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Chapter 12 – Offences, Penalties and Procedure

BananaIP Counsels > The Trade Marks Act > Chapter 12 – Offences, Penalties and Procedure

Chapter 12 – Offences, Penalties and Procedure

Meaning of Applying Trademarks and Trade Descriptions

101.—(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, exposed for sale or had in
possession for sale or for any purpose of trade or manufacture, in or with any package or other
thing to which a trade mark or mark or trade description has been applied; or
(d) uses a trade mark or mark or trade description in any manner reasonably likely to
lead to the belief that the goods or services in connection with which it is used are designated
or described by that trade mark or mark or trade description; or
(e) in relation to the goods or services uses a trade mark or trade description in any
sign, advertisement, invoice, catalogue, business letter, business paper, price list or other
commercial document and goods are delivered or services are rendered to a person in
pursuance of a request or order made by reference to the trade mark or trade description as so
used.
(2) A trade mark or mark or trade description shall be deemed to be applied to goods
whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the
goods or to any package or other thing.

 

Falsifying and Falsely Applying Trade Marks

102.—(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.

Penalty for Applying False Trade Marks, Trade Descriptions etc.

103. 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 section139, 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
judgement, impose a sentence of imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees.

Penalty for Selling Goods or Providing Services to Which False Trade Mark or False Trade Description is Applied

104. Any person who sells, lets for hire or exposes for sale, or hires or has in his
possession for sale, goods or things, or provides or hires services, to which any false trade
mark or false trade description is applied or which, being required under section 139 to have
applied to them an indication of the country or place in which they were made or produced or
the name and address of the manufacturer, or person for whom the goods are manufactured or
services provided, as the case may be, are without the indications so required, shall, unless he
proves,—
(a) That, having taken all reasonable precautions against committing an offence against
this section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trade mark or trade description or that any offence had been committed in
respect of the goods or services; or
(b) That, on demand by or on behalf of the prosecutor, he gave all the information in
his power with respect to the person from whom he obtained such goods or things or services;
or
(c) That otherwise he had acted innocently,
be punishable with imprisonment for a term which shall not be less than six months but which
may extend to three years and with fine which shall not be less than fifty thousand rupees but
which may extend to two lakh rupees:
Provided that the court may, for adequate and special reasons to be mentioned in the
judgement, impose a sentence of imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees.

Enhanced Penalty on Second or Subsequent Conviction

105. 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.

Penalty for Removing Piece Goods, etc., Contrary to Section 81

106. 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.

Penalty for Falsely Representing a Trade Mark as Registered

107.—(1) No person shall make any representation—
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark; or
(b) with respect to a part of a registered trade mark, not being a part separately
registered as a trade mark, to the effect that it is separately registered as a trade mark; or
(c) to the effect that a registered trade mark is registered in respect of any goods or
services in respect of which it is not in fact registered; or
(d) to the effect that registration of a trade mark gives an exclusive right to the use
thereof in any circumstances in which, having regard to limitation entered on the register, the
registration does not in fact give that right.
(2) If any person contravenes any of the provisions of sub-section (1), he shall be
punishable with imprisonment for a term which may extend to three years, or with fine, or
with both.
(3) For the purposes of this section, the use in India in relation to a trade mark of the
word “registered” or of any other expression, symbol or sign referring whether expressly or
impliedly to registration, shall be deemed to import a reference to registration in the register,
except—
(a) where that word or other expression, symbol or sign is used in direct association
with other words delineated in characters at least as large as those in which that word or other
expression, symbol or sign is delineated and indicating that the reference is to registration as a
trade mark under the law of a country outside India being a country under the law of which
the registration referred to is in fact in force; or
(b) where that other expression, symbol or sign is of itself such as to indicate that the
reference is to such registration as is mentioned in clause (a); or

(c) where that word is used in relation to a mark registered as a trade mark under the
law of a country outside India and in relation solely to goods to be exported to that country or
in relation to services for use in that country.

Penalty for Improperly Describing a Place of Business as Connected with the Trade Marks Office

108. 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.

Penalty for Falsification of Entries in the Register

109. 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.

No Offence in Certain Cases

110. 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.

Forfeiture of Goods

111.—(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.

Exemption of Certain Persons Employed in Ordinary Course of Business

112. Where a person accused of an offence under section 103 proves—
(a) that in the ordinary course of his business he is employed on behalf of other persons
to apply trade marks or trade descriptions, or as the case may be, to make dies, blocks,
machines, plates, or other instruments for making, or being used in making, trade marks; and
(b) that in the case which is the subject of the charge he was so employed, and was not
interested in the goods or other thing by way of profit or commission dependent on the sale of
such goods or providing of services, as the case may be; and
(c) that, having taken all reasonable precautions against committing the offence
charged, he had, at the time of the commission of the alleged offence, no reason to suspect the
genuineness of the trade mark or trade description; and
(d) that, on demand made by or on behalf of the prosecutor, he gave all the information
in his power with respect to the persons on whose behalf the trade mark or trade description
was applied, he shall be acquitted.

Procedure Where Invalidity of Registration is Pleaded by the Accused

113.—(1) Where the offence charged under section 103 or section 104 or section 105 is
in relation to a registered trade mark and the accused pleads that the registration of the trade
mark is invalid, the following procedure shall be followed:—
(a) If the court is satisfied that such defence is prima facie tenable, it shall not proceed
with the charge but shall adjourn the proceeding for three months from the date on which the
plea of the accused is recorded to enable the accused to file an application before the
Appellate Board under this Act, for the rectification of the register on the ground that the
registration is invalid.
(b) If the accused proves to the court that he has made such application within the time
so limited or within such further time as the court may for sufficient cause allow, the further
proceedings in the prosecution shall stand stayed till the disposal of such application for
rectification.
(c) If within a period of three months or within such extended time as may be allowed
by the court the accused fails to apply to the Appellate Board for rectification of the register,
the court shall proceed with the case as if the registration were valid.

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.

Offences by Companies

114.—(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 all 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.

Cognizance of Certain Offences and the Powers of Police Officer for Search and Seizure

115.—(1) No court shall take cognizance of an offence under section 107 or
section 108 or section 109 except on complaint in writing made by the Registrar or any officer
authorised by him in writing:
Provided that in relation to clause (c) of sub-section (1) of section 107, a court shall take
cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that
a registered trade mark has been represented as registered in respect of any goods or services
in respect of which it is not in fact registered.
(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the
first class shall try an offence under this Act.

(3) The offences under section 103 or section 104 or section 105 shall be cognizable.
(4) Any police officer not below the rank of deputy superintendent of police or
equivalent, may, if he is satisfied that any of the offences referred to in sub-section (3) has
been, is being, or is likely to be, committed, search and seize without warrant the goods, die,
block, machine, plate, other instruments or things involved in committing the offence,
wherever found, and all the articles so seized shall, as soon as practicable, be produced before
a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:
Provided that the police officer, before making any search and seizure, shall obtain the
opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide
by the opinion so obtained.
(5) Any person having an interest in any article seized under sub-section (4), may,
within fifteen days of such seizure, make an application to the Judicial Magistrate of the first
class or Metropolitan Magistrate, as the case may be, for such article being restored to him
and the Magistrate, after hearing the applicant and the prosecution, shall make such order on
the application as he may deem fit.

Evidence of Origin of Goods Imported by Sea

116. 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 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 section11 of the
said Act for the protection of trade marks relating to import of goods, be prima facie evidence
of the place or country in which the goods are made or produced.

Costs of Defence or Prosecution

117. 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.

Limitation of Prosecution

118. No prosecution for an offence under this Act or under clause (b) of section 112 of
the Customs Act,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.

Information as to Commission of Offence

119. 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.

Punishment of Abetment in India of Acts Done Out of India

120. 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.

Instructions of Central Government as to Permissible Variation to be Observed by Criminal Courts

121. 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.

 

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