Tribunals Reforms Ordinance 2021 and amendments to the Trade Marks Act, 1999

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The President of India on the 4th of April 2021 promulgated the “THE TRIBUNALS REFORMS (RATIONALISATION AND CONDITIONS OF SERVICE) ORDINANCE, 2021”.  With the passing of this ordinance, Tribunals set up under the Cinematograph Act, 1952, the Customs Act, 1962, the Airports Authority of India Act, 1994, the Trade Marks Act, 1999 and the Protection of Plant Varieties and Farmers’ Rights Act, 2001 and certain other Acts have now effectively been rendered defunct with immediate effect.

Provided below is a table summarizing the changes introduced to the Trade Marks Act, 1999 by virtue of passing of this Ordinance.

Section Changes Introduced by Ordinance Old Section New Section
2(1) (a) clause (a) of sub-section 1 omitted “Appellate Board” means the Appellate Board established under section 83. Omitted
2 (1) (d) clause (d) of sub-section 1 omitted “Bench” means a Bench of the Appellate Board. Omitted
2 (1) (f) clause (f) of sub-section 1 omitted “Chairperson” means the 2 “Chairperson” of the Appellate Board. Omitted
2 (1) (k) clause (k) of sub-section 1 omitted “Judicial Member” means a Member of the Appellate Board appointed as such under the Trademarks Act 1999, and includes the Chairperson and the Vice-Chairperson; Omitted
2(1) (n) clause (n) of sub-section 1 omitted “Member” means a Judicial Member or a Technical Member of the Appellate Board and includes the Chairperson and the Vice-Chairperson; Omitted
2(1)(ze) clause (ze) of sub-section 1 omitted  “tribunal” means the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending; Omitted
2(1) (zf)

 

 

clause 2(1) (zf) omitted  “Vice-Chairperson” means a Vice-Chairperson of the Appellate Board Omitted
2 (1) (s) “prescribed” substituted under clause (s) of sub-section 1. “prescribed” means prescribed by rules made under this Act; “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;’;

10(1) Substitution of the word “tribunal” with “Registrar or the High Court, as the case may be” Section 10 (1) [Limitation as to colour] –

‘A trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.”

‘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 Registrar or the High Court, as the case may be having to decide on the distinctive character of the trade mark.”
26 Substitution of the word “tribunal” with Registrar or the High Court, as the case may be,”. Section 26 of Trade Marks Act 1999 [Effect of removal from register for failure to pay fee for renewal]

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

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 Registrar or the High Court, as the case may be is satisfied
46(3) Substitution of the word “tribunal” with Registrar or the High Court, as the case may be,”. The tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relating to any opposition or appeal, and in default of such security being duly given, may treat the application as abandoned. The Registrar or High Court as the may be, 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.
47(1) & (2) (b) Substitution of the words “Appellate Board”, at both the places where it occurs with “High Court

 

Section 47 (1) – A registered trademark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either

Section 47(2) (b) – on application by that person in the prescribed manner to the Appellate Board or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.

Section 47 (1) – A registered trademark 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 High Court by any person aggrieved on the ground either.

Section 47(2) (b) – on application by that person in the prescribed manner to the 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 registration shall cease to extend to such use.

Proviso clause to Section 47(1) (b)

 

Substitution of the words “Tribunal” wherever it occurs with “Registrar or the High Court, as the case may be,” “Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application…..” “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 Registrar or High Court is of opinion that he might properly be permitted so to register such a trade mark, the Registrar or High Court as the case may be refuse an application…..”
Section 55(1) Substitution of the words “Tribunal” wherever it occurs with “Registrar or the High Court, as the case may be,” Where under the provisions of this Act, use of a registered trade mark is required to be proved for any purpose, the tribunal may, if and, so far as it shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved. Where under the provisions of this Act, use of a registered trade mark is required to be proved for any purpose, the Registrar or the High Court as the case may be, 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.
57(1), 57(2), 57(5) Substitution of the words “Appellate Board”, at both the places where it occurs with “High Court

 

Section 57(1) –

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

Section 57(2) –

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

Section 57(5)

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

Section 57(1) –

On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

Section 57(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 High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

Section 57(5)

Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly

57(1), 57(2), 57(3), 57(4) Substitution of the words “Tribunal” wherever it occurs with “Registrar or the High Court, as the case may be,” Section 57(1) –

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

Section 57(2) –

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

Section 57(3)

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

Section 57(4)

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

Section 57(1) –

On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court 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.

Section 57(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 High Court or to the Registrar, and the Registrar or the High Court may make such order for making, expunging or varying the entry as it may think fit.

Section 57(3)

The Registrar or the High Court 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

Section 57(4)

The Registrar or the High Court 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).

71(3) Substitution of the words “Tribunal” wherever it occurs, the words “Registrar or the High Court, as the case may be,” In dealing under the said provisions with an application under this section, the tribunal shall have regard to the like considerations, so far as relevant, as if the application were applications under section 18 and to any other considerations relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark In dealing under the said provisions with an application under this section, the 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
Chapter XI Substitution of Chapter XI heading “Appeals” Appellate Board Appeals
83 Section 83 omitted. Establishment of Appellate Board. Omitted
84 Section 84 omitted. Composition of Appellate Board. Omitted
85 Section 85 omitted. Qualifications for appointment as  Chairperson,  Vice-Chairperson, or other Members Omitted
86 Section 86 omitted. Term of office of  Chairperson,  Vice-Chairperson and other Members Omitted
87 Section 87 omitted.  Vice-Chairperson or senior-most Member to act as Chairperson or discharge his functions in certain circumstances. Omitted
88 Section 88 omitted. Salaries, allowances and other terms and conditions of service of [Chairperson], [Vice Chairperson] and other Members. Omitted
89 Section 89 omitted Resignation and removal. Omitted
89A Section 89A omitted Qualifications, terms and conditions of service of Chairperson, Vice-Chairperson and Member. Omitted
90 Section 90 omitted  Staff of Appellate Board. Omitted
91(1), proviso to 91(2), 91(3) Substitution of the words “Appellate Board” wherever they occur, with the words “High Court”. Appeals to Appellate Board

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

(2) No appeal shall be admitted if it is preferred after the expiry of the period specified under sub-section (1):

Provided that an appeal

 may be admitted after the expiry of the period specified therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.

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

Appeals to High Court

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 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 High Court that he had sufficient cause for not preferring the appeal within the specified period.

(3) An appeal to the 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.

92,93,95 & 96 Section 92, 93, 95 & 96 omitted. Section 92 – Procedure and powers of Appellate Board.

Section 93- Bar of jurisdiction of courts, etc.

Section 95 – . Conditions as to making of interim orders.

Section 96 – Power of  Chairperson to transfer cases from one Bench to another.

Section 92 – Omitted.

Section 93 – Omitted

Section 95 – . Omitted.

Section 96 – Omitted.

94 Substitution of Section 94 On ceasing to hold office, the Chairperson, Vice-Chairperson or other Members shall not appear before the Appellate Board or the Registrar. On ceasing to hold the office, the erstwhile Chairperson, Vice-Chairperson or other Members, shall not appear before the Registrar.
97 Substitution of the wordsAppellate Board”, wherever they occur with “High Court Procedure for application for rectification, etc., before Appellate Board.—(1) An application for rectification of the register made to the Appellate Board under section 57 shall be in such form as may be prescribed.

(2) A certified copy of every order or judgment of the Appellate Board relating to a registered trade mark under this Act shall be communicated to the Registrar by the Board and the Registrar shall give effect to the order of the Board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.

Procedure for application for rectification, etc., before High Court.—(1) An application for rectification of the register made to the 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 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 Court and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order

98 Substitution of the words “Appellate Board” and “Board”, wherever they occur, with the “High Court”. Appearance of Registrar in legal proceedings.—(1)

The Registrar shall have the right to appear and be heard— (a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised; (b) in any appeal to the Board from an order of the Registrar on an application for registration of a trade mark— (i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or (ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest, and the Registrar shall appear in any case if so directed by the Board.

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

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 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 Board from an order of the Registrar on an application for registration of a trade mark— (i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or (ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest, and the Registrar shall appear in any case if so directed by the Board.

(2) Unless the 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 & 100 Section 99 & 100 omitted Section 99 – Costs of Registrar in proceedings before Appellate Board.

Section 100 – Transfer of pending proceedings to Appellate Board.

 

Section 99 – Omitted.

Section 100 – Omitted

113(1) (a) & 113(1) (c) Substitution of the wordsAppellate Board”at both the places the words occur with the “High Court”. Section 113 (1) (a)

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

Section 113 (1) (c) – If within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the Appellate Board for rectification of the register, the court shall proceed with the case as if the registration were valid.

Section 113 (1) (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 High Court under this Act, for the rectification of the register on the ground that the registration is invalid.

Section 113 (1) (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 High Court for rectification of the register, the court shall proceed with the case as if the registration were valid.

113 (2) Substitution of the words “tribunal”, with the words “Registrar or the High Court, as the case may be,”. Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark. 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 Registrar or the High court as the case may be 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.
123  The words ” and every Member of the Appellate Board” omitted. Every person appointed under this Act and every Member of the Appellate Board shall be deemed to be a public servant within the meaning of section 21 of the Indian Penal Code (45 of 1860). Every person appointed under this Act shall be deemed to be a public servant within the meaning of section 21 of the Indian Penal Code (45 of 1860).
124 (1)(b) (i) & (ii) Substitution of the words “Appellate Board” with the word “High Court (i)If any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plantiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(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 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 plantiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.

125 Substitution of the words the words “Appellate Board” with the words “High Court”. Application for rectification of register to be made to Appellate Board in certain cases.—

(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant’s trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the Appellate Board and not the Registrar.

(2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.

Application for rectification of register to be made to High Court in certain cases.—

(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under 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 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 High Court.

130 The words ” the Appellate Board or ” omitted. Death of party to a proceeding

If a person who is a party to a proceeding under this Act (not being a proceeding before the Appellate Board or a court)

 Death of party to a proceeding

If a person who is a party to a proceeding under this Act (not being a proceeding before a court)

141 Substitution of the words “Appellate Board” at both the places where they occur with the  “High Court”.

 

Certificate of validity

If in any legal proceeding for rectification of the register before the Appellate Board a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the Appellate Board may grant a certificate to that effect…..

Certificate of validity

If in any legal proceeding for rectification of the register before the High Court a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect…..

144 Substitution of the word “tribunal”, the words “Registrar or the High Court, as the case may be,”.

.

 

Trade usages, etc., to be taken into consideration

In any proceeding relating to a trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons.

Trade usages, etc., to be taken into consideration

In any proceeding relating to a trade mark, the 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.

157 (2) (xxxi) & (xxxii) Section 157 (2) (xxxi) and (xxxii) omitted.

 

Section 157(2) (xxxi)

the salaries and allowances and other conditions of service of the officers and other employees of the Appellate Board under sub-section (2), and the manner in which the officers and other employees of the Appellate Board shall discharge their functions under sub-section (3) of section 90;

Section 157(2)(xxxii)

the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of section 91;

Section 157(2) (xxxi) – Omitted

Section 157(2)(xxxii) – Omitted


Authored and compiled by Sanjana Rebecca

Summer Intern and Student, 3rd Year, School of Law, Christ University

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