THE TRADE MARKS ACT, 1999 
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ARRANGEMENT OF SECTIONS 

Last Updated: 17-9-2021 
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CHAPTER I 

PRELIMINARY 

SECTIONS 

1.  Short title, extent and commencement. 
2.  Definitions and interpretation. 

CHAPTER II 

THE REGISTER AND CONDITIONS FOR REGISTRATION 

3.  Appointment of Registrar and other officers. 
4.  Power of Registrar to withdraw or transfer cases, etc. 
5.  Trade Marks Registry and offices thereof. 
6.  The Register of Trade Marks. 
7.  Classification of goods and services. 
8.  Publication of alphabetical index. 
9.  Absolute grounds for refusal of registration. 
10.  Limitation as to colour. 
11.  Relative grounds for refusal of registration. 
12.  Registration in the case of honest concurrent use, etc. 
13.  Prohibition of registration of names of chemical elements or international non-proprietary names. 
14.  Use of names and representations of living persons or persons recently dead. 
15.  Registration of parts of trade marks and of trade marks as a series. 
16.  Registration of trade marks as associated trade marks. 
17.  Effect of registration of parts of a mark. 

CHAPTER III 
PROCEDURE FOR AND DURATION OF REGISTRATION 

18.  Application for registration. 
19.  Withdrawal of acceptance. 
20.  Advertisement of application. 
21.  Opposition to registration. 
22.  Correction and amendment. 
23.  Registration. 
24.  Jointly owned trade marks. 
25.  Duration, renewal, removal and restoration of registration. 
26.  Effect of removal from register for failure to pay fee for renewal. 

CHAPTER IV 
EFFECT OF REGISTRATION 

27.  No action for infringement of unregistered trade mark. 
28.  Rights conferred by registration. 
29.  Infringement of registered trade marks. 
30.  Limits on effect of registered trade mark. 
31.  Registration to be prima facie evidence of validity. 
32.  Protection of registration on ground of distinctiveness in certain cases. 
33.  Effect of acquiescence. 

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SECTIONS 

34.  Saving for vested rights. 
35.  Saving for use of name, address or description of goods or services. 
36.  Saving for words used as name or description of an article or substance or service. 

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL 
REGISTRATION UNDER THE MADRID PROTOCOL 

CHAPTER IVA 

36A. Application of Act in case of international registration under Madrid Protocol. 
36B. Definitions. 
36C. Trade Marks Registry to deal with international applications. 
36D. International application originating from India. 
36E. International registrations where India has been designated. 
36F. Effects of international registration. 
36G. Duration and renewal of international registration. 

CHAPTER V 

ASSIGNMENT AND TRANSMISSION 

37.  Power of registered proprietor to assign and give receipts. 
38.  Assignability and transmissibility of registered trade marks. 
39.  Assignability and transmissibility of unregistered trade marks. 
40.  Restriction on assignment or transmission where multiple exclusive rights would be created. 
41.  Restriction  on  assignment  or  transmission  when  exclusive  rights  would  be  created  in  different 

parts of India. 

42.  Conditions for assignment otherwise than in connection with the goodwill of a business. 
43.  Assignability and transmissibility of certification trade marks. 
44.  Assignability and transmissibility of associated trade marks. 
45.  Registration of assignments and transmissions. 

CHAPTER VI 

USE OF TRADE MARKS AND REGISTERED USERS 

46.  Proposed use of trade mark by company to be formed, etc.  
47.  Removal from register and imposition of limitations on ground of non-use.  
48.  Registered users.  
49.  Registration as registered user.  
50.  Power of Registrar for variation or cancellation of registration as registered user.  
51.  Power of Registrar to call for information relating to agreement in respect of registered users.  
52.  Right of registered user to take proceedings against infringement.  
53.  No right of permitted user to take proceeding against infringement.  
54.  Registered user not to have right of assignment or transmission. 
55.  Use of one of associated or substantially identical trade marks equivalent to use of another.  
56.  Use of trade mark for export trade and use when form of trade connection changes.  

CHAPTER VII 

RECTIFICATION AND CORRECTION OF THE REGISTER 

57.  Power to cancel or vary registration and to rectify the register. 
58.  Correction of register. 
59.  Alteration of registered trade marks. 
60.  Adaptation of entries in register to amended or substituted classification of goods or services. 

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CHAPTER VIII 

COLLECTIVE MARKS 

SECTIONS 

61.  Special provisions for collective marks. 
62.  Collective mark not to be misleading as to character or significance. 
63.  Application to be accompanied by regulations governing use of collective marks. 
64.  Acceptance of application and regulations by Registrar. 
65.  Regulations to be open to inspection. 
66.  Amendment of regulations. 
67.  Infringement proceedings by registered proprietor of collective mark. 
68.  Additional grounds for removal of registration of collective mark. 

CHAPTER IX 

CERTIFICATION TRADE MARKS 

69.  Certain provisions of this Act not applicable to certification trade marks. 
70.  Registration of certification trade marks. 
71.  Applications for registration of certification trade marks. 
72.  Consideration of application for registration by Registrar. 
73.  Opposition to registration of certification trade marks. 
74.  Filing of regulations governing use of a certification trade mark. 
75.  Infringement of certification trade marks. 
76.  Acts not constituting infringement of certification trade marks. 
77.  Cancellation or varying of registration of certification trade marks. 
78.  Rights conferred by registration of certification trade marks. 

CHAPTER X. —SPECIAL PROVISIONS FOR TEXTILE GOODS. [Omitted] 

79.  [Omitted.] 
80.  [Omitted.] 
81.  [Omitted.] 
82.  [Omitted.] 

83.  [Omitted.] 
84.  [Omitted.] 
85.  [Omitted.] 
86.  [Omitted.] 
87.  [Omitted.] 
88.  [Omitted.] 
89.  [Omitted.] 
89A. [Omitted.] 
90.  [Omitted.] 
91.  Appeals to High Court. 
92.  [Omitted.] 
93.  [Omitted.] 

CHAPTER XI 

APPEALS 

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SECTIONS 

94.  Bar to appear  before Registrar. 
95.  [Omitted.] 
96.  [Omitted.] 
97.  Procedure for application for rectification, etc., before High Court. 
98.  Appearance of Registrar in legal proceedings. 
99.  [Omitted.] 
100. [Omitted.] 

CHAPTER XII 

OFFENCES, PENALTIES AND PROCEDURE 

101. Meaning of applying trade marks and trade descriptions. 
102. Falsifying and falsely applying trade marks. 
103. Penalty for applying false trade marks, trade descriptions, etc. 
104. Penalty  for  selling  goods  or  providing  services  to  which  false  trade  mark  or  false  trade 

description is applied. 

105. Enhanced penalty on second or subsequent conviction. 
106. Penalty for removing piece goods, etc., contrary to section 81. 
107. Penalty for falsely representing a trade mark as registered. 
108. Penalty for improperly describing a place of business as connected with the Trade Marks Office. 
109. Penalty for falsification of entries in the register. 
110. No offence in certain cases. 
111. Forfeiture of goods. 
112. Exemption of certain persons employed in ordinary course of business. 
113. Procedure where invalidity of registration is pleaded by the accused. 
114. Offences by companies. 
115. Cognizance of certain offences and the powers of police officer for search and seizure. 
116. Evidence of origin of goods imported by sea. 
117. Costs of defence or prosecution. 
118. Limitation of prosecution. 
119. Information as to commission of offence. 
120. Punishment of abetment in India of acts done out of India. 
121. Instructions  of  Central  Government  as  to  permissible  variation  to  be  observed  by  criminal 

courts. 

CHAPTER XIII 

MISCELLANEOUS 

122. Protection of action taken in good faith. 
123. Certain persons to be public servants. 
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. 
125. Application for rectification of register to be made to High Court in certain cases. 
126. Implied warranty on sale of marked goods. 
127. Powers of Registrar. 
128. Exercise of discretionary power by Registrar. 
129. Evidence before Registrar. 
130. Death of party to a proceeding. 
131. Extension of time. 
132. Abandonment. 
133. Preliminary advice by the Registrar as to distinctiveness. 
134. Suit for infringement, etc., to be instituted before District Court. 
135. Relief in suits for infringement or for passing off. 
136. Registered user to be impleaded in certain proceedings. 

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SECTIONS 

137. Evidence of entries in register, etc., and things done by the Registrar. 
138. Registrar and other officers not compellable to produce register, etc. 
139. Power to require goods to show indication of origin. 
140. Power to require information of imported goods bearing false trade marks. 
141. Certificate of validity. 
142. Groundless threats of legal proceedings. 
143. Address for service. 
144. Trade usages, etc., to be taken into consideration. 
145. Agents. 
146. Marks registered by an agent or representative without authority. 
147. Indexes. 
148. Documents open to public inspection. 
149. Reports of Registrar to be placed before Parliament. 
150. Fees and surcharge. 
151. Savings in respect of certain matters in Chapter XII. 
152. Declaration as to ownership of trade mark not registrable under the Registration Act, 1908. 
153. Government to be bound. 
154. Special provisions relating to applications for registration from citizens of convention countries. 
155. Provision as to reciprocity. 
156. Power of Central Government to remove difficulties. 
157. Power to make rules. 
158. Amendments. 
159. Repeal and savings. 

THE SCHEDULE. 

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THE TRADE MARKS ACT, 1999 

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:— 

[30th December, 1999.] 

CHAPTER I 

PRELIMINARY  

1. Short title, extent and commencement.—(1) This Act may be called the Trade Marks Act, 1999. 

(2) It extends to the whole of India. 

(3)  It  shall  come  into  force  on  such  date1  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,— 

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(b) “assignment” means an assignment in writing by act of the parties concerned; 

(c)  “associated  trade  marks”  means  trade  marks  deemed  to  be,  or  required  to  be,  registered  as 

associated trade marks under this Act; 

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(e)  “certification  trade  mark”  means  a  mark  capable  of  distinguishing  the  goods  or  services  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 services, quality, 
accuracy or other characteristics from goods or services not so certified and registrable as such under 
Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade 
mark, of that person; 

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(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 

1. 15th September, 2003, vide notification No. S.O. 1048(E), dated 15th September, 2003,  see Gazette of India, Extraordinary, 

Part II, sec. 3(ii). 

2. Clauses (a), (d) and (f) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

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(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 yards 
or standard metres; 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 person other than the person whose services 
they really are; or 

(V) any false name or initials of a person applied to goods or services 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 authorised the use of such name or initials; and 

(c) is or are either the name or initials of a fictitious 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; 

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(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 as to mode or area of use within India or outside India; 

(m)  “mark”  includes  a  device,  brand,  heading,  label,  ticket,  name,  signature,  word,  letter, 

numeral, shape of goods, packaging or combination of colours or any combination thereof; 

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(o) “name” includes any 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,  receptacle,  vessel,  casket, 

bottle, wrapper, label, 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 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) 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 registered proprietor and registered user in relation to goods or 

services— 

(a) with which he is connected in the course of trade; and 

1. Clauses (k) and (n) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

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(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; 

1[(s) “prescribed” means,— 

(i)  in  relation  to  proceedings  before  a  High  Court,  prescribed  by  rules  made  by  the  High 

Court; and 

(ii) in other cases, prescribed by rules made under this Act;] 

(t) “register” means the Register of Trade Marks 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 Marks referred to in section 3; 

(z)  “Service”  means  service  of  any  description  which  is  made  available  to  potential  users  and 
includes the provision 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 recognised in the trade; or 

(iii)  as  to  fitness  for  the  purpose,  strength,  performance  or  behaviour  of  any  goods,  being 
“drug” as defined in the Drugs and Cosmetics 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 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 or 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; 

1. Subs. by Act 33 of 2021, s. 21, for clause (s) (w.e.f. 4-4-2021). 

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(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  those  of  others  and  may  include  shape  of 
goods, their packaging and combination of colours; and— 

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a 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 

(ii) 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 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, 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; 

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(zg)  “well  known  trade  mark”,  in  relation  to  any  goods  or  services,  means  a  mark  which  has 
become 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. 

(2) In this Act, unless the context otherwise requires, any reference— 

(a) to “trade mark” shall include reference to “collective mark” or “certification trade mark”; 

(b)  to  the  use  of  a  mark  shall  be  construed  as  a  reference  to  the  use  of  printed  or  other  visual 

representation of the mark; 

(c) to the use of a mark,— 

(i) 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; 

(ii) in relation to services, 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; 

(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 Trade Marks Registry shall be construed as including a reference to any office of the 

Trade Marks Registry. 

(3) 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 descriptions of goods and descriptions of services. 

(4) 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. 

1. Clauses (ze) and (zf) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

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CHAPTER II 

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 Marks for the purposes of this Act. 

(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. 

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. 

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. 

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. 

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. 

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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. 

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  1[Registrar or the High Court, 
as the case may be] 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. 

1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 

11 

 
                                                           
(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— 

1[(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  36E  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 that 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; 

1. Subs. by Act 40 of 2010, s. 2, for clause (a) (w.e.f. 8-7-2013). 

12 

 
                                                           
(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. 

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. 

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. 

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 

13 

 
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. 

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. 

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 services which are 
associated  with  those  goods  or  services,  or  goods  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. 

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 

14 

 
(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. 

CHAPTER III 

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. 

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. 

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 

15 

 
 
(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. 

21.  Opposition  to  registration.—1[(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.] 

(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  counterstatement  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. 

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. 

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 2[within 
eighteen months of the filing of the application] 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 

1. Subs. by Act 40 of 2010, s. 3, for sub-section (1) (w.e.f. 8-7-2013). 
2. Ins. by s. 4, ibid. (w.e.f. 8-7-2013). 

16 

 
                                                           
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. 

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 as 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. 

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 1[Registrar or the High Court, as 
the case may be] 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 

1. Subs. by Act 33 of 2021, s. 21, for “Tribunal” (w.e.f. 4-4-2021). 

17 

 
                                                           
(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. 

CHAPTER IV 

EFFECT OF REGISTRATION 

27.  No  action  for  infringement  of  unregistered  trade  mark.—(1)  No  person  shall  be  entitled  to 
institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade 
mark. 

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

28.  Rights  conferred  by  registration.—(1)  Subject  to  the  other  provisions  of  this  Act,  the 
registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive 
right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is 
registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this 
Act. 

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any 

conditions and limitations to which the registration is subject. 

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or 
nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so 
far as their respective rights are subject to any conditions or limitations entered on the register) be deemed 
to  have  been  acquired  by  any  one  of  those  persons  as  against  any  other  of  those  persons  merely  by 
registration of the trade marks but each of those persons has otherwise the same rights as against other 
persons (not being registered users using by way of permitted use) as he would have if he were the sole 
registered proprietor. 

29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person 
who, not being a registered proprietor or a person using by way of permitted use, uses in the course of 
trade,  a  mark  which  is  identical  with,  or  deceptively  similar  to,  the  trade  mark  in  relation  to  goods  or 
services in respect of which the trade mark is registered and in such manner as to render the use of the 
mark likely to be taken as being used as a trade mark. 

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person 

using by way of permitted use, uses in the course of trade, a mark which because of— 

(a) its identity with the registered trade mark and the similarity of the goods or services covered 

by such registered trade mark; or 

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services 

covered by such registered trade mark; or 

(c) its identity with the registered trade mark and the identity of the goods or services covered by 

such registered trade mark, 

is likely to cause confusion on the part of the public, or which is likely to have an association  with the 
registered trade mark. 

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to 

cause confusion on the part of the public. 

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person 

using by way of permitted use, uses in the course of trade, a mark which— 

(a) is identical with or similar to the registered trade mark; and 

18 

 
 
(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 labeling or packaging goods, as a business paper, or for advertising goods 
or  services,  provided  such  person,  when  he  applied  the  mark,  knew  or  had  reason  to  believe  that  the 
application of the mark was not duly authorised by the proprietor or a licensee. 

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising— 

(a)  takes  unfair  advantage  of  and  is  contrary  to  honest  practices  in  industrial  or  commercial 

matters; or 

(b) is detrimental to its distinctive character; or 

(c) is against the reputation of the trade mark. 

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade 
mark  may  be  infringed  by  the  spoken  use  of  those  words  as  well  as  by  their  visual  representation  and 
reference in this section to the use of a mark shall be construed accordingly. 

30.  Limits  on  effect  of  registered  trade  mark.—(1)  Nothing  in  section  29  shall  be  construed  as 
preventing  the  use  of  a  registered  trade  mark  by  any  person  for  the  purposes  of  identifying  goods  or 
services as those of the proprietor provided the use— 

(a) is in accordance with honest practices in industrial or commercial matters, and 

(b)  is  not  such  as  to  take  unfair  advantage  of  or  be  detrimental  to  the  distinctive  character  or 

repute of the trade mark. 

(2) A registered trade mark is not infringed where— 

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, 
value,  geographical  origin,  the  time  of  production  of  goods  or  of  rendering  of  services  or  other 
characteristics of goods or services; 

(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in 
any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods 
to be exported to any market or in relation to services for use or available for 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 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 

19 

 
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 mark by reason only of— 

(a)  the  registered  trade  mark  having  been  assigned  by  the  registered  proprietor  to  some  other 

person, after the acquisition of those goods; or 

(b) the goods having been put on the market under the registered trade mark by the proprietor or 

with his consent. 

(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose 
further  dealings  in  the  goods  in  particular,  where  the  condition  of  the  goods,  has  been  changed  or 
impaired after they have been put on the market. 

31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a 
trade mark registered under this Act (including applications under section 57), the original registration of 
the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie 
evidence of the validity thereof. 

(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the 
ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness 
and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade 
mark  had  been  so  used  by  the  registered  proprietor  or  his  predecessor  in  title  as  to  have  become 
distinctive at the date of registration. 

32. Protection of registration on ground of distinctiveness in certain cases.—Where a trade mark 
is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of 
the  use  which  has  been  made  of  it,  it  has  after  registration  and  before  commencement  of  any  legal 
proceedings challenging the validity of such registration, acquired a distinctive character in relation to the 
goods or services for which it is registered. 

33. Effect of acquiescence.—(1) Where the proprietor of an earlier trade mark has acquiesced for a 
continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no 
longer be entitled on the basis of that earlier trade mark— 

(a) to apply for a declaration that the registration of the later trade mark is invalid, or 

(b)  to  oppose  the  use  of  the  later  trade  mark  in  relation  to  the  goods  or  services  in  relation  to 

which it has been so used, 

unless the registration of the later trade mark was not applied in good faith. 

20 

 
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the 
use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding 
that the earlier trade mark may no longer be invoked against his later trade mark. 

34. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of 
registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or 
nearly resembling it in relation to goods or services in relation to which that person or a predecessor in 
title of his has continuously used that trade mark from a date prior— 

(a)  to  the  use  of  the  first-mentioned  trade  mark  in  relation  to  those  goods  or  services  by  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. 

35.  Saving  for  use  of  name,  address  or  description  of  goods  or  services.—Nothing  in  this  Act 
shall entitle the proprietor or a registered user of a registered trade mark to interfere with any  bona fide 
use by a person of his own name or that of his place of business, or of the name, or of the name of the 
place  of  business,  of  any  of  his  predecessors  in  business,  or  the  use  by  any  person  of  any  bona  fide 
description of the character or quality of his goods or services. 

36. Saving for words used as name or description of an article or substance or service.—(1) The 
registration of a trade mark shall not be deemed to have become invalid by reason only of any use after 
the date of the registration of any word or words which the trade mark contains or of which it consists as 
the name or description of an article or substance or service: 

Provided that, if it is proved either— 

(a) that there is a well known and established use of the said word as the name or description of 
the article or substance or service by a person or persons carrying on trade therein, not being use in 
relation to goods or services connected in the course of trade with the proprietor or a registered user 
of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified 
by the proprietor; or 

(b) that the article or substance was formerly manufactured under a patent that a period of two 
years or more after the cesser of the patent has elapsed and that the said word is the only practicable 
name or description of the article or substance, 

the provisions of sub-section (2) shall apply. 

(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-section (1) are proved 

with respect to any words, then,— 

(a) for the purposes of any proceedings under section 57 if the trade mark consists solely of such 
words,  the  registration  of  the  trade  mark,  so  far  as  regards  registration  in  respect  of  the  article  or 
substance in question or of any goods of the same description, or of the services or of any services of 
the same description, as the case requires, shall be deemed to be an entry wrongly remaining on the 
register; 

(b) for the purposes of any other legal proceedings relating to the trade mark,— 

(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or 

any other law to the use of the trade mark; or 

(ii) if the trade mark contains such words and other matter, all such right of the proprietor to 

the use of such words, 

in relation to the article or substance or to any goods of the same description, or to the 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. 

21 

 
1[CHAPTER IVA 

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL 
REGISTRATION UNDER THE MADRID PROTOCOL 

36A.  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. 

36B. 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  intergovernmental 

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. 

36C.  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. 

36D.  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. 

1. Ins. by Act 40 of 2010, s. 5 (w.e.f. 8-7-2013). 

22 

 
                                                           
(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  correspond  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. 

36E. 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 opposition 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 

23 

 
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  registration  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. 

36F. 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. 

36G. 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 period. 

(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.] 

CHAPTER V 

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. 

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. 

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. 

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, 

24 

 
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 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  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. 

41.  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. 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. 

25 

 
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 or services for which the 
trade  mark  is  registered  accompanied  by  the  transfer  of  the  goodwill  of  the  business  concerned  in 
those goods or services only; or 

(b) an assignment of a trade mark which is used in relation to goods exported from  India or in 
relation  to  services  for  use  outside  India  if  the  assignment  is  accompanied  by  the  transfer  of  the 
goodwill of the export business only. 

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 mark. 

1[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.] 

CHAPTER VI 

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. 

1. Subs. by Act 40 of 2010, s. 6, for section 45 (w.e.f. 8-7-2013). 

26 

 
                                                           
(3) The  1[Registrar or the High Court, as the case may be] 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. 

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  2[High  Court]  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 1[Registrar or 
the High Court, as the case may be] is of opinion that he might properly be permitted so to register such a 
trade mark, the 1[Registrar or the High Court, as the case may be] 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  2[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. 

1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 
2. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 

27 

 
                                                           
(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 satisfication 

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; 

28 

 
(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. 

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:— 

29 

 
(a) where the registered user being an individual enters into a partnership with any  other person for 
carrying on the business concerned; but in any such case the firm may use the trade mark, if otherwise in 
force, only for so long as the registered user is a member of the firm; 

(b) where the registered user being a firm subsequently undergoes a change in its constitution; but in 
any such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long as any 
partner of the original firm at the time of its registration as registered user, continues to be a partner of the 
reconstituted firm. 
Explanation  II.—For  the  purposes  of  Explanation  I,  “firm”  has  the  same  meaning  as  in  the  Indian 

Partnership Act, 1932 (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 1[Registrar or the High Court, as the case may be] 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 VII 
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 2[High Court] or to the Registrar by any person aggrieved, the 3[Register or the High 
Court, as the case may be,] 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 2[High Court] or to the Registrar, 
and  the  3[Register  or  the  High  Court,  as  the  case  may  be,]  may  make  such  order  for  making,  expunging  or 
varying the entry as it may think fit. 

(3) The 3[Register or the High Court, as the case may be,] 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  3[Register or the High Court, as the case may be,] 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  2[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. 

1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 
2. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 
3. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021). 

30 

 
 
                                                           
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  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). 

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 VIII 

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 

31 

 
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  comprise  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 IX 

CERTIFICATION TRADE MARKS 

69.  Certain  provisions  of  this  Act  not  applicable  to  certification  trade  marks.—The  following 

provisions of this Act shall not apply to certification trade marks, that is to say,— 

(a) clauses (a) and (c) of sub-section (1) of section 9; 

(b) Sections 18, 20 and 21, except as expressly applied by this Chapter; 

(c) Sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56; 

(d) Chapter XII, except section 107. 

70.  Registration  of  certification  trade  marks.—A  mark  shall  not  be  registrable  as  a  certification 
trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the 
provision of services of the kind certified. 

32 

 
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  for  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 provisions with an application under this section, the  1[Registrar or the 
High Court, as the case may be,] shall have regard to the like considerations, so far as relevant, as if the 
application  were  applications  under  section  18  and  to  any  other  considerations  relevant  to  applications 
under  this  section,  including  the  desirability  of  securing  that  a  certification  trade  mark  shall  comprise 
some indication that it is a certification trade mark. 

72. Consideration of application for registration by 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. 

1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 

33 

 
                                                           
75. Infringement of certification trade marks.—The right conferred by section 78 is infringed by 
any person who, not being the registered proprietor of the certification trade mark or a person authorised 
by him in that behalf under the regulations filed under section 74, using it in accordance therewith, uses in 
the course of trade, a mark, which is identical with, or deceptively similar to the certification trade mark 
in relation to any goods or services in respect of which it is registered, and in such manner as to render the 
use of the mark likely to be taken as being a use as a trade mark. 

76.  Acts  not  constituting  infringement  of  certification  trade  marks.—(1)  Notwithstanding 
anything contained in this Act, the following acts do not constitute an infringement of the right to the use 
of a registered certification trade mark— 

(a) where a certification trade mark is registered subject to any conditions or limitations entered 
on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise 
traded in any place, or in relation to goods to be exported to any market or in relation to services for 
use  or  available  for  acceptance  in  any  place,  country  or  territory  or  in  any  other  circumstances,  to 
which having regard to any such limitations, the registration does not extend; 

(b) the use of a certification trade mark in relation to goods or services certified by the proprietor 
of  the  mark  if,  as  to  those  goods  or  services  or  a  bulk  of  which  they  form  part,  the  proprietor  or 
another in accordance with his authorisation under the relevant regulations has applied the mark and 
has  not  subsequently  removed  or  obliterated  it,  or  the  proprietor  has  at  any  time  expressly  or 
impliedly consented to the use of the mark; 

(c) the use of a certification trade mark in relation to goods or services adapted to form part of, or 
to be accessory to, other goods in relation to which the mark has been used without infringement of 
the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably 
necessary in order to indicate that the goods or services are so adapted and neither the purpose nor the 
effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods or 
services are certified by the proprietor. 

(2) Clause (b) of sub-section (1) shall not apply to the case of use consisting of the application of a 
certification trade mark to goods or services, notwithstanding that they are such goods or services as are 
mentioned in that clause if such application is contrary to the regulations referred to in that clause. 

(3)  Where  a  certification  trade  mark  is  one  of  two  or  more  trade  marks  registered  under  this  Act, 
which are identical or nearly resemble each other, the use of any of those trade marks in exercise of the 
right to the use of that trade mark given by registration, shall not be deemed to be an infringement of the 
right so given to the use of any other of those trade marks. 

77. Cancellation or varying of registration of certification trade marks.—The Registrar may, on 
the  application  in  the  prescribed  manner  of  any  person  aggrieved  and  after  giving  the  proprietor  an 
opportunity of opposing the application, make such order as he 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. 

34 

 
[CHAPTER  X.—SPECIAL  PROVISIONS  FOR  TEXTILE  GOODS.]  Omitted  by  the  Trade  Marks 

(Amendment) Act, 2010 (40 of 2010), s. 7 (w.e.f. 8-7-2013). 

79. [Textile goods.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 
80. [Restriction on registration of textile goods.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 
81. [Stamping of piece goods, cotton yarn and thread.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 
82. [Determination of character of textile goods by sampling.] Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 

CHAPTER XI 
1[APPEALS] 

83. [Establishment of Appellate Board.]—Omitted by The Tribunal Reforms Act, 2021 (33 of 2021), 

s. 21 (w.e.f. 4-4-2021). 

84. [Composition of Appellate Board.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 
85.  [Qualifications  for  appointment  as  3[Chairperson],  4[Vice-Chairperson],  or  other  Members.]— 

Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

86. [Term of office of  1[Chairperson],  2[Vice-Chairperson] and other Members.]—Omitted by s. 21, 

ibid. (w.e.f. 4-4-2021). 

87. [Vice-Chairperson] or senior-most Member to act as [Chairperson] or discharge his functions in 

certain circumstances.]— Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

88.  [Salaries,  allowances  and  other  terms  and  conditions  of  service  of  Chairperson,  Vice-

[Chairperson] and other Members.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 
89. [Resignation and removal.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 
2[89A.  [Qualifications,  terms  and  conditions  of  service  of  Chairperson,  Vice-Chairperson  and 

member.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

90. [Staff of Appellate Board.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 
91. Appeals to  3[High Court].—(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  3[High  Court]  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  3[High Court] that he had sufficient cause for not preferring the appeal within the 
specified period.  

(3)  An  appeal  to  the  3[High  Court]  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.]—Omitted by The Tribunal Reforms Act, 2021 (33 of 

2021), s. 21 (w.e.f. 4-4-2021). 

93. [Bar of jurisdiction of courts, etc.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 
4[94.  Bar  to  appear  before  Registrar.—On  ceasing  to  hold  the  office,  the  erstwhile  Chairperson, 

Vice-Chairperson or other Members shall not appear before the Registrar.] 

95. [Conditions as to making of interim orders.]—Omitted by The Tribunal Reforms Act, 2021 (33 of 

2021), s. 21 (w.e.f. 4-4-2021).  

96. [Power of 1[Chairperson] to transfer cases from one Bench to another.]—Omitted by s. 21, ibid. 

(w.e.f. 4-4-2021). 

1. Subs. by Act 33 of 2021, s. 21, for “APPELLATE BOARD” (w.e.f. 4-4-2021). 
2. Ins. by s. 161, ibid. (w.e.f. 26-5-2017). 
3. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 
4. Subs. by s. 21, ibid, for section 94 (w.e.f. 4-4-2021). 

35 

 
 
                                                           
97. Procedure for application for rectification, etc., before 1[High Court].—(1) An application for 
rectification of the register made to the  1[High Court] under section 57 shall be in such form as may be 
prescribed.  

(2)  A  certified  copy  of  every  order  or  judgment  of  the  1[High  Court]  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  1[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  2[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 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  1[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.  

99. [Costs of Registrar in proceedings before Appellate Board.]—Omitted by The Tribunals Reforms 

Act, 2021 (33 of 2021), s. 21 (w.e.f. 4-4-2021).  

100.  [Transfer  of  pending  proceedings 

to  Appellate  Board.]—Omitted  by  s.  21, 

ibid.  

(w.e.f. 4-4-2021). 

CHAPTER XII 

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.  

1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 
2. Subs. by s. 21, ibid., for “Board” (w.e.f. 4-4-2021). 

36 

 
                                                           
(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. 

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 

37 

 
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.  

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  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.  

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.  

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  

38 

 
(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.  

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.  

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.  

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.  
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.  

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,  

39 

 
he shall be acquitted.  

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  1[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 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  1[High  Court]  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 
2[Registrar  or  the  High  Court,  as  the  case  may  be,],  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.  

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.  

1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 
2. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021). 

40 

 
                                                           
(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 were made or produced.  

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.  

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 recognised by 
criminal courts as permissible in the case of any goods.  

CHAPTER XIII 

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.  

41 

 
123. Certain persons to be public servants.—Every person appointed under this Act 1*** 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  2[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  2[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 
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  2[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 
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  2[High  Court]  and  not  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 2[High Court].  

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.  

1. The words “and every Member of the Appellate Board” omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 
2. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 

42 

 
                                                           
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.  

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 to 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  1*** 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.  

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.  

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.  

1. The words “the Appellate Board or” omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

43 

 
                                                           
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.  

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 for 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. 

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 

44 

 
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. 

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  transshipment  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 

45 

 
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 
1[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  1[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 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. 

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. 

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  2[Registrar or the High Court, as the case may be,] 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. 

1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 
2. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021). 

46 

 
                                                           
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. 

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. 

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 printout 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  1[applications,  international 
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 

1. Subs. by Act 40 of 2010, s. 8, for “applications” (w.e.f. 8-7-2013). 

47 

 
                                                           
(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 Organisation, 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  Organisation  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. 

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 

48 

 
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; 

1[(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 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; 

2[(ixa) 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 
36D; 

(ixb)  the  manner  of  keeping  a  record  of  particulars  of  an  international  registration  under          

sub-section (1) of section 36E; 

(ixc) the manner of informing the International Bureau under sub-section (2) of section 36E; 

(ixd)  the  manner  of  advertising  the  international  registration  and  the  time  within  which  the 

international registration shall be advertised under sub-section (3) of section 36E;] 

(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 41; 

1. Subs. by Act 40 of 2010, s. 9, for clause (vii) (w.e.f. 8-7-2013). 
2. Ins. by s. 9, ibid. (w.e.f. 8-7-2013). 

49 

 
                                                           
(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; 

2[(xiiia)  the  period  within  which  the  Registrar  shall  dispose  of  an  application  under                          

sub-section (3) 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 making 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; 

1* 

* 

* 

* 

* 

(xxix) the salaries and allowances payable to, and the other terms and conditions of service of, the 

2[Chairperson], 3[Vice-Chairperson] and other Members under sub-section (1) of section 88; 

(xxx)  the  procedure  for  investigation  of  misbehavior  or  incapacity  of  the  1[Chairperson],                        

2[Vice-Chairperson] and other Members under sub-section (3) of section 89; 

4* 

* 

* 

* 

* 

(xxxiii) the form in which and the particulars to be included in the application to the 5[High Court] 

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; 

1. Cls. (xxvi), (xxvii) and (xxviii) omitted by Act 40 of 2010, s. 9 (w.e.f. 8-7-2013). 
2. Subs. by Act 7 of 2017, s. 161, for “Chairman” (w.e.f. 26-5-2017). 
3. Subs. by s. 161, ibid., for “Vice-Chairman” (w.e.f. 26-5-2017). 
4. Clauses (xxxi) and (xxxii) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 
5. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 

50 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
                                                           
(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 1987), 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. 

51 

 
 
 
THE SCHEDULE 

(See section 158) 

AMENDMENTS 

Year 

1956 

Act No. 

Short title 

Amendment 

1 

The Companies 
Act, 1956 

(1)  In  Section  20,  for  sub-section  (2),  the  following      

sub-sections shall 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 meaning of sub-section (1). 

(3) The Central Government may, before deeming a name 
as  undesirable  under  clause  (ii)  of  sub-section  (2), 
consult the Registrar of Trade Marks.”. 

(II) In section 22, in sub-section (1),— 

(i) for the  portion  beginning  with  “if,  through”  and 
ending with “the first-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 
too  nearly 
identical  with,  or 
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.”. 

52 

 
 
 
