within the local limits of whose jurisdiction, the person, or one of the persons, instituting the suit or other proceedings, actually or voluntarily resides or carries on business or personally works for gain.

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 infringing 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.

Comments

This section provides that the court may grant an ex parte injunction and in particular orders intended to preserve evidence or documents relating to the subject matter of the suit so that the defendant is restrained from dealing with assets in a manner which would affect the plaintiff’s ability to recover damages or other pecuniary remedies after final orders.

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.

Comments

This section provides that certificate issued by the Registrar shall be prima facie evidence in all proceedings without further proof or production of the original.

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 (10 of 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 (52 of 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 judgment in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.

Comments

This section provides that where in any legal proceeding for rectification of Register a decision is given in favour of the registered proprietor the Appellate Board can grant a certificate of validity.

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.

Comments

This section protects the person against groundless threats of infringement by giving him an opportunity to bring a suit against the person making such threats and obtain a declaration that the threats are unjustifiable and an injunction against the continuance of the threats and recovery of damages.

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.

Comments

This section provides that if any act is required to be done before the Registrar by any person, this may be done by him or by a legal practitioner, a trade marks agent or by his employee if he is duly authorised by him.

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.

Comments

This section protects the rights of the proprietor of a trade mark. If his agent or representative attempts to register or registers the mark in his own name, without authority, the proprietor is entitled to oppose the application or to apply for rectification so as to bring him as the registered proprietor. The time within which such action has to be taken is three years from the date he is aware of the conduct of the agent.

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.

Comments

This section provides for keeping different indexes at the trade marks registry, viz., indexes of registered and pending trade marks, registered proprietors’ index and index 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 fee 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 (52 of 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 (16 of 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 organisations 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 mark 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.

Comments

This section contains provisions as to reciprocity. If any country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisation does not accord to citizens of India the same rights as to registration and protection of trade marks as it accords to its own nationals, no national of that country or country which is a member of a group of countries or union of countries or Inter-Governmental Organisations, as the case may be, is entitled to apply for registration of a trade mark, to apply for registration as a registered user of trade mark or to be registered as the assignee of the registered proprietor of a trade mark in India.

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 conditions 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 4l;

(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 therefor 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 clauses (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 savings.—

(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed.

(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 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 (43 of 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 provision 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 (43 of 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.

THE SCHEDULE

(See section 158) Amendments

YearAct No.Short titleAmendment
1234
19561The CompaniesAct, 1956(1) In section 20, for sub-section (2), the following sub sections shall Act, 1956 be substituted, namely:-
(2) Without prejudice to the generality of the foregoing power, a name which is identical with, or too nearly resembles,-
(i) the name by which a company in existence has been previously registered, or
(ii) a registered trade mark, or a trade mark which is subject of an application for registration, of any other person under the Trade Marks Act, 1999.
May be deemed to be undesirable by the Central Government within the meaningof sub-section (1).
(3) The Central Government may, before deeming a name as undesirable under clause (ii) of sub section (2), consult and Registrar of Trade Marks.
(II) In section 22, in sub-section (1),
(i) for the portion beginning with “if, through” and ending with “the fist’ mentioned company” the following shall be substituted, namely:-
“If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name which,-
(i) in the opinion of the Central Government, is identical with, or too nearly resembles, the name by which a company in existence has been previously registered, whether under this Act or any previous companies law, the first mentioned company, or
(ii) on an application by a registered proprietor of a trade mark, is in the opinion of the Central Government identical with, or too nearly resembles, a registered trade mark of such proprietor under the Trade Marks Act, 1999 such company-
(ii) the following proviso shall be added, namely :-
“Provided that no application under clause (ii) made by a registered proprietor of a trade mark after five years of coming to notice of registration of the company shall be considered by the Central Government”.
Bydeb

Trade Marks (Amendment) Act, 2010

Section 1. Short title and commencement

TRADE MARKS (AMENDMENT) ACT, 20101

[No. 40 OF 2010]

[21st September, 2010]

An Act to amend the Trade Marks Act, 1999

Be it enacted by Parliament in the Sixty-first Year of the Republic of India as follows—

Prefatory Note—Statement of Objects and Reasons.

At present, a person desirous of obtaining registration of his trade mark in other countries has to make separate applications in different languages and pay different fees in the respective countries. There is no provision under the Trade Marks Act, 1999 (hereinafter referred to as the Trade Marks Act) to facilitate Indian nationals as well as foreign nationals to secure simultaneous protection of trade marks in other countries.

2. The Madrid Protocol, administered by the International Bureau of the World Intellectual Property Organisation, a specialised agency of the United Nations, was adopted in 1989. The Madrid Protocol is a simple, facilitative and cost-effective system for international registration of trade marks. It enables the nationals of the Member countries of the Protocol to obtain protection of trade marks within the prescribed period of 18 months by filing a single application with one fee and in one language in their country of origin, which in turn is transmitted to the other designated countries through the International Bureau.

3. Accession to the Madrid Protocol entails amendments to the Trade Marks Act. For this purpose, it is proposed to suitably amend the Trade Marks Act and to incorporate therein a new Chapter IV-A containing special provisions relating to protection of international registration of trade marks under the Madrid Protocol. It is sought to empower the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations. Definitions of new terms are being given. It is further proposed to provide for the effect of international registration, duration and its renewal.

4. It is also proposed to remove the discretion of the Registrar to extend the time for filing notice of opposition of published applications and provide for a uniform time limit of four months in all cases. Further, with a view to simplify the law relating to transfer of ownership of trade marks by assignment or transmission and to bring the law generally in tune with international practice and modern business needs, Section 45 is proposed to be modified. It is also proposed to omit Chapter X of the Trade Marks Act dealing with special provisions for textile goods, as it has now become redundant.

5. The Bill seeks to achieve the above objects.

——————–

1. Received the assent of the President on September 21, 2010 and published in the Gazette of India, Extra., Part II, Section 1, dated 22nd September, 2010, pp. 1-4, No. 49

(1) This Act may be called the Trade Marks (Amendment) Act, 2010.

(2) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint.

Section 2. Amendment of Section 11

In Section 11 of the Trade Marks Act, 1999 (47 of 1999) (hereinafter referred to as the principal Act), in the Explanation, for clause (a), the following clause shall be substituted, namely—

“(a) a registered trade mark or an application under Section 18 bearing an earlier date of filing or an international registration referred to in Section 36-E 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;”.

Section 3. Amendment of Section 21

In Section 21 of the principal Act, for sub-section (1), the following sub-section shall be substituted, namely—

“(1) Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.”.

Section 4. Amendment of Section 23

In Section 23 of the principal Act, in sub-section (1), after the words “register the said trade mark”, the words “within eighteen months of the filing of the application” shall be inserted.

Section 5. Insertion of new Chapter IV-A

After Chapter IV of the principal Act, the following chapter shall be inserted, namely—

‘Chapter IV-A

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL

36-A. Application of Act in case of international registration under Madrid Protocol.—

The provisions of this chapter shall apply to international applications and international registrations under the Madrid Protocol.

36-B. Definitions.

In this chapter, unless the context otherwise requires,—

(a) “application”, in relation to a Contracting State or a Contracting Organisation, means an application made by a person who is a citizen of, or is domiciled in, or has a real and effective industrial or commercial establishment in, that Contracting State or a State which is a member of that Contracting Organisation, as the case may be.

Explanation

For the purposes of this clause, “real and effective industrial or commercial establishment” means and includes any establishment where some bona fide industrial or commercial activity takes place and need not necessarily be the principal place of business;

(b) “basic application” means an application for the registration of a trade mark filed under Section 18 and which is used as a basis for applying for an international registration;

(c) “basic registration” means the registration of a trade mark under Section 23 and which is used as a basis for applying for an international registration;

(d) “common regulations” means the regulations concerning the implementation of the Madrid Protocol;

(e) “contracting organisation” means a Contracting Party that is an inter¬governmental organisation;

(f) “contracting party” means a Contracting State or Contracting Organisation party to the Madrid Protocol;

(g) “contracting state” means a country party to the Madrid Protocol;

(h) “international application” means an application for international registration or for extension of the protection resulting from an international registration to any Contracting Party made under the Madrid Protocol;

(i) “international bureau” means the International Bureau of the World Intellectual Property Organisation;

(j) “international registration” means the registration of a trade mark in the register of the International Bureau effected under the Madrid Protocol;

(k) “Madrid Agreement” means the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on the 14th day of April, 1891, as subsequently revised and amended;

(l) “Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on the 27th day of June, 1989, as amended from time to time.

36-C. Trade Marks Registry to deal with international applications.

Notwithstanding anything contained in sub-section (3) of Section 5, an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

36-D. International application originating from India.

(1) Where an application for the registration of a trade mark has been made under Section 18 or a trade mark has been registered under Section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the Common Regulations for international registration of that trade mark.

(2) A person holding an international registration may make an international application on the form prescribed by the Common Regulations for extension of the protection resulting from such registration to any other Contracting Party.

(3) An international application under sub-section (1) or sub-section (2) shall designate the Contracting Parties where the protection resulting from the international registration is required.

(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the international application corresponding to the particulars appearing, at the time of the certification, in the application under Section 18 or the registration under Section 23, and shall indicate the date and number of that application or the date and number of that registration as well as the date and number of the application from which that registration resulted, as the case may be, and shall within the prescribed period, forward the international application to the International Bureau for Registration, also indicating the date of the international application.

(5) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the application under Section 18 or the registration under Section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration shall cease to have effect:

Provided that where an appeal is made against the decision of registration and an action requesting for withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting into withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration.

(6) The Registrar shall, during the period of five years beginning with the date of international registration, transmit to the International Bureau every information referred to in sub-section (5).

(7) The Registrar shall notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be.

36-E. International registrations where India has been designated.

(1) The Registrar shall, after receipt of an advice from the International Bureau about any international registration where India has been designated, keep a record of the particulars of that international registration in the prescribed manner.

(2) Where, after recording the particulars of any international registration referred to in sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark in India should not be granted or such protection should be granted subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the international registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of protection and inform the International Bureau in the prescribed manner within eighteen months from the date on which the advice referred to in sub-section (1) was received.

(3) Where the Registrar finds nothing in the particulars of an international registration to refuse grant of protection under sub-section (2), he shall within the prescribed period cause such international registration to be advertised in the prescribed manner.

(4) The provisions of Sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in relation to an international registration as if such international registration was an application for registration of a trade mark under Section 18.

(5) When the protection of an international registration has not been opposed and the time for notice of oppositions has expired, the Registrar shall within a period of eighteen months of the receipt of advice under sub-section (1) notify the International Bureau its acceptance of extension of protection of the trade mark under such international registration and, in case the Registrar fails to notify the International Bureau, it shall be deemed that the protection has been extended to the trade mark.

(6) Where a registered proprietor of a trade mark makes an international registration of that trade mark and designates India, the international registration from the date of the registration shall be deemed to replace the registration held in India without prejudice to any right acquired under such previously held registration and the Registrar shall, upon request by the applicant, make necessary entry in the register referred to in sub-section (1) of Section 6.

(7) A holder of international registration of a trade mark who designates India and who has not been extended protection in India shall have the same remedy which is available to any person making an application for the registration of a trade mark under Section 18 and which has not resulted in registration under Section 23.

(8) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the related basic application or, as the case may be, the basic regitration in a Contracting Party other than India has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration in India shall cease to have effect.

36-F. Effects of international registration.

(1) From the date of the international registration of a trade mark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trade mark to India, the protection of the trade mark in India shall be the same as if the trade mark had been registered in India.

(2) The indication of classes of goods and services given by the applicant shall not bind the Registrar with regard to the determination of the scope of the protection of the trade mark.

36-G. Duration and renewal of international registration.

(1) The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding priod.

(2) Subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration.’.

Section 6. Substitution of new section for Section 45

For Section 45 of the principal Act, the following section shall be substituted, namely—

“45. Registration of assignments and transmissions.—(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of such.assignment or transmission to be entered on the register.

(2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished.

(3) Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.

(4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.”

Section 7. Omission of Chapter X

Chapter X of the principal Act shall be omitted.

Section 8. Amendment of Section 150

In Section 150 of the principal Act, in sub-section (1), for the word “applications”, the words “applications, international applications” shall be substituted.

Section 9. Amendment of Section 157

In Section 157 of the principal Act, in sub-section (2),—

(a) for clause (vii), the following clause shall be substituted, namely—

“(vii) the manner of giving a notice of opposition and the fee payable for such notice under sub-section (1) and sending counter-statement under subsection (2) and submission of evidence and the time therefor under sub-section (4) of Section 21;”;

(b) after clause (ix), the following clauses shall be inserted, namely—

“(ix-a) the time within which the international application is to be forwarded to the International Bureau and the manner of certifying the particulars by the Registrar under sub-section (4) of Section 36-D;

(ix-b) the manner of keeping a record of particulars of an international registration under sub-section (1) of Section 36-E;

(ix-c) the manner of informing the International Bureau under sub-section

(2) of Section 36-E;

(ix-d) the manner of advertising the international registration and the time within which the international registration shall be advertised under sub-section

(3) of Section 36-E;”

(c) after clause (xiii), the following clause shall be inserted, namely—

“(xiii-a) the period within which the Registrar shall dispose of an application under sub-section (3) of Section 45;”

(d) clauses (xxvi), (xxvii) and (xxviii) shall be omitted.

Section 10. Power of Central Government to remove difficulties

(1) Notwithstanding anything contained in Section 156 of the principal Act, 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 it to be necessary for removing such 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.

Bydeb

The Copyright Act, 1957

CHAPTER I – Preliminary

1. Short title, extent and commencement

(1) This act may be called the Copyright Act, 1957

(2) It extends to the whole of India

(3) It shall come into force on such date 1 as the Central Government may, by notification in the Official Gazette, appoint.

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1. Came into force on 21-1-1958, vide S.R.O. 269, dated 21st January, 1958, published in the Gazette of India, Extra., Pt. II, Sec. 3, p. 167.

2. Interpretation –

In this Act, unless the context otherwise requires,—

(a) “adaptation” means,—

(i) in relation to a dramatic work, the conversion of the work into a non-dramatic work;

(ii) in relation to a literary work or an artistic work, the conversion of the work into a dramatic work by way of performance in public or otherwise;

(iii) in relation to a literary or dramatic work, any abridgement of the work or any version of the work in which the story or action in conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book, or in a newspaper, magazine or similar periodical; 1[***]

(iv) in relation to a musical work, any arrangement or transcription of the work;2[and]

2[(v) in relation to any work, any use of such work involving its rearrangement or alteration;]

(b) 3[‘‘work of architecture’’] means any building or structure having as artistic character or design, or any model for such building or structure;

(c) “artistic work” means,—

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a 4[work of architecture]; and

(iii) any other work of artistic craftsmanship;

(d) “author’’ means,—

(i) in relation to a literary or dramatic work, the author of the work;

(ii) in relation to a musical work, the composer;

(iii) in relation to an artistic work other than a photograph, the artist;

(iv) in relation to a photograph, the person taking the photograph;

5[(v) in relation to a cinematograph film or sound recording, the producer; and

(vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created;]

6[(dd) “broadcast” means communication to the public—

(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or

(ii) by wire,and includes a re-broadcast;]

(e) “ calendar year” means the year commencing on the 1st day of January;

7[(f) “cinematograph film” means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films;]

8[(ff) “communication to the public” means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available.

Explanation.—For the purposes of this clause, communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public;

(ffa) “composer”, in relation to a musical work, means the person who composes the music regardless of whether he records it in any form of graphical notation;

(ffb) “computer” includes any electronic or similar device having information processing capabilities;

(ffc) “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;

(ffd) “copyright society” means a society registered under sub-section (3) of section 33;]

(g) “delivery”, in relation to a lecture, includes delivery by means of any mechanical instrument or by 9[broadcast];

(h) “dramatic work” includes any piece of recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does not include a cinematograph film;

10[(hh) “duplicating equipment” means any mechanical contrivance or device used or intended to be used for making copies of any work;]

(i) “engravings” include etchings, lithographs, wood-cuts, prints and other similar works, not being photographs;

(j) “exclusive licence” means a licence which confers on the licensee or on the licensee and persons authorised by him, to the exclusion of all other persons (including the owner of the copyright) any right comprised in the copyright in a work, and “exclusive licensee” shall be construed accordingly;

(k) “Government work” means a work which is made or published by or under the direction or control of—

(i) the Government or any department of the Government;

(ii) any Legislature in India;

(iii) any Court, Tribunal or other judicial authority in India;

11[(l) “Indian work” means a literary, dramatic or musical work,—

(i) the author of which is a citizen of India; or

(ii) which is first published in India; or

(iii) the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India;]

12[(m) “infringing copy” means,—

(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematographic film;

(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means;

(iii) in relation to a sound recording, any other recording embodying the same sound recording, made by any means;

(iv) in relation to a programme or performance in which such a broadcast reproduction right or a performer’s right subsists under the provisions of this Act, the sound recording or a cinematographic film of such programme or performance,

if such reproduction, copy or sound recording is made or imported in contravention of the provisions of this Act;]

(n) “lecture” includes address, speech and sermon;

13[(o) “literary work” includes computer programmes, tables and compilations including computer 14[databases];]

13[(p) “musical work” means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music;]

13[(q) “performance”, in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers;]

13[(qq) “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance;]

15[***]

(s) “photograph” includes photo-lithograph and any work produced by any process analogous to photography but does not include any part of a cinematograph film;

(t) “plate” includes any stereotype or other plate, stone, block, mould, matrix, transfer, negative 16[,duplicating equipment] or other device used or intended to be used for printing or reproducing copies of any work, and any matrix or other appliance by which 17[sound recording] for the acoustic presentation of the work are or are intended to be made;

(u) “prescribed” means prescribed by rules made under this Act;

18[(uu) “producer”, in relation to a cinematograph film or sound recording, means a person who takes the initiative and responsibility for making the work;]

19[***]

20[***]

21[(x) “reprography” means the making of copies of a work, by photocopying or similar means;

(xx) “sound recording” means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is the method by which the sounds are produced;]

(y) “work” means any of the following works, namely:—

(i) a literary, dramatic, musical or artistic work;

(ii) a cinematograph film;

(iii) a 22[sound recording];

(z) “work of joint authorship” means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors;

(za) “work of sculpture” includes casts and models.

COMMENTS

Literary work: Scope

The definition of “literary work” given in section 2(o) of the Act is an inclusive definition and, therefore, not exhaustive. Its “literary work” includes tables and compilations. Dissertation is, therefore, prima facie a literary work. The expression “work” inter alia means a literary work. The word “original” does not mean that the work must be the expression of original or invented thought. Copyright Acts are not concerned with the origin of ideas, but with the expression of thoughts and in the case of “literary work” with the expression of thoughts in print or writing. The originality which is required relates to the expression of the thought but the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work that it should originate from the author, Fateh Singh Mehta v. O.P. Singhal, AIR 1990 Raj 8.

Video tape within the definition of cinematograph film

In view of the extended definition of a cinematograph film in section 2 (f), which includes any process analogous to cinematography, the video tape had to be taken to come within the definition of cinematograph film; Entertaining Enterprises v. State of Tamil Nadu, AIR 1984 Mad 278.

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1. The word “and” omitted by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

2. Ins. by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

3. Subs. by Act 38 of 1994, sec. 2, for “architectural work of art” (w.e.f. 10-5-1995).

4. Subs. by Act 38 of 1994, sec. 2, for “architectural work of art” (w.e.f. 10-5-1995).

5. Subs. by Act 38 of 1994, sec.2, for sub-clauses (v) and (vi) (w.e.f. 10-5-1995).

6. Ins. by Act 23 of 1983, sec. 3 (w.e.f. 9-8-1984).

7. Subs. by Act 38 of 1994, sec. 2, for clause (f) (w.e.f. 10-5-1995).

8. Subs. by Act 38 of 1994, sec. 2, for clause (ff) (w.e.f. 10-5-1995). Earlier clause (ff) was inserted by Act 23 of 1983, sec. 3 (w.e.f. 9-8-1984).

9. Subs. by Act 23 of 1983, sec. 2, for “radio-diffusion” (w.e.f. 9-8-1984).

10. Ins. by Act 65 of 1984 sec. 2 (w.e.f. 8-10-1984).

11. Subs. by Act 23 of 1983, sec. 3, for clause (l) (w.e.f. 9-8-1984).

12. Subs. by Act 38 of 1994, sec. 2, for clause (m) (w.e.f. 10-5-1995).

13. Subs. by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

14. Subs. by Act 49 of 1999, sec. 2, for “data basis” (w.e.f. 15-1-2000).

15. Clause (r) omitted by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

16. Ins. by Act 65 of 1984, sec. 2 (w.e.f. 8-10-1984).

17. Subs. by Act 38 of 1994, sec. 2 (xii), for “record” (w.e.f. 10-5-1995).

18. Ins. by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

19. Clause (v) omitted by Act 23 of 1983, sec.3 (w.e.f. 9-8-1984).

20. Clause (w) omitted by Act 38 of 1994, sec. 2 (w.e.f. 10-5-1995).

21. Subs. by Act 38 of 1994, sec. 2, for clause (x) (w.e.f. 10-5-1995).

22. Subs. by Act 38 of 1994, sec. 2, for “record” (w.e.f. 10-5-1995).

3. Meaning of publication –

1 Meaning of publication –For the purposes of this Act, “publication” means making a work available to the public by issue of copies or by communicating the work to the public.

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1. Subs. by Act 38 of 1994, sec. 3, for section 3 (w.e.f. 10-5-1995).

4. When work not deemed to be published or performed in public-

Except in relation to infringement of copyright, a work shall not be deemed to be published or performed in public, if published, or performed in public, without the licence of the owner of the copyright.

5. When work deemed to be first published in India-

For the purposes of this Act, a work published in India shall be deemed to be first published in India, notwithstanding that it has been published simultaneously in some other country, unless such other country provides a shorter term of copyright for such work, and a work shall be deemed to be published simultaneously in India and in another country does not exceed thirty days or such other period as the Central Government may, in relation to any specified country, determine.

6. Certain disputes to be decide by Copyright Board –

1Certain disputes to be decide by Copyright Board -If any question arises,-

(a) Whether a work has been published or as to the date on which a work was published for the purposes of Chapter V, or

(b) Whether the term of copyright for any work is shorter in any other country than that provided in respect of that work under this Act, it shall be referred to the Copyright Board constituted under Section 11 whose decision thereon shall be final:

Provided that if in the opinion of the Copyright Board, the issue of copies or communication to the public referred to in Section 3 was of an insignificant nature, it shall not be deemed to be publication for the purposes of that section.

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1. Subs. by Act 38 of 1994, sec. 4, for section 6 (w.e.f. 10-5-1995).

7. Nationally of author were the making of unpublished work is extended over considerable period-

Where, in the case of an unpublished work the making of the work is extended over a considerable period, the author of the work shall, for the purposes of this Act, be deemed to be a citizen of, or domiciled in, that country of which he was a citizen or wherein he was domiciled during any substantial part of that period.

8. Domicile of corporations –

For the purposes of this Act, a body corporate shall be deemed to be domiciled in India if it is incorporated under any law in force in India.

CHAPTER II – Copyright Office And Copyright Board

9. Copyright Office –

(1) There shall be established for the purposes of this Act on office to be called the Copyright Office.

(2) The Copyright Office shall be under the immediate control of the Registrar of Copyrights who shall act under the superintendence and direction of the Central Government.

(3) There shall be seal for the Copyright Office.

10. Registrar and Deputy Registrars of Copyrights –

(1) The Central Government shall appoint a Registrar of Copyrights and may appoint one or more Deputy Registrars of Copyrights.

(2) A Deputy Registrar of Copyrights shall discharge under the superintendence and direction of the Registrar of Copyrights such functions of the Registrar under this Act as the Registrar of Copyrights such functions of the Registrar under this Act as the Registrar may, from time to time, assign to him : and any reference in this Act to the Registrar of Copyrights shall include a reference to a Deputy Registrar of Copyrights when so discharging any such functions.

11. Copyright Board –

(1) As soon as may be after the commencement of this Act, the Central Government shall constitute a Board to be called the Copyright Board which shall consist of a Chairman and not less than two or more than 1[fourteen] other members.

(2) The Chairman and other members of the Copyright Board shall hold office for such period and on such terms and conditions as may be prescribed.

(3) The Chairman of the Copyright Board shall be a person who is, or has been, a Judge of 2[***] a High Court or is qualified for appointment as a Judge of High Court.

(4) The Registrar of Copyrights shall be the Secretary of the Copyright Board and shall perform such functions as may be prescribed.

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1. Subs. by Act 38 of 1994, sec. 5, for “eight” (w.e.f. 10-5-1995).

2. The words “the Supreme Court or” omitted by Act 38 of 1994, sec. 5 (w.e.f. 10-5-1995).

12. Powers and procedure of Copyright Board-

(1) The Copyright Board shall, subject to any rules that may be under this Act, have power to regulate its own procedure, including the fixing of places and times of its sittings:

Provided that the Copyright Board shall ordinarily hear any proceeding instituted before it under this Act within the zone in which, at the time of the institution of the proceeding, the person instituting the proceeding actually and voluntarily resides or carries on business or personally work for gain.

Explanation.-—In this sub-section “zone” means a zone specified in section 15 of the States Reorganisation Act, 1956 (37 of 1956).

(2) The Copyright Board may exercise and discharge its powers and functions through Benches constituted by the Chairman of the Copyright Board from amongst its members, each Bench consisting of not less than three members:

1[Provided that, if the Chairman is of opinion that any matter of importance is required to be heard by a larger Bench, he may refer the matter to a special Bench consisting of five members.]

(3) If there is a difference of opinion among the members of the Copyright Board or any Bench thereof in respect of any matter coming before it for decision under this Act, the opinion of the majority shall prevail:

2[Provided that where there is no such majority, the opinion of the Chairman shall prevail.]

(4) 3[The Chairman] may authorise any of its members to exercise any of the powers conferred on it by section 74 and any order made or act done in exercise of those powers by the member so authorised shall be deemed to be the order or act, as the case may be, of the Board.

(5) No member of the Copyright Board shall take part in any proceedings before the Board in respect of any matter in which he has a personal interest.

(6) No act done or proceeding taken by the Copyright Board under this Act shall be questioned on the ground merely of the existence of any vacancy in, or defect in the constitution of, the Board.

(7) The Copyright Board shall be deemed to be a Civil Court for the purposes of 4[sections 345 and 346 of the Code of Criminal Procedure, 1973 (2 of 1974)] and all proceedings before the Board shall be deemed to be judicial proceedings within the meaning of sections 193 and 228 of the Indian Penal Code, 1860 (45 of 1860).

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1. Ins. by Act 38 of 1994, sec. 6 (w.e.f. 10-5-1995).

2. Subs. by Act 38 of 1994, sec. 6, for proviso (w.e.f. 10-5-1995).

3. Subs. by Act 38 of 1994, sec. 6, for “The Copyright Board” (w.e.f. 10-5-1995).

4. Subs. by Act 23 of 1983, sec. 6, for “sections 480 and 482 of the Code of Criminal Procedure, 1898 (5 of 1898)” (w.e.f. 9-8-1984).

CHAPTER III – Copyright

13. Works in which copyright subsists-

(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,—

(a) original literary, dramatic, musical and artistic works;

(b) cinematograph films; and

(c) 1[sound recording].

(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the provisions of section 40 or section 41 apply, unless,—

(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India;

(ii) in the case of an unpublished work other than 2[work of architecture], the author is at the date of the making of the work a citizen of India or domiciled in India; and

(iii) in the case of 2[work of architecture], the work is located in India.

Explanation.—In the case of a work of joint authorship, the conditions conferring copyright specified in this sub-section shall be satisfied by all the authors of the work.

(3) Copyright shall not subsist—

(a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work;

(b) in any 1[sound recording] made in respect of a literary, dramatic or musical work, if in making the 1[sound recording], copyright in such work has been infringed.

(4) The copyright in a cinematograph film or a 1[sound recording] shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film, or, as the case may be, the 1[sound recording] is made.

(5) In the case of 2[work of architecture], copyright shall subsist only in the artistic character and design and shall not extend to processes or methods of construction.

COMMENTS

Common property are not the subject of copyright

No doubt the central theme of the articles published by the second plaintiff and that of the drama and movie is the same, though the emphasis in the drama and the movie is more on human bondage, particularly of Indian women. The articles published by Ashwini Sarin also contain an autobiographical account of the part actually played by him in the affair. He has presented the whole affair in his own style. But that at the most would give the plaintiff copyright in respect of these articles. There cannot, however, be a copyright in an event which has actually taken place. There is a distinction between the materials upon which one claiming copyright has worked and the product of the application of his skill, judgment, labour and literary talent to these materials. Ideas, information, natural phenomena and events on which an author expends his skill, labour capital, judgment and literary talent are common property and are not the subject of copyright; Indian Express Newspapers (Bombay) Pvt. Ltd. v. Dr. Jagmohan Mundhara, AIR 1985 Bom 229.

Copyright in translation of a work

There is copyright in translation of a work; Blackwood & Sons Ltd. v. Parsuraman, AIR 1959 Mad 410.

Meaning ‘literary work’

The words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter; University of London Press Ltd. v. University Tutorial Press Ltd., (1916) 2 ChD 601.

Original work

The syllabi issued in a circular by the Board of Secondary Education of the State, containing guidelines of authors and publishers of textbooks cannot be taken as original work being the product of labour, skill and capital of some men engaged by the Board; Nag Book House v. State of West Bengal, AIR 1982 Cal 245.

Work of cine artist and performance as an actor

The work of a cine artist, his performance as an actor in a cinematograph film does not fall within the definition of ‘‘cinematograph film’’ to be found in section 2(f), and hence, is not protected under this Act. It is the cinematograph film that enjoys protection along with its sound track; Fortune Films v. Dev Anand, AIR 1979 Bom 17.

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1. Subs. by Act 38 of 1994, sec. 2, for “record” (w.e.f. 10-5-1995).

2. Subs. by Act 38 of 1994, sec. 2 , for “architectural work of art” (w.e.f. 10-5-1995).

14. Meaning of copyright-

1[14. Meaning of copyright.—For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—

(a) in the case of a literary, dramatic or musical work, not being a computer programme,—

(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;

(ii) to issue copies of the work to the public not being copies already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme,—

(i) to do any of the acts specified in clause (a);

2[(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme:

Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.]

(c) in the case of an artistic work,—

(i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);

(d) in the case of a cinematograph film,—

(i) to make a copy of the film including a photograph of any image forming part thereof;

(ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;

(iii) to communicate the film to the public;

(e) in the case of a sound recording,—

(i) to make any other sound recording embodying it;

(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording, regardless of whether such copy has been sold or given on hire on earlier occasions;

(iii) to communicate the sound recording to the public.

Explanation.— For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.]

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1. Subs. by Act 38 of 1994, sec. 7, for section 14 (w.e.f. 10-5-1995).

2. Subs. by Act 49 of 1999, sec. 3, for sub-clause (ii) (w.e.f. 15-1-2000).

15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911.-

15. Special provision regarding copyright in designs registered or capable of being registered under the 1 [***] Designs Act, 1911. —(1) Copyright shall not subsist under this Act in any design which is registered under the 1 [***] Designs Act, 1911 (2 of 1911)2.

(2) Copyright in any design, which is capable of being registered under the 1 [***] Designs Act, 1911 (2 of 1911)2 , but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person.

———–

1.The words “Indian Patents and” omitted by Act 23 of 1983, sec. 7 (w.e.f. 9-8-1984).

2.See now the Designs Act, 2000 ( 16 of 2000).

16. No copyright except as provided in this Act-

No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force, but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.

CHAPTER IV – Ownership of Copyright and the Rights of the Owner

The Copyright Act, 1957 1

17. First owner of copyright –

Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:

Provided that—

(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;

(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

2[(cc) in the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered;]

(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

2[(dd) in the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

Explanation. —For the purposes of this clause and section 28A, “public undertaking” means—

(i) an undertaking owned or controlled by Government; or

(ii) a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956); or

(iii) a body corporate established by or under any Central, Provincial or State Act;]

(e) in the case of a work to which the provisions of section 41 apply, the international organisation concerned shall be the first owner of the copyright therein.

COMMENTS

No ownership in case of mere ‘idea’

A person may have a brilliant idea for a story, or for a picture, or for a play, and one which, so far as he is concerned, appears to be original, but, if he communicates that idea to an author or a playwriter or an artist, the production which is the result of the communication of the idea to the author or the artist or the playwright is the copyright of the person who has clothed the idea in a form, whether by means of a picture, a play, or a book, and the owner of the idea has no rights in the product; Donoghue v. Allied Newspaper Ltd., (1937) 3 ChD 503.

Producer can defeat rights of music composer or lyricist

The core of the question, whether the producer of a cinematograph film can defeat the right of the composer of music or lyricist by engaging him. The key to the solution of this question lies in the provisos (b) and (c) to section 17 of the Act reproduced

above which put the matter beyond doubt. According to the first of these provisos, viz., proviso (b), when a cinematograph film producer commissions a composer of music or a lyricist for reward or valuable consideration for the purpose of making his cinematograph film, or composing music or lyric therefor i.e., the sounds for incorporation or absorption in the sound track associated with the film, which as already indicated, are included in a cinematograph film, he becomes the first owner of the copyright therein and no copyright subsists in the composer of the lyric or music so composed unless there is a contract to the contrary between the composer of the lyric or music on the one hand and the producer of the cinematograph film on the other. The same result follows according to aforesaid proviso (c) if the composer of music or lyric is employed under a contract of service or apprenticeship to compose the work. It is, therefore, crystal clear that the rights of a music composer or lyricist can be defeated by the producer of a cinematograph film in the manner laid down in provisos (b) and (c) of section 17 of the Act; Indian Performing Right Society v. Eastern India Motion Picture Assn, AIR 1977 SC 1443.

Right in a drama vests in author

The right in a drama by an author written for a society, is, in the absence of a clear agreement to the contrary, vested in the author; Lama Prasad v. Nabahash, AIR 1967 Ass 70.

Valuable consideration

Where a person is under an obligation to do something, and in discharge of such obligation, he transfers a certain interest, such transfer is for valuable consideration; Chidambaraiyer v. Renga, AIR 1966 SC 193.

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1. Subs. by Act 15 of 2008, sec. 2, for sec. 8 (w.e.f. 15-4-2008). Section 8, before substitution, stood as under:

“8. Payment of medical bonus.—Every woman entitled to maternity benefit under this Act shall also be entitled to receive from her employer a medical bonus of two hundred and fifty rupees, if no pre-natal confinement and post-natal care is provided for by the employer free of charge.”.

2. Ins. by Act 23 of 1983, sec. 8 (w.e.f. 9-8-1984).

18. Assignment of copyright –

(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof.

Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.

(2) Whereas the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights to assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.

(3) In this section, the expression, “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.

COMMENTS

(i) A mere agreement to assign does not operate to pass the property right but gives equitable rights, i.e., it operates as an equitable assignment of copyright as and when the work comes into existence; Reoti Saran Sharma v. Numero Uno International, 1995 PTR 132.

(ii) Where there is substantial similarity and the other party has no evidence to rebute the same in his favour, then there is infringement of copyright; Godrej Soaps (P) Ltd. v. Dora Cosmetics Co., 2001 PTC 407 (Del).

19. Mode of assignment –

1 (1)] No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or his duly authorised agent.

2 [3 (2)The assignment of copyright in nay work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.

(3) The assignment of copyright in any work shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

(4) Where the assignee does not exercise the rights assigned to him under any of the other sub sections of this section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.

(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.

(7) Nothing in sub section (2) or sub section (3) or sub section (4) or sub section (5) or sub section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994.]

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1. Section 19 re-numbered as sub-section (1) thereof by Act 23 of 1983, sec. 9 (w.e.f. 9-8-1984).

2. Sub-section (2) ins. by Act 23 of 1983, sec. 9 (w.e.f. 9-8-1984).

3. Subs. by Act 38 of 1994, sec. 8, for sub-section (2) (w.e.f. 10-9-1995).

 19-A. Dispute with respect to assignment of copyright –

1[19A. Disputes with respect to assignment of copyright.—(1) If an assignee fails to make sufficient exercise of the rights assigned to him, and such failure is not attributable to any act or omission of the assignor, then, the Copyright Board may, on receipt of a complaint from the assignor and after holding such inquiry as it may deem necessary, revoke such assignment.

(2) If any dispute arises with respect to the assignment of any copyright, the Copyright Board may, on receipt of a complaint from the aggrieved party and after holding such inquiry as it considers necessary, pass such order as it may deem fit including an order for the recovery of any royalty payable:

Provided that Copyright Board shall not pass any order under this sub-section to revoke the assignment unless it is satisfied that the terms of assignment are harsh to the assignor in case the assignor is also the author:

Provided further that no order of revocation of assignment under this sub-section, shall be made within a period of five years from the date of such assignment.]

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1. Subs. by Act 38 of 1994, sec. 9, for section 19A (w.e.f. 10-5-1995). Earlier section 19A was inserted by Act 23 of 1983, sec. 10 (w.e.f. 9-8-1984).

20. Transmission of copyright in manuscript by testamentary disposition –

Where under a bequest a person is entitled to the manuscript of a literary, dramatic or musical work, or to an artistic work, and the work was not published before the death of the testator, the bequest shall, unless the contrary intention is indicated in the testator’s will or any codicil thereto, be construed as including the copyright in the work in so far as the testator was the owner of the copyright immediately before his death.

Explanation- In this section, the expression “manuscript” means the original document embodying the work, whether written by hand or not.

21. Right of author to relinquish copyright –

(1) The author of a work may relinquish all or any of the rights comprised in the copyright in the work by giving notice in the prescribed form to the Registrar of Copyrights and thereupon such rights shall, subject to the provision of sub section (3), cease to exist from the date of the notice.

(2) On receipt of a notice under sub section (1), the Registrar of Copyrights shall cause it to be published in the Official Gazette and in such other manner, as he may deem fit.

(3) The relinquishment of all or any of the rights comprised in the copyright in a work shall not affect any rights subsisting in favour of any person on the date of the notice referred to in sub section. (1).

CHAPTER V – Term of Copyright

22. Term of copyright in published literary, dramatic, musical and artistic works –

Except as otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or artistic work (other than a photograph) published within the lifetime of the author until 1[sixty years] from the beginning of the calendar year next following the year in which the author dies.

Explanation.—In this section the reference to the author shall, in the case of a work of joint authorship, be construed as a reference to the author who dies last.

COMMENTS

Subsistence of copyrigh tby virtue of section 22, the copyright in the work of grandfather could not subsist 50 years after his death; Khemraj v. Garg & Co., AIR 1975 Del 130.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r.e.f. 28-12-1991).

23. Term of copyright in anonymous and pseudonymous works –

(1) In the case of a literary, dramatic, musical or artistic work (other than a photograph), which is published anonymously or pseudonymously, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the work is first published:

Provided that where the identity of the author is disclosed before the expiry of the said period, copyright shall subsist until 1[sixty years] from the beginning of the calendar year following the year in which the author dies.

(2) In sub-section (1), references to the author shall, in the case of an anonymous work of joint authorship, be construed,—

(a) where the identity of one of the authors is disclosed, as references to that author;

(b) where the identity of more authors than one is disclosed, as references to the author who dies last from amongst such authors.

(3) In sub-section (1), references to the author shall, in the case of a pseudonymous work of joint authorship, be construed,—

(a) where the names of one or more (but not all) of the authors are pseudonymous and his or their identity is not disclosed, as references to the author whose name is not a pseudonym, or, if the names of two or more of the authors are not pseudonyms, as references to such of those authors who dies last;

(b) where the names of one or more (but not all) of the authors are pseudonyms and the identity of one or more of them is disclosed, as references to the author who dies last from amongst the authors whose names are not pseudonyms and the authors whose names are pseudonyms and are disclosed; and

(c) where the names of all the authors are pseudonyms and the identity of one of them is disclosed, as references to the author whose identity is disclosed or if the identity of two or more of such authors is disclosed, as references to such of those authors who dies last.

Explanation.—For the purposes of this section, the identity of an author shall be deemed to have been disclosed, if either the identity of the author is disclosed publicly by both the author and the publisher or is otherwise established to the satisfaction of the Copyright Board by that author.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r.e.f. 28-12-1991).

24. Term of copyright in posthumous works –

(1) In the case of a literary, dramatic or musical work or an engraving, in which copyright subsists at the date of the death of the author, or in the case of any such work of joint authorship, at or immediately before the date of the death of the author who dies last, but which, or any adaptation of which, has not been published before that date, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the work is first published or, where an adaptation of the work is published in any earlier year, from the beginning of the calendar year next following that year.

(2) For the purposes of this section a literary, dramatic or musical work or an adaptation of any such work shall be deemed to have been published, if it has been performed in public or if any 2[sound recording] made in respect of the work have been sold to the public or have been offered for sale to the public.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

2. Subs. by Act 38 of 1994, sec. 2, for “record” (w.e.f. 10-5-1995).

25. Term of copyright in photographs –

In the case of a photograph, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the photograph is published.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

26. Term of copyright in cinematograph films-

In the case of a cinematograph film, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the film is published.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

27. Term of copyright in sound recordings –

27. Term of copyright in 2[sound recording].—In the case a 2[sound recording] copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the 2[sound recording] is published.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

2.Subs. by Act 38 of 1994, sec. 2, for “record” (w.e.f. 10-5-1995).

28. Term of copyright in Government works –

In the case of Government work, where Government is the first owner of the copyright therein, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the record is first published.

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1.Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

 28-A. Term of copyright in works of public undertakings-

1[28A. Term of copyright in works of public undertakings.—In the case of a work, where a public undertaking is the first owner of the copyright therein, copyright shall subsist until 2[sixty years] from the beginning of the calendar years next following the year in which the work is first published.]

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1. Ins. by Act 23 of 1983, sec. 11 (w.e.f. 9-8-1984).

2. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

29. Term of copyright in works of international organisation-

In the case of a work of any international organisation to which the provisions of section 41 apply, copyright shall subsist until 1[sixty years] from the beginning of the calendar year next following the year in which the work is first published.

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1. Subs. by Act 13 of 1992, sec. 2, for “fifty years” (w.r. e.f. 28-12-1991).

CHAPTER VI – Licences

30. Licences by owners of copyright-

The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the right by licence in writing signed by him or by his duly authorised agent.

Provided that in the case of a licence relating to copyright in any future work, the licence shall take effect only when the work comes into existence.

Explanation – When a person to whom a licence relating to copyright in any future work is granted under this section dies before the work comes into existence, his legal representatives shall, in the absence of any provision to the contrary in the licence , be entitled to benefit of the licence.

30-A. Application of Sections 19 and 19-A. –

The provision of Sections 19 and 19-A shall, with any necessary adaptations and modifications, apply in relation to a licence under Section 30 as they apply in relation to assignment of copyright in a work.

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1. Ins. by Act 38 of 1994, sec. 10 (w.e.f. 10-5-1995).

31. Compulsory licence in works with held from public –

(1) If at any time during the term of copyright in any Indian work which has been published or performed in public, a complaint is made to the Copyright Board that the owner of copyright in the work—

(a) has refused to re-publish or allow the re-publication of the work or has refused to allow the performance in public of the work, and by reason of such refusal the work is withheld from the public; or

(b) has refused to allow communication to the public by 1[broadcast], of such work or in the case of a 2[sound recording] the work recorded in such 2[sound recording], on terms which the complainant considers reasonable,

the Copyright Board, after giving to the owner of the copyright in the work a reasonable opportunity of being heard and after holding such inquiry as it may deem necessary, may, if it is satisfied that the grounds for such refusal are not reasonable, direct the Registrar of Copyrights to grant to the complainant a licence to re-publish the work, perform the work in public or communicate the work to the public by 1[broadcast], as the case may be, subject to payment to the owner of the copyright of such compensation and subject to such other terms and conditions as the Copyright Board may determine; and thereupon the Registrar of Copyrights shall grant the licence to the complainant in accordance with the directions of Copyright Board, on payment of such fee as may be prescribed.

Explanation.—In this sub-section, the expression “Indian work” includes—

(i) an artistic work, the author of which is a citizen of India; and

(ii) a cinematograph film or a 2[sound recording] made or manufactured in India.

(2) Where two or more persons have made a complaint under sub-section (1), the licence shall be granted to the complainant who in the opinion of the Copyright Board would best serve the interests of the general public.

Comments

Question of grant of compulsory licence would arise only when the artistic work has been with held from public. Compulsory licence need not be issued to all who apply and are ready to pay fee; Super Cassette Industries Ltd. v. Entertainment Network (India) Ltd., AIR 2004 Del 326.

Once a Copyright is taken in public domain then it becomes commercial right and refusal to grant licence has to be on reasonable grounds. While making orders, the Board has to maintain a delicate balance between private rights of the copyright owner vis-a-vis public interest; Super Cassette Industries Ltd. v. Entertainment Network (India) Ltd., AIR 2004 Del 326.

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1. Subs. by Act 23 of 1983, sec. 2, for “radio-diffusion” (w.e.f. 9-8-1984).

2. Subs. by Act 38 of 1994, sec. 2, for “record” (w.e.f. 10-5-1995).

31-A. Compulsory licence in unpublished Indian works-

(1) Where in the case of an Indian work referred to in sub clause (iii) of clause (I) of Section 2, the author is dead or unknown or cannot be traced, or the owner of the copyright in such work cannot be found, any person may apply to the Copyright Board for a licence to publish such work or a translation thereof in any language.

(2) Before making an application under sub section (1), the applicants shall publish his proposal in one issue of a daily newspaper in the English language having circulation in the major part of thee country and where the application is for the publication of a translation in any language, also in one issue of any daily newspaper in that language.

(3) Every such application shall be made in such form as may be prescribed and shall be accompanied with a copy of the advertisement issued under sub section (2) and such fee as may be prescribed.

(4) Where an application is made to the Copyright Board under this section, it may, after holding such inquiry as may be prescribed, direct the Registrar of Copyrights to grant to the applicant a licence to publish the work or a translation thereof, in the language mentioned in the application subject to the payment of such royalty and subject to such other terms and conditions as the Copyright Board may determine, and thereupon the Registrar of Copyrights shall grant the licence to the applicant in accordance with the direction of the copyright Board.

(5) Where a licence is granted under this section, the Registrar of Copyrights may, by order, direct the applicant to deposit the amount of the royalty determined by the Copyright Board in the public account of India or in any other account specified by the Copyright Board so as to enable the owner of the copyright or, as the case may be, his heirs, executors or the legal representatives to claim such royalty at any time.

(6) Without prejudice to the foregoing provisions of this section, in the case of a work referred to in sub section (1), if the original author is dead, the Central Government may, if it considers that the publication of the work is desirable in the national interest, require the heirs, executors or legal representatives of the author to publish such work such period as may be specified by it.

(7) Where any work is not published within the period specified by the Central Government under sub section (6), the Copyright Board may, on an application made by any person for permission to publish the work and after hearing the parties concerned, permit such publication on payment of such royalty as the Copyright Board may, in the circumstances of such case, determine in the prescribed manner.

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1. Ins. by Act 23 of 1983, sec. 12 (w.e.f. 9-8-1984).

32. Licence to produce and publish translations-

(1) Any person may apply to the Copyright Board for a licence to produce and publish a translation of a literary or dramatic work in any language 1[after a period of seven years from the first publication of the work].

1[(1A) Notwithstanding anything contained in sub-section (1), any person may apply to the Copyright Board for a licence to produce and publish a translation, in printed or analogous forms of reproduction, of a literary or dramatic work, other than an Indian work, in any language in general use in India after a period of three years from the first publication of such work, if such translation is required for the purposes of teaching, scholarship or research:

Provided that where such translation is in a language not in general use in any developed country, such application may be made after a period of one year from such publication.]

(2) Every 2[application under this section] shall be made in such form as may be prescribed and shall state the proposed retail price of a copy of the translation of the work.

(3) Every applicant for a licence under this section shall, along with his application, deposit with the Registrar of Copyrights such fee as may be prescribed.

(4) Where an application is made to the Copyright Board under this section, it may, after holding such inquiry as may be prescribed, grant to the applicant a licence, not being an exclusive licence, to produce and publish a translation of the work in the language mentioned in 3[the application—

(i) subject to the condition that the applicant shall pay to the owner of the copyright in the work royalties in respect of copies of the translation of the work sold to the public, calculated at such rate as the Copyright Board may, in the circumstances of each case, determine in the prescribed manner; and

(ii) where such licence is granted on an application under sub-section(1A), subject also to the condition that the licence shall not extend to the export of copies of the translation of the work outside India and every copy of such translation shall contain a notice in the language of such translation that the copy is available for distribution only in India:

Provided that nothing in clause (ii) shall apply to export by Government or any authority under the Government of copies of such translation in a language other than English, French or Spanish in any country if—

(1) such copies are sent to citizens of India residing outside India or to any association of such citizens outside India; or

(2) such copies are meant to be used for purposes of teaching, scholarship or research and not for any commercial purpose; and

(3) in either case, the permission for such export has been given by the Government of that country:]

4[Provided further that no licence under this section] shall be granted, unless—

(a) a translation of the work in the language mentioned in the application has not been published by the owner of the copyright in the work or any person authorised by him, 5[within seven years or three years or one year, as the case may be, of the first publication of the work], or if a translation has been so published, it has been out of print;

(b) the applicant has proved to the satisfaction of the Copyright Board that he had requested and had been denied authorisation by the owner of the copyright to produce and publish such translation, or that 6[he was, after due diligence on his part, unable to find] the owner of the copyright;

(c) where the applicant was unable to find the owner of the copyright, he had sent a copy of his request for 7[such authorisation by registered air mail post to the publisher whose name appears from the work, and in the case of an application for a licence under sub-section (1)], not less than two months before 8[such application];

9[(cc) a period of six months in the case of an application under sub-section (1A) (not being an application under the proviso thereto), or nine months in the case of an application under the proviso to that sub-section, has elapsed from the date of making the request under clause (b) of this proviso or where a copy of the request has been sent under clause (c) of this proviso, from the date of sending of such copy, and the translation of the work in the language mentioned in the application has not been published by the owner of the copyright in the work or any person authorised by him within the said period of six months or nine months, as the case may be;

(ccc) in the case of any application made under sub-section (1A),—

(i) the name of the author and the title of the particular edition of the work proposed to be translated are printed on all the copies of the translation;

(ii) if the work is composed mainly of illustrations, the provisions of section 32A are also complied with;]

(d) the Copyright Board is satisfied that the applicant is competent to produce and publish a correct translation of the work and possesses the means to pay to the owner of the copyright the royalties payable to him under this section;

(e) the author has not withdrawn from circulation copies of the work; and

(f) an opportunity of being heard is given, wherever practicable, to the owner of the copyright in the work.

9[(5) Any broadcasting authority may apply to the Copyright Board for a licence to produce and publish the translation of—

(a) a work referred to in sub-section (1A) and published in printed or analogous forms of reproduction;or

(b) any text incorporated in audio-visual fixations prepared and published solely for the purpose of systematic instructional activities,

for broadcasting such translation for the purposes of teaching or for the dissemination of the results of specialised, technical or scientific research to the experts in any particular field.

(6) The provisions of sub-sections (2) to (4) in so far as they are relatable to an application under sub-section (1A), shall, with the necessary modifications, apply to the grant of a licence under sub-section (5) and such licence shall not also be granted unless—

(a) the translation is made from a work lawfully acquired;

(b) the broadcast is made through the medium of sound and visual recordings;

(c) such recording has been lawfully and exclusively made for the purpose of broadcasting in India by the applicant or by other broadcasting agency; and

(d) the translation and the broadcasting of such translation are not used for any commercial purposes.

Explanation.—For the purposes of this section,—

(a) “developed country” means a country which is not a developing country;

(b) “developing country” means a country which is for the time being regarded as such in conformity with the practice of the General Assembly of the United Nations;

(c) “purposes of research” does not include purposes of industrial research, or purposes of research by bodies corporate (not being bodies corporate owned or controlled by Government) or other association or body of persons for commercial purposes;

(d) “purposes of teaching, research or scholarship” includes—

(i) purposes of instructional activity at all levels in educational institutions, including Schools, Colleges, Universities and tutorial institutions; and

(ii) purposes of all other types of organised educational activity.]

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1. Ins. by Act 23 of 1983, sec. 13 (w.e.f. 9-8-1984).

2. Subs. by Act 23 of 1983, sec. 13, for “such application” (w.e.f. 9-8-1984).

3. Subs. by Act 23 of 1983, sec. 13, for certain words (w.e.f. 9-8-1984).

4. Subs. by Act 23 of 1983, sec. 13, for “Provided that no such licence” (w.e.f. 9-8-1984).

5. Subs. by Act 23 of 1983, sec. 13, for “within seven years of the first publication of the work” (w.e.f. 9-8-1984).

6. Subs. by Act 23 of 1983, sec. 13, for “he was unable to find” (w.e.f. 9-8-1984).

7. Subs. by Act 23 of 1983, sec. 13, for “ such authorisation to the publisher whose name appears from the work” (w.e.f. 9-8-1984).

8. Subs. by Act 23 of 1983, sec. 13, for “the application for the licence” (w.e.f. 9-8-1984).

9. Ins. by Act 23 of 1983, sec. 13 (w.e.f. 9-8-1984).

32-A. Licence to reproduce and publish works for certain purposes-

(1) Where, after the expiration of the relevant period from the date of the first publication of an edition of a literary, scientific or artistic work,-

(a) The copies of such edition are not made available in India; or

(b) Such copies have not been put on sale in India for a period of six months.

To the general public or in connection with systematic instructional activities at a price reasonably related to that normally charged in India for comparable works by the owner of the right of reproduction or by any person authorised by him in this behalf, any person may apply to the Copyright Board for a licence to reproduce and publish such work in printed or analogous forms of reproduction at the price at which such edition is sold or at a lower price for the purposes of systematic instructional activities.

(2) Every such application shall be made in such forms as may be prescribed and shall state the proposed retail price of a copy of the work to be reproduced.

(3) Every applicant for a licence under this section shall, along with his application, deposit with the Registrar of Copyrights such fee as may be prescribed.

(4) Where an application is made to the Copyright Board under this section, it may, after holding such inquiry as may be prescribed, grant to the applicant a licence, not being an exclusive licence, to produce and publish a reproduction of the work mentioned in the application subject to the condition that ,-

(a) The applicant shall pay to the owner of the copyright in the work royalties in respect of copies of the reproduction of the work sold to the public, calculated at such rate as the Copyright Board may, in the circumstances of each case, determine in the prescribed manner.

(b) A licence granted under this section shall not extend to the export of copies of the reproduction of the work outside India and every copy of such reproduction shall contain a notice that the copy is available for distribution only in India.

Provided that no such licence shall be granted unless-

(a) The applicant has proved to the satisfaction of the Copyright Board that he had requested and had been denied authorisation by the owner of the copyright in the work to reproduce and publish such work to that he was, after due diligence on his part, unable to find such owner.

(b) Where the applicant was unable to find the owner of the Copyright, he had sent a copy of his request for such authorisation by registered airmail post to the publisher whose name appears from the work not less than three months before the application for the licence.

(c) The Copyright Board is satisfied that the applicant is competent to reproduce and publish an accurate reproduction of the work and possesses the means to pay to the owner of the copyright the royalties payable to him under this section.

(d) The applicant undertakes to reproduce and publish the work at such price as may be fixed by the Copyright Board, being a price reasonably related to the price normally charged in India for works of the same standard on the same or similar subjects;

(e) A period of six months in the case of an application for the reproduction and publication of any work of natural science, physical science, mathematics or technology, or a period of three months in the case of an application for the reproduction and publication of any other work, has elapsed from the date of making the request under clause (a), or where a copy of the request has been sent under clause (b), from the date of sending of a copy, and a reproduction of the work has not been published by the owner of the copyright in the work or any person authorised by him within the said period of six months or, three months, as the case may be;

(f) The name of the author and the title of the particular edition of the work proposed to be reproduced are printed on all the copies of the reproduction;

(g) The author has not withdrawn from circulation copies of the work; and

(h) An opportunity of being heard is given, wherever practicable, to the owner of the copyright in the work.

(5) No licence to reproduce and publish the translation of a work shall be granted under this section unless such translation has been published by the owner of the right of translation or any person authorised by him and the translation is not in a language in general use in India.

(6) The provisions of this section shall also apply to the reproduction and publication, or translation into a language in general use in India, of any text incorporated in audio-visual fixation prepared and published solely for the purpose of systematic instructional activities.

Explanation – For the purposes of this section, “relevant period” in relation to any work, means a period of-

(a) Seven years from the date of the first publication of that work, where the application is for the reproduction and publication of any work of , or relating to fiction, poetry, drama, music or art.

(b) Three years from the dare of the first publication of that work, where the application is for the reproduction and publication of any work of, or relating to, natural science, physical science, mathematics or technology, and

(c) Five years from the date of the first publication of that work, in any other case.

32.B. Termination of licences issued under this Chapter-

(1) If, at nay time after the granting of a licence to produce and publish the translation of a work in any language under sub section (1-A) of section 32 (hereafter in this sub section referred to as the licensed work) , the owner of the copyright in the work or any person authorised by him publishes a translation of such work in the same language and which is substantially the same in content at a price reasonably related to the price normally charged in India for the translation of works of the same standard on the same or similar subject, the licence so granted shall be terminated.

Provided that no such termination shall take effect until after expiry of a period of three months from the date of service of a notice in the prescribed manner on the person holding such licence by the owner of the right of translation intimation the publication of the translation as aforesaid.

Provided further that copies of the licensed work produced and published by the person holding such licence before the termination of the licence takes effect may continue to be sold or distributed until the copies already produced and published are exhausted.

(2), If , at any time after the granting of a licence to produce and publish the reproduction or translation of any work under section 32-A, the owner of the right of reproduction or any person authorised by him sells or distributes copies of such work or a translation thereof, as the case may be, in the same language and which is substantially the same in content at a price reasonably related to the price normally charged in India or works of the same standard on the same or similar subject, the licence so granted shall be terminated.

Provided that no such termination shall take effect until after the expiry of a period of three months from the date of service of a notice in the prescribed manner on the person holding the licence by the owner of the right of reproduction intimating the sale or distribution of the copies of the editions of work as aforesaid.

Provided further that any copies already reproduced by the licensee before such termination takes effect continue to be sold or distributed until the copies already produced are exhausted.

———————————–

1. Ins. by Act 23 of 1983, sec. 14 (w.e.f. 9-8-1984).

CHAPTER VII – Copyright Societies

33. Registration of copyright society-

(1) No person or association of persons shall, after coming into force of the Copyright (Amendment) Act, 1994 commence or, carry on the business of issuing or granting licences in respect of any work in which copyright subsists or in respect of any other rights conferred by this Act except under or in accordance with the registration granted under sub section (3):

Provided that an owner of copyright shall, in this individual capacity, continue to have the right to grant licences in respect of his own works consistent with his obligations as a member of the registered copyright society.

Provided further that a performing rights society functioning in accordance with the provisions of Section 33 on the date immediately before the coming into force of the Copyright (Amendment) Act, 1994 shall be deemed to be a copyright society for the purposes of this Chapter and every such society shall get itself registered within a period one year from the date of commencement of the Copyright (Amendment) Act, 1994.

(2) Any association of persons which fulfils such conditions as may be prescribed may apply for permission to do the business specified in sub section (1) to the Registrar of Copyrights who shall submit the application to the Central Government.

(3) The Central Government may, having regard to the interest of the authors and other owner of rights under this Act, the interest and convenience of the public and in particular of the groups of persons who are most likely to seek licences in applicants, register such association of persons as a copyright society to such conditions as may be prescribed.

Provided that the Central Government shall not ordinarily register more than one copyright society to do business in respect of the same class of works.

(4) The Central Government may, if it is satisfied that a copyright society is being managed in a manner detrimental to the interest of the owners of rights concerned, cancel the registration of such society after such inquiry as may be prescribed.

(5) If the Central Government is of the opinion that in the interest of the owners of rights concerned, it is necessary so to do, it may, by order, suspend the registration of such society pending inquiry for such period not exceeding one year as may be specified in such order under sub section (4) and that Government shall appoint and administrator to discharge the functions of the copyright society.

———————–

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995).

34. Administration of rights of owner by copyright society –

(1) Subject to such conditions as may be prescribed,-

(a), a copyright society may accept from an owner of rights exclusive authorisation to administer any right in any work by issue of licences or collection of licence fees or both, and

(b) an owner of rights shall have the right to withdraw such authorisation without prejudice to the rights of the copyright society under any contract.

(2) It shall be competent for a copyright society ot enter into agreement with any foreign society or organisation administering rights corresponding to rights under this Act, to entrust to such foreign society or organisation the administration in any foreign country of rights administered by the said copyright society in India, or for administering in India the rights administered in a foreign society or organisation the administration in any foreign country of rights administered by the said copyright society in India, or for administering in India the rights administered in a foreign country by such foreign society or organisation.

Provided that no such society or organisation shall permit any discrimination in regard to the terms of licence or the distribution of fees collected between rights in Indian and other works.

(3) Subject to such conditions as may be prescribed, a copyright society may –

(i) Issue licences under Section 30 in respect of any rights under this Act,

(ii) Collect fees in pursuance of such licences,

(iii) Distribute such fees among owners of rights after making deductions for its own expenses,

(iv) Perform any other functions consistent with the provisions of Section 35.

———————-

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995).

34-A. Payment of remunerations by copyright society –

(1) If the Central Government is of the opinion that a copyright society for a class of work is generally administering the rights of the owners of rights in such work throughout India, it shall appoint that society for the purposes of this section.

(2) The copyright society shall, subject to such rules as may be made in this behalf, frame a scheme for determining the quantum of remuneration payable to individual copyright owners having regard to the number of copies of the work is circulation:

Provided that such scheme shall restrict payment to the owners of rights whose works have attained a level of circulation which the copyright society considers reasonable.

———————

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995).

35. Control over the copyright society by the owner of rights –

*[35. Control over the copyright society by the owner of rights.—(1) Every copyright society shall be subject to the collective control of the owners of rights under this Act whose rights it administers (not being owners of rights under this Act administered by a foreign society or organisation referred to in sub-section (2) of section 34) and shall, in such manner as may be prescribed,—

(a) obtain the approval of such owners of rights for its procedures of collection and distribution of fees;

(b) obtain their approval for the utilisation of any amounts collected as fees for any purpose other than distribution to the owner of rights; and

(c) provide to such owners regular, full and detailed information concerning all its activities, in relation to the administration of their rights.

(2) All fees distributed among the owners of rights shall, as far as may be, be distributed in proportion to the actual use of their works.]

———————–

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995).

36. Submission of returns and reports –

(1) Every copyright society shall submit to the Registrar if Copyright such returns as may be prescribed.

(2) Any officer duly authorised by the Central Government in this behalf may call for any report and also call for any record of any copyright society for the purpose of satisfying himself that the fees collected by the society in respect of rights administered by it are being utilised or distributed in accordance with the provisions of this Act.

—————-

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995).

36-A. Rights and liabilities of performing rights societies –

*[36A. Rights and liabilities of performing rights societies.—Nothing in this Chapter shall affect any rights or liabilities in any work in connection with a performing rights society which had accrued or were incurred on or before the day prior to the commencement of the Copyright (Amendment) Act, 1994, or any legal proceedings in respect of any such rights or liabilities pending on that day.]

———————–

* Chapter VII (containing sections 33, 34, 34A, 35, 36 and 36A) subs. by Act 38 of 1994, sec. 11, for Chapter VII (containing sections 33 to 36) (w.e.f. 10-5-1995)

CHAPTER VIII – Rights of Broadcasting Organisation and of Performers

37. Broadcast reproduction right –

(1) Every broadcasting organistaon shall have a special right to the know as ‘broadcast reproduction right” in respect of its broadcasts.

(2) The broadcast reproduction right shall subsist until twenty five years from the beginning of the calendar year next following the year in which the broadcast in made.

(3) During the continuance of a broadcast reproduction right in relation to an broadcast, any person who, without the licence of the owner of the right does nay of the following acts of the broadcast or any substantial part thereof,-

(a) Rebroadcasts the broadcast, or

(b) Causes the broadcasts to be heard or seen by the public on payment of any charges, or

(c) Makes any sound recording or visual recording of the broadcast, or

(d) Makes any reproduction of such sound recording or visual recording where such initial recording was done without licence or, where it was licence, for any purposes not envisaged by such licence, or

(e) Sells or heirs to the public, or offers for such sale or hire, any such sound recording or visual recording referred to in clause (C) or clause (d), shall, subject to the provisions of Section 39, be deemed to have infringed broadcast reproduction right.

38. Performer’s right –

(1) Where any performer appears or engages in any performance, he shall have a special right to be known as the “performer’s right” in relation to such performance.

(2) The performer’s right shall subsist until twenty-five years from the beginning of the calendar year next following the year in which the performance is made.

(3) During the continuance of performer’s right in relation to any performance, any person who, without the consent of the performer, does any of the following acts in respect of the performance or any substantial part thereof, namely;-

(a) Makes a sound recording or visual recording of the performance, or

(b) Reproduces a sound recording or visual recording of the performance, which sound recording or visual recording was-

(c) Made without the performer’s consent, or

(i) Made for purposes different from those for which the performer gave his consent, or

(ii) Made for purposes different from those referred to in Section 39 from a sound recording or visual recording which was made in accordance with Section 39, or

(a) Broadcasts the performance except where the broadcast is made from a sound recording or visual recording other than one made in accordance with Section 39, or is a rebroadcast by the same broadcasting organisation of an earlier broadcast which did not infringe the performer’s right, or

(b) Communicates the performance to the public otherwise than by broadcast, except where such communication to the public is made from a sound recording or visual recording or a broadcast.

Shall, subject to the provisions of section 39, be deemed to have infringed the performer’s right.

(4) Once a performer has consented to the incorporation of his performance in a cinematograph film, the provision of sub sections (1), (2) and (3) shall have no further application to such performance.

39. Acts not infringing broadcast reproduction right or performer’s right-

No broadcast reproduction right or performer’s right shall be deemed to be infringed by-

(a) The making of any sound recording or visual recording for the private use of the person making such recording, or solely for purposes of bona fide teaching or research, or

(b) The use, consistent with fair dealing, of excepts of a performance or of a broadcast in the reporting of current events or for bona fide review, teaching or research, or

(c) Such other acts, with any necessary adaptations and modifications, which do not constitute infringement of copyright under Section 52.

—————————–

1. Subs. by Act 38 of 1994, sec. 15, for section 39 (w.e.f. 10-5-1995).

39-A. Other provisions applying to broadcast reproduction right and performer’s right –

Sections 18, 19, 30, 53, 55, 58, 64, 65 and 66 shall, with any necessary adaptations and modifications, apply in relation to the broadcast reproduction right in any broadcast and the performer’s right in any performance as they apply in relation to copyright in a work.

Provided that where copyright or performer’s right subsists in respect of any work or performance that has been broadcast, no licence to reproduce such broadcast shall take effect without the consent of the owner of rights or performer, as the case may be, or both of them.

——————————-

1. Subs. by Act 38 of 1994, sec. 15, for section 39 (w.e.f. 10-5-1995).

CHAPTER IX – International Copyright

40. Power to extend copyright to foreign works-

The Central Government may, by order published in the Official Gazette, direct that all or any provisions of this Act, shall apply.

(a) To work first published in any territory outside India to which the order related in like manner as if they were first published within India,

(b) To unpublished works, or any class thereof, the authors whereof were at the time of the making of the work, subjects or citizens of a foreign country to which the order relates, in like manner as if the authors were citizens of India.

(c) In respect of domicile in any territory outside India to which the order relates in like manner as if such domicile were in India

(d) To any work of which the author was at the date of the first publication thereof, or, in case where the author was dead at the date, was at the time of his death, a subject or citizens of foreign country to which the order relates in like manner as if the author was a citizen of India at that date or time.

And thereupon, subject to the provisions of this Chapter and of the order, this Act shall apply accordingly.

Provided that –

(i) Before making an order under this section in respect of any foreign country (other than a country with which India has entered into a treaty or which is a party to a convention relating to copying to which India is also a party, the Central Government shall be satisfied that foreign country has made, or has undertaken to make, such provision, if any, as it appears to the Central Government expedient to require for the protection in that country of works entitled to copyright under the provisions of this Act,

(ii) The order may provide that the provisions of this Act shall apply either generally or in relation to such classes of works or such classes of case may be specified in the order.

(iii) The order may provide that the term of copyright in India shall not exceed that conferred by the law of the country to which the order relates:

(iv) The order may provide that the enjoyment of the rights conferred by this Act shall be subject to the accomplishment of such conditions and formalities, if any, as may be prescribed by the order,

(v) In applying the provisions of this Act as to ownership of copyright, the order may make such exceptions and modifications as appear necessary, having regard to the law of the foreign country.

(vi) The order may provide that this Act or any part thereof shall not apply to works made before the commencement of the order or that this Act or any part thereof shall not apply to works first published before the commencement of the order.

41. Provisions as to works of certain international organisations –

(1) Where-

(a) Any work is made or first published by or under the direction or control of any organsiation to which the section applies, and

(b) There would, apart from this section, be no copyright in the work in India at the time of the making or, as the case may be, of the first publication thereof, and

(c) Either –

(i) The work is published as aforesaid in pursuance of an agreement in that behalf with the author, being an agreement which does not reserve to the author the copyright, if any, in the work, or

(ii) Under Section 17 any copyright in the work would belong to the organisation.

There shall, by virtue of this section, be copyright in the work throughout India.

(2) Any organisation to which this section applies which at the material time had not the legal capacity of a body corporate shall have and be deemed at all material times to have had the legal capacity of a body corporate for the purposes of holding, dealing with, and enforcing copyright and in connection with all legal proceeding relating to copyright.

(3) The organisation to which this section applies are such organisation as the Central Government may, by order published in the Official Gazette, declare to be organisation of which one or more sovereign powers or the Government or Governments thereof are members to which it is expedient that this section shall apply.

42. Power to restrict rights in works of foreign authors first published in India –

If it appears to the Central Government that a foreign country does not give or has not undertaken to give adequate protection to the works of Indian authors, the Central Government may, by order published in the Official Gazette, direct that such of the provisions of this Act as confer copyright on works first published after the date specified in the order, the authors whereof are subjects or citizens of such foreign country and are not domiciled in India, and thereupon those provisions shall not apply to such works.

43. Orders under this Chapter to be laid before Parliament-

Every order made by the Central Government under this Chapter shall, as soon as may be after it is made, be laid before both Houses of Parliament and shall be subject to such modifications as Parliament may make during the session in which it is so laid or the session immediately following.

CHAPTER X – Registration of Copyright

44. Register of Copyright –

There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and address of authors, publishers and owners of copyright and such other particulars as may be prescribed.

45. Entries in Register of Copyrights-

(1) The author or published of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights.

[(Note: Added by Act 23 of 1983, S.16 (w.e.f. 9-8-1984) Provided that in respect of an artistic work which in used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under than Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant.]

(2) On receipt of an applicant in respect of any work under sub section (1), the Registrar of Copyrights may, after holding any such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.

NOTES

Registration not essential – Registration is not a condition precedent for filing any action against infringement of copyright. The provision is optional and is only intended to provide a prima facie proof of the particulars.

Non-registration does not deprive the owner of copyright of his right to bring both criminal and civil action.

46. Indexes –

There shall be also kept at the Copyright Office such indexes of the Register of Copyrights, as may be prescribed.

47. Form and inspection of register.-

The register of Copyrights and indexes thereof kept under this Act shall at all reasonable times be open to inspection, and any person shall be entitled to take copies of, or make extracts from, such register or indexes on payment of such fee and subject to such conditions as may be prescribed.

48. Register of Copyrights to be prima facie evidence of particulars entered therein –

The Register of Copyright shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or production of the original.

49. Correction of entries in the Register of Copyrights –

The Register of Copyrights may, in the prescribed cases and subject to the prescribed conditions, amend or alter the Register of Copyrights by –

(a) Correcting any error in any name, address or particulars, or

(b) Correcting any other error which may have arisen therein by accidental slip or omission.

50. Rectification of Register by Copyright Board-

The Copyright Board, on application of the Registrar of Copyrights or of any person aggrieved, shall order the rectification of the Register of Copyrights by-

(a) The making of any entry wrongly omitted to be made in the register, or

(b) The expunging of any entry wrongly made in, or remaining on, the register, or,

(c) The correction of any error or defect in the register.

50A. Entries in the Register of Copyrights, etc. to be published-

Every entry made in the Register of Copyrights or the particulars of any work entered under Section 45, the correction of every entry made in such register under Section 49, and every rectification ordered under section 50, shall be published by the Registrar of Copyrights in the Official Gazette or in such other manner as he may deem fit.

51. When copyright infringed –

Copyright in a work shall be deemed to be infringed –

(a) When any person, without a licence granted by the owner of the Copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any conditions imposed by a competent authority under this Act-

(i) Does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii) [(Note: Subs. by Act 38 of 1994, S.16(1) (w.e.f. a date to be notified)) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright, or]

(b) When any person –

(i) Make for sale on hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or

(ii) Distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright, or

(iii) By way of trade exhibits in public, or

(iv) Imports (Omitted by Act 65 of 1984, S.3 (w.e.f. 8-10-1984)) into India, any infringing copies of the work:

[(Note: Subs. by Act 38 of 1994, S.16(2) (w.e.f. a date to be notified)) Provided that nothing in such clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.]

Explanation – For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy”.

NOTES

Basis of Copyright Law. – The fundamental idea of violation of copyright or imitation is the violation of the eighth commandment: “Thou shall not steal,” which makes the moral basis of the protective provisions of the Copyright Act.. It is obvious that when a writer or a dramatist produces a drama, it is the result of his great labour, energy, time and ability and if any other person is allowed to appropriate the labours of the copyright work, his act amounts to theft by depriving the original owner of the copyright of the product of his labour.

Test – There is no better way of detecting the piracy in an alleged infringing work than by making a careful examination of it to see whether any of the deviation and mistakes which artistic licence permits in the original have been reproduced in the alleged infringing copy.

Similar mistakes – Where the mistakes committed by the plaintiff in certain calculations in his book were found in the defendant’s book in similar calculations it was held that the defendant had copied the calculations from plaintiff’s book.

Common source – A person is at liberty to draw upon common sources of information. But if he saves himself the trouble and labour requisite for collecting that information by adopting another’s work with colorable variations, he is guilty of infringement of copyright, even though the original work is based on materials which are common property.

It is well-settled that even where the source of information used in a book is common and which is available to all, even then a compilation which has been brought out as a result of labour and industry put by a person, then in such a case he can claim a copyright in the publication brought out by him.

Several persons may originate similar works in the same general form without anyone infringing the law in regard to copyright. The infringement comes in only when it can be shown that someone has, instead of utilizing the available sources to originate his work, appropriated the labours of another by resorting to a slavish copy or mere colorable imitation thereof.

In cases of works composed of or compiled or prepared from materials open to all the true principle is that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at, for the purpose of producing his work, that is in fact, merely to take away the result of another man’s labour or on other words, hi property.

A person relying on plea of common source must show that he went to common source from which he borrowed, employing his skill, labour and brains and that he did not merely do the work of copyist by copying away from a work.

In law books the amount of “originality” will be very small, but that small amount is protected by law.

In law reports containing only approved repots of cases decided by courts, there is copyright. A man is not allowed to appropriate for himself the arrangement, sequence, order, idiom, etc., employed by another, using his brains, skill and labour.

The plaintiffs complied their book with considerable labour from various sources and digested and arranged the matter taken by them from other authors. The defendant instead of taking pains of searching into all common sources and obtaining his subject-matter from them availed himself of the labour of the plaintiffs and adopted their arrangement and subject-matter. Such a use by defendant of the plaintiffs book cannot be regarded as legitimate.

Where the balance of convenience and inconvenience on both sides is equal, the defendant who has been proved to have prima facie infringed the copyright of the plaintiff’s work must suffer inconvenience by grant of injunction rather than the plaintiff by not granting it.

Temporary injunction may be granted even if reference pirated by the defendant are insignificant compared to the total volume of the defendant’s work.

Abridgement and translations can both infringe copyright – 70 Cal WN 1130.

52. Certain acts not to be infringement of copyright –

(1) The following acts shall not constitute an infringement of copyright namely –

(a) A fair dealing with a literary, dramatic, musical or artistic work [not being a computer programme (Note: Ins. by Act 38 of 1994, S.17 (w.e.f. a date to be notified))] for the purposes of –

(i) [(Note: Subs. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) private use, including research:]

(ii) Criticism or review, whether of that work or of any other work.

(aa) [(Note: Ins. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) The making of copies or adaptation of a computer programme by the lawful possessor of a copy of such computer programme, from such copy-

(i) In order to utilize the computer programme for the purposes for which ti was supplied, or

(ii) To make back up copies purely as a temporary protection against loss, destruction or damage in order only to utilize the computer programme for the purpose for which it was supplied;]

(b) A fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting current events-

(i) In a newspaper, magazine or similar periodical, or

(ii) By [(Note: Subs. for “radio-diffusion” by Act 23 of 1983, S.2 (w.e.f. 9-8-1984)) broadcast] or in a cinematograph film or by means of photographs,

[(Note: Ins. by Act 23 of 1983, S.18 (w.e.f. 9-8-1984)) Explanation – The publication of a compilation of address or speeches delivered in public is not a fair dealing of such work within the meaning of this clause.]

(a) The reproduction of a literary, dramatic, musical or artistic work for the purpose of judicial proceeding or for the purpose a report of a judicial proceedings;

(b) The reproduction or publication of a literary, dramatic, musical or artistic work in any work prepared by the Secretariat of a Legislature, or, where the Legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;

(c) The reproduction of any literary, dramatic or musical work in a certified copy made or supplied in accordance with any law for the time being in force;

(d) The reading or recitation in public of any reasonable extract form a published literary or dramatic work;

(e) The publication in a collection, mainly composed on non copyright matter, bona fide intended for the use of educational institutions and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for the use of educational institutions, in which copyright subsists;

Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.

Explanation – In the case of a work of joint authorship, references in this clause to passages from works shall include references to passages from works by any one or more of the authors of those passages or by any one or more those authors in collaboration with any other person;

(f) The reproduction of a literary, dramatic, musical or artistic work-

(i) By a teacher or a pupil in the course of instruction, or

(ii) As part of the questions to be answered in an examination, or

(iii) In answers to such questions

(g) The performance, in the course of the activities of an educational institutions, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a [(Note: Subs. by Act 38 of 1994, S.2 (xii) (w.e.f. a date to be notified)) sound recording], if the audience is limited to such staff and students, the parents and guardians of the students and persons directly connected with activities of the institution [(Note: Ins. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) or the communication to such an audience of a cinematograph film or sound recording];

(h) [(Note: Subs. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) The making of sound recordings in respect of any literary, dramatic or musical work, if-

(i) Sound recordings of that work have been made by or with the licence or consent of the owner of the right in the work

(ii) The person making the sound recordings has given a notice of his intentions to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf.

Provided that-

(i) No alterations shall be made which have not been made previously by or with the consent of the owner of rights, or which are not reasonably necessary for the adaptation of the work for the purpose of making the sound recordings.

(ii) The sound recordings shall not be issued in any form of packaging or with any label which is likely to mislead or confuse the public as to their identity.

(iii) No such sound recording shall be made until the expiration of two calendar years after the end of the year in which the first sound recording of the work was made, and

(iv) The person making such sound recordings shall allow the owner of rights or his duly authorised agent or representative to inspect all records and books of accounts relating to such sound recording.

Provided further that if on a complaint brought before the Copyright Board to the effect that the owner of rights has not been paid in full for any sound recordings purporting to be made in pursuance of this clause, the Copyright Board is prima facie, satisfied that the complaint is genuine. It may pass an order ex prate directing the person making the sound recording to cease from making further copies and, after holding such inquiry as it considers necessary, make such further orders as it may deem fit, including an order for payment of royalty.

(i) The causing of a recording to be heard in public by utilizing it, –

(i) In an enclosed room or shall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein, or

(ii) As part of the activities of a club or similar organisation which is not established or conducted for profit.

(k) The performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non paying audience, or for the benefit of a religious institution.

(l) The reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction.

(m) The publication in a newspaper, magazine or other periodical of a report of a lecture delivered in public

(n) The making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plant) by or under the direction of the person in charge of a public library for the use of the library if such book is not available for sale in India.

(o) The reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access.

Provided that where the identity of the author of such work, or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than fifty years from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identify is known or, if the identify of more authors than one is known from the death of such of those authors who dies last.

(p) The reproduction or publication of-

(i) Any matter which has been published in any Gazette except an Act if a Legislature.

(ii) Any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or nay other original matter.

(iii) The report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of Legislature, unless the reproduction or publication of such report is prohibited by the Government.

(iv) Any judgement or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgement or order is prohibited by the court, the tribunal or other judicial authority, as the case may be

(q) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made there under-

(i) If no translation of such Act or rules or orders in that language has previously been produced or published by the Government, or

(ii) Where a translation of such Act or rules or orders in that language has been produced or published by the Government if the translation is not available for sale to the public

Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government.

(r) [(Note: subs. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) the making or publishing of a painting, drawing, engraving or photograph of a work of architecture or the display of a work of architecture.]

(s) The making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other artistic work falling under sub clause (iii) of clause (e) of Section 2, if such work is permanently situate in a public place or any premises to which the public has access.

(t) The inclusion in a cinematograph film of-

(i) Any artistic work permanently situate in a public place or any premises to which the public has access, or

(ii) Any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film,

(u) The use by the author of an artistic work where the author of such work is not the owner of the copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of the work.

Provided that he does not thereby repeat or imitate the main design of the work

(v) (Note: Omitted by Act 38 of 1994, S.17 (w.e.f. a date to be notified))

(w) The reconstruction of a building or structure in accordance with the architectural drawings or plans by references to which the building or structure was originally constructed.

Provided that the original construction was made with the consent or licence of the owner of the copyright in such drawings and plans,

(x) In relation to a literary, dramatic or musical work recorded or reproduced in any cinematograph film, the exhibition of such film after the expiration of the term of copyright therein.

Provided that provisions of sub clause (ii) of clause (a), sub clause (I) of clause (b) and clauses (d), (f), (g), (m), and (p) shall not apply as respects any act unless that act is accompanied by an acknowledge –

(i) Identifying the work by its title or other description, and

(ii) Unless the work is anonymous or the author of the work has previously agreed or required that no acknowledgement of his name should be made, also identifying the author.

(y) [(Note: Ins. by Act 38 of 1994, S.17 (w.e.f. a date to be notified)) the making of an ephemeral recording, by a broadcasting organisation using its own facilities for its own broadcast by a broadcasting organisation of a work which it has the right to broadcast, and the retention of such recording for archival purpose on the ground of its exceptional documentary character.

(z) The performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.

Explanation – For the purpose of this clause, religious ceremony includes a marriage procession and other social festivities associated with a marriage.]

(2) The provision of sub section (I) shall apply to the doing of any act in relation to the translation of a literary, dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as they apply in relation to the work itself.

52A. Particulars to be included in sound recordings and video films –

(1)No person shall publish a [(Note: Subs. by Act 38 of 1994, S.2 (xii) (w.e.f. a date to be notified)) sound recording] in respect of any work unless the following particulars are displayed on the [(Note: Subs. by Act 38 of 1994, S.2 (xii) (w.e.f. a date to be notified)) sound recording] and on nay container thereof, namely :-

(a) The name and address of the person who has made the [(Note: Subs. by Act 38 of 1994, S.2 (xii) (w.e.f. a date to be notified)) sound recording];

(b) The name and address of the owner of the copyright is such work; and

(c) The year of its first publication

(2) No person shall publish a video film in respect of any work unless the following particulars are displayed in the video film, when exhibited, and on the video cassette or other container thereof, namely:-

(a) If such work is cinematograph film required to be certified for exhibition under the provisions of the Cinematograph Act, 1952 (37 of 1952), a copy of the certificate granted by the Board of Film Certification under Section 5-A of that Act in respect of such work.

(b) The name and address of the person who has made the video film and a declaration by him that he has obtained the necessary licence or consent from the owner of the copyright in such work for making such video film, and

(c) The name and address of the owner of the copyright in such work.

52B. Accounts and audit –

(1) Every copyright society appointed under Section 345-A shall maintain proper accounts and other relevant records and prepare an annual statement of accounts, in such form and in such manner as may be prescribed by the Central Government in consultation with the