Salient Features of

the Trade Mark Act,

1999
Prepared by:
Aayushi Pathak
Anurag Sarkar
Bharat Khosla
Mahender Konda
Shantanu Srivastava

Background
With the globalization of trade, brand names, trade names, marks, etc. have
attained an immense value.
Requires minimum standard of protection and efficient procedures for
enforcement as were recognized under the TRIPS (The Agreement on TradeRelated Aspects of Intellectual Property Rights).
The Trade Marks Act provides, inter alia, for registration of service marks, filing
of multiclass applications, increasing the term of registration of a trademark to
ten years as well as recognition of the concept of well-known marks, etc.

Definition
A Trademark has been defined in section 2(zb) of the Trademarks Act, 1999

Trademark means a mark a capable of being represented graphically and

which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and
combination of colors.
A Mark includes a device, brand, heading, label, ticket, name (including
abbreviations), signature, word, letter, numerals, shape of goods, packaging or
combination of colors and any combination thereof.

Chapter II: THE REGISTER AND CONDITIONS

FOR REGISTRATION- Section 3-11
Central Govt. appoints a controller- General of Patents, Designs and Trade
Mark who is known as the Registrar of Trade Marks
A record is maintained by the Registrar at the Trade Marks Registry which is
called the Register of Trade Marks
The Registrar classifies goods or services in accordance with the
International Classification of goods and services published by World
Intellectual Property Organization (WIPO).

Disqualifications
Under section 9(2) a mark shall not be registered as a trade mark if:
it is of such nature as to deceive the public or cause confusion
it contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India
it comprises or contains scandalous or obscene matter
its use is prohibited under the Emblems and Names (Prevention of Improper
Use) Act, 1950
Under section 9(3) a mark shall not be registered as a trade mark if it consists
exclusively of:
the shape of goods which results from the nature of the goods themselves
the shape of goods which is necessary to obtain a technical result

Protection of well-known trade

marks- Section 11
A well-known Trademark in relation to any goods or services means a
mark that has become so to the substantial segment of the public, which
uses such goods or receives such services such that the use of such a mark in
relation to other goods and services is likely to be taken as indicating a
connection between the two marks.

The proprietor of well-known mark will be entitled toprevent use of identical

or similar trade mark in connection with goods or services which in future may
lead to unfair advantage or detrimental to the reputation of the well-known
trademark.

APPLICATION FOR
REGISTRATION
Any person who claims to be the proprietor of the trademark proposed shall give in
writing in the prescribed manner.
Single registration maybe done for registration of different classes of goods.
Payment of the fee in that case will be with respect to it.
Subject to the provisions provided by this act the registrar may reject the application or
accept it or may refer it for further modifications, limitations as it may be required.
In such a scenario the registrar has to provide a sound ground for the such an act and
reasons for it.
Whether after the acceptance of application for registration but before registration the
registrar might withdraw the application if he feels some errors are there. (sec19).
He may also withdraw the acceptance of the application if he feels so.

 (Sec21)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.
On doing so the registrar shall send the copy to opposition.
Upon producing the evidences the registrar may provide opportunity to the
opposition to be heard of.
Correction and amendment: can be made as stated in sec 22 whether or before
the acceptance of an application.
Jointly owned trademarks: no one is authorized to use the trademark
independently and thus will only be issued by to used jointly.

 (sec-27)No action for infringement of unregistered trademarks: no person is entitled to pursue

any proceeding against a person for use of unregistered trade mark.
(sec-28)Subject to the other provisions of this Act, the registration of a trademark 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 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.
Limits on the effect or registered trademarks: (29)
A registered trademark is infringed by a person who, not be 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.

 (sec-31)In all the legal proceeding the registration of trade mark and the following
transactions and assignments should be the prime evidence of validity.
(sec-37) Power of the registered person. The registered person has the power to
assign the trademark or pass on the receipt to any person.
(Sec-39) an unregistered trade mark can pe assigned or transmitted without any
goodwill of the business.
(Sec-41) the assignment or transferability of the trademark certificate will not be
done without the consent of the registrar.

CHAPTER VI:USE OF TRADE

MARKS AND REGISTERED USERS
Proposed use of trade mark by company to be formed, etc. Section 46

It is regarding the registration and use of a trademark. The registrar will grant permission if-

A company is about to be formed and the trademark will be used in relation with the said goods
or services
The proprietor intends it to be used by a person, as a registered user.
Removal from register and imposition of limitations on ground of no use. Section 47

A registered trademark may be taken off the register in the following cases

When the trademark registered by the company was not taken for any bona fied uses.
Unless a similar trademark has been registered by the company.
If the trademark is restricted in India.
Registered users. Section 48

The trademark will be used by the proprietor or a registered person only.

Registration as registered user. Section 49

The registration of user will take place through an agreement duly signed and an affidavit made

CHAPTER VI:USE OF TRADE

MARKS AND REGISTERED USERS
Power of registrar for variation or cancellation of registration as registered user.
Section 50

The registration of the registered user may be canceled when-

An application in writing is given in prescribed manner by the proprietor to cancel it.

The registered user has used the trademark in a manner not prescribed in the registration.
The registered user has given false or incomplete information in the agreement.
The registrar or any other person finds that any stipulation in the agreement regarding the
quantity of goods or services is not being enforced or complied with.
The trade mark for a particular good or service is no longer registered.
Power of registrar to call for information relating to agreement in respect of registered
user. Section 51
The registrar can ask the proprietor to confirm weather the trademark continues to be in force or
not.
If the proprietor fails to do so the registrar can cancel the registration.
Rights of registered user to take proceedings against infringement. Section 52

CHAPTER VI:USE OF TRADE

MARKS AND REGISTERED USERS
Registered user not to have right of assignment or transmission. Section 54
When the registered user enters into a partnership with any other person. The firm can use the
trademark as long as the user is part of the firm.
Use of one of associated or substantially identical trademarks equivalent to use of
another. Section 55
If the firm is required to prove something regarding the trademark, it can use the same or
identical trademark for verification
The registration of this trademark will also extend to any identical trademark also.
Use of trademark for export trade and use when form of trade connection charges.
Section 56
The trademark can ne used by the firm for carrying out any businesses outside India.

CHAPTER VII: RECTIFICATION AND

CORRECTION OF THE REGISTER
Power to cancel or vary registration and to rectify the register. Section 57
The registrar can cancel or vary the registration when An application by an aggrieved person due to failure to observe a condition of the
agreement
Any person is affected by any entry made in the agreement.
IF an application is made to rectify the registration.
Correction of register. Section 58
On the basis of an application the registrar may correct any error in the registration or make
any changes.
Alteration of registered trademark. Section 59
The registered proprietor can apply to alter or change the registration.
Adaption of entries in register to amended or substituted classification of goods or
services. Section 60
The registrar can make entries in the register regarding the trademark after any amendment
or substitution by duly informing the proprietor and registered user.

CHAPTER VIII: COLLECTIVE MARKS

Special provision for collective marks. Section 61
A collective mark may be made for goods and services of the proprietor to distinguish it from
other similar goods and services.
Collective mark not to be misleading as to character or significance. Section 62
The collective mark should not be misleading to the public as something else and an indication
has to be made by the registrar to indicate its a collective mark
Application to be accompanied by regulations governing use of collective marks.
Section 63
An application should accompany the trademark specifying the registered users and terms of
use.
Acceptance of application and regulations by registrar. Section 64
If it appears to the registrar that the requirements for registration of collective mark is satisfied
then he may accept the application of it.
Regulations to be open for inspection. Section 65
The regulations shall be open for inspection by the public.

CHAPTER VIII: COLLECTIVE MARKS

Amendment of regulation. Section 66
IT deals with the amendment of the regulation pertaining to collective marks .
Infringement proceedings by registered proprietor of collective mark. Section 67
The proprietor can file an infringement suit in relation to the collective marks though giving an
application.
Additional grounds for removal of registration of collective mark. Section 68
The registration of a collective mark can be removed when The way in which the collective mark has been used b the registered users has been misleading
to the public.
The proprietor has failed to observe any regulation of the registration.

Chapter IX- Certification Trade

Marks
Section (69) Certain provision of this Act are not applicable to certification trademarks.
(clauses (a) and (c) of sub - section (1) of section 9
sections 18, 20, 21, 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of

section 56.
Section (70) 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 that provision of services of the kind certified.
Section (71) Applications for registration of certification trade marks to be to be made to the Registrar in a prescribed manner.
Section (72) Consideration of application for registration by Registrar.
Section (73) Opposition to registration of certification trade marks. (Section 18).
Section (74) Filing of regulations governing use of a certification trade mark.
Section (75) Infringement of certification trademarks. (Section 74)
Section (76) Acts not constituting Infringement of certification trade marks.
Section (77) Cancellation or varying of registration of certification trade marks.
Section (78) Rights conferred by registration of certification trade marks.

Chapter X- SPECIAL PROVISIONS

FOR TEXTILE GOODS
Section (79) Textile goods
Section (80) Restriction on registration of textile goods.
Section (81) Stamping of piece goods, cotton yarn and thread.
Section (82) Determination of character of textile goods by
sampling.

Chapter XI- APPELLATE BOARD

Section (83) Establishment of Appellate Board.
Section (84) Composition of Appellate Board.
Section (85) Qualifications for appointment as Chairman, Vice-Chairman or other Members.
Section (86) Terms of office of Chairman Vice-Chairman and other Members.
Section (87) Vice-Chairman or senior-most Member to act as Chairman of discharge his function in certain
circumstances.
Section (88) Salaries allowance and other terms and conditions of service of Chairman, Vice-Chairman and
other Members
Section (89) Resignation and removal.

Section (90) Staff of Appellate Board.

Section (91) Appeals to Appellate Board.

Appellate Board (cont.)

Section (92) Procedures and Power of Appellate Board.
Section (93) Bar of jurisdiction of courts etc.
Section (94) Bar to appear before Appellate Board
Section (95) Conditions as to making of interim orders.
Section (96) Power of chairman to transfer cases from one bench to another.
Section (97) Procedure for application for rectification etc. before Appellate Board
Section (98) Appearance of Registrar in legal proceedings
Section (99) Costs of Registrar in proceedings before Appellate Board.
Section (100)Transfer of pending proceedings to Appellante Board

OFFENCES, PENALTIES AND PROCEDURE

Falsifying and Falsely applying trademarks

Same or similar trade mark without the assent of

proprietor.
Using the trade mark for packing, filling or wrapping
therein any goods other than the genuine goods.
Tampering or altering or any false indication of the origin.
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
a false indication of country, place, name in which goods
are made.

Penalty:
Imprisonment not less than six months and may exceed to three
years.
Fine not less than fifty thousand and may extend to two lakh
rupees.
Amendment in case of any adequate and special reasons to be
mentioned .
burden of proving the assent of the proprietor shall lie on the
Accused
Penalty is also applicable to person who sells, lets for hire or
exposes for sale, or hires or has in his possession for sale, of false
trademark goods or services.
not be less than six months but which may extend to three years.
Fine which shall not be less than fifty thousand rupees but which
may extend to two lakh rupees
Amendments on adequate and special reasons.

 Falsely representing a trade mark as

registered
No person shall make any representation with respect to
a mark not being a registered as a registered

Penalty:
Imprisonment up to three years.
Fine up to two lakh rupees.
Or both
Improper using place of business that it is officially
connected with the Trade Marks Office.

Penalty:
Imprisonment up to three years
or with fine. or with both.

 Exemption of certain persons

If a person accused under section 103 proves that he is
employed on behalf of other persons to apply trade
marks or trade descriptions
he shall be acquitted

Offences by companies
If the person committing an offence under this act is a
company
The company as well as every person in charge of, and
responsible shall be liable to be proceeded against and
punished accordingly.

 Any police officer not below the rank of

deputy superintendent of police is eligible
to search and seize the without warrant
Every person appointed under this Act shall
be deemed to be a pubic servant within the
meaning of section 21
Application for rectification of register to
be made to Appellate Board in certain
cases.

The Registrar shall have all the powers of a civil court.

receiving evidence, administering oaths, enforcing the
attendance of witnesses
Death of party to a proceeding
Extension of time by registrar
The proprietor of a registered grade mark may give
notice to the collector of Customs to prohibit the
importation of any goods constitute infringement under
clause (c) of sub-section (6) of section 29.

 The importer should comply within fourteen days

If he fails to do so, he shall be punishable.
Reports of Registrar to be placed before parliament
Central government has complete Power to make rules.

Famous and Well known

trademark cases
PANADOL & PANADOL EXTRA
SmithKline Beecham Plc & Another Vs. Sunil Singhi & Another
Judges Decision:
It is palpably evident, and incontestable, that the defendants have deliberately
infringed the
plaintiffswell knownmark namely PANADOL and PANADOL
EXTRA
TATA
Tata Sons Ltd. Vs. The Advanced Information Technology Association
Judges Decision:
From a reading of the complaint and the documents filed with it, it is abundantly
clear that the
name/mark TATA is a "well-known mark

Famous and Well known

trademark cases
contd
GLENFIDDICH
William Grant & Sons Ltd. Vs. McDowell & Company Ltd.
Judges Decision:
What has to be considered in the case of the plaintiff is thetransborderreputation of the plaintiff in its product.
DR. REDDYS
Dr. Reddys Laboratories Limited Vs. Manu Kosuri & Another
Judges Decision:
plaintiffs trade mark is 'DR. REDDY'S' and the defendants trade mark/domain
name is 'drreddyslab.com'. Plaintiff is the proprietor of the trade mark 'DR. REDDY'S'
by virtue of priority in adoption, continuous andextensive useand advertising and
thereputation

Thank You