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Chapter 13 – Miscellaneous

BananaIP Counsels > The Trade Marks Act > Chapter 13 – Miscellaneous

Chapter 13 – Miscellaneous

Protection of Action Taken in Good Faith

122. 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.
Certain Persons to Be Public Servants
123. 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.

Stay of Proceedings Where the Validity of Registration of the Trade Mark is Questioned, etc.

124.—(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and
the plaintiff pleads the invalidity of registration of the defendant’s trade mark,
the court trying the suit (hereinafter referred to as the court), shall,—

(i) if any proceedings for rectification of the register in relation to the plaintiff’s or
defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit
pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding
the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie
tenable, raise an issue regarding the same and adjourn the case for a period of three months
from the date of the framing of the issue in order to enable the party concerned to apply to the
Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as
is referred to in clause(b)(ii) of sub-section (1) within the time specified therein or within such
extended time as the court may for sufficient cause allow, the trial of the suit shall stand
stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or
within such extended time as the court may allow, the issue as to the validity of the
registration of the trade mark concerned shall be deemed to have been abandoned and the
court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1)
or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit
conformably to such order in so far as it relates to the issue as to the validity of the
registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not
preclude the court from making any interlocutory order (including any order granting an
injunction, directing account to be kept, appointing a receiver or attaching any property),
during the period of the stay of the suit.

Application for Rectification of Register to Be Made to Appellate Board in Certain cases

125.—(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.

 

Implied Warranty on Sale of Marked Goods

126. 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.

Powers of Registrar

127. 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, made
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.

Exercise of Discretionary Power by Registrar

128. Subject to the provisions of section 131, the Registrar shall not exercise any
discretionary or other power vested in him by this Act or the rules made thereunder adversely
to a person applying for the exercise of that power without (if so required by that person
within the prescribed time) giving to the person an opportunity of being heard.

Evidence Before Registrar

129. 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.

Death of Party to a Proceeding

130. If a person who is a party to a proceeding under this Act (not being a proceeding
before the Appellate Board or a court) dies pending the proceeding, the Registrar may, on
request, and on proof to his satisfaction of the transmission of the interest of the deceased
person, substitute in the proceeding his successor in interest in his place, or, if the Registrar is
of opinion that the interest of the deceased person is sufficiently represented by the surviving
parties, permit the proceeding to continue without the substitution of his successor in interest.

Extension of Time

131.—(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.

Abandonment

132. 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.

Preliminary Advice by the Registrar as to Distinctiveness

133.—(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.

Suit for Infringement, etc. to Be Instituted Before District Court

134.—(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.
For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having
jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure,1908
or any other law for the time being in force, include a District Court within the local limits of
whose jurisdiction , at the time of the institution of the suit or other proceeding, the person
instituting the suit or proceeding, or, where there are more than one such persons any of them,
actually and voluntarily resides or carries on business or personally works for gain.
(5 of 1908)
Explanation.—For the purposes of sub-section (2), “person” includes the registered
proprietor and the registered user.

Relief in Suits for Infringement or for Passing Off

135.—(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 mattes, 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—

unaware and had no reasonable ground for believing that the trade mark of the plaintiff
was on the register or that the plaintiff was a registered user using by way of permitted use;
and
(ii) that when he became aware of the existence and nature of the plaintiff’s right in the
trade mark, he forthwith ceased to use the trade mark in relation to goods or services in
respect of which it was registered,; or
(c) where in a suit for passing off, the defendant satisfies the court—
(i) that at the time he commenced to use the trade mark complained of in the suit, he
was unaware and had no reasonable ground for believing that the trade mark of the plaintiff
was in use; and
(ii) that when he became aware of the existence and nature of the plaintiff’s trade mark
he forthwith ceased to use the trade mark complained of.

Registered User to Be Impleaded in Certain Proceedings

136.—(1) In every proceeding under chapter VII or under section 91,every registered
user of a trade mark using by way of permitted use, who is not himself an applicant in respect
of any proceeding under that chapter or section, shall be made a party to the proceeding.
(2) Notwithstanding anything contained in any other law, a registered user so made a
party to the proceeding shall not be liable for any costs unless he enters an appearance and
takes part in the proceeding.

Evidence of Entries in Register, etc. and Things Done by the Registrar

137.—(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.

Registrar and Other Officers not Compellable to Produce Register, etc.

138. 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.

Power to Require Goods to Show Indication of Origin

139.—(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 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.
(10 of 1897)
(5) A notification under this section shall not apply to goods made or produced beyond
the limits of India and imported into India, if in respect of those goods, the Commissioner of
Customs is satisfied at the time of importation that they are intended for exportation whether
after transhipment in or transit though India or otherwise.

Power to Require Information of Imported Goods Bearing False Trade Marks

140.—(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 gods 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, for the protection of trade marks, and are liable to confiscation on importation under
that Act, are imported into India, the Commissioner of Customs if, upon representation made
to him , he has reason to believe that the trade mark complained of is used as a false trade
mark, may require the importer of the goods, or his agent, to produce any documents in his
possession relating to the goods and to furnish information as to the name and address of the
person by whom the goods were consigned to India and the name and address of the person to
whom the goods were sent in India.

(3) The importer or his agent shall, within fourteen days, comply with the requirement
as aforesaid, and if he fails to do so, he shall be punishable with fine which may extend to five
hundred rupees.
(4) Any information obtained from the importer of the goods or his agent under this
section may be communicated by the Commissioner of Customs to the registered proprietor
or registered user of the trade mark which is alleged to have been used as a false trade mark.

Certificate of Validity

141. If in any legal proceeding for rectification of the register before the Appellate
Board a decision is on contest given in favour of the registered proprietor of the trade mark on
the issue as to the validity of the registration of the trade mark, the Appellate Board may grant
a certificate to that effect, and if such a certificate is granted, then, in any subsequent legal
proceeding in which the said validity comes into question the said proprietor on obtaining a
final order or judgement in his favour affirming validity of the registration of the trade mark
shall, unless the said final order or judgement for sufficient reason directs otherwise , be
entitled to his full cost charges and expenses as between legal practitioner and client.

Groundless Threats of Legal Proceedings

142.—(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.

Address for Service

143. 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.
Trade Usages, etc. to Be Taken Into Consideration
144. 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.

Agents

145. 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.

Marks Registered by an Agent or Representative Without Authority

146. 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.

Indexes

147.—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.

Documents Open to Public Inspection

148.—(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 section74, and all applications under
section 66 or section 77 for varying such regulations;
(d) the indexes mentioned in section 147; and
(e) such other documents as the Central Government may, by notification in the
Official Gazette, specify,
shall, subject to such conditions as may be prescribed, be open to public inspection at the
Trade Marks Registry:
Provided that when such register is maintained wholly or partly on computer, the
inspection of such register under this section shall be made by inspecting the computer print
out of the relevant entry in the register so maintained on computer.
(2) Any person may, on an application to the Registrar and on payment of such fees as
may be prescribed, obtain a certified copy of any entry in the register or any document
referred to in sub-section (1).

Reports of Registrar to Be Placed Before Parliament

149. 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.

Fees and Surcharge

150.—(1) There shall be paid in respect of applications and registration and other
matters under this Act such fees and surcharge as may be prescribed by the Central
Government.
(2) Where a fee is payable in respect of the doing of an act by the Registrar, the
Registrar shall not do that act until the fee has been paid.
(3) Where a fee is payable in respect of the filing of a document at the Trade Marks
Registry, the document shall be deemed not to have been filed at the Registry until the fee has
been paid.

Savings in Respect of Certain Matters in Chapter 12

151. Nothing in Chapter XII shall—
(a) exempt any person from any suit or other proceeding which might, but for anything
in that Chapter, be brought against him; or
(b) entitle any person to refuse to make a complete discovery, or to answer any
question or interrogatory in any suit or other proceeding, but such discovery or answer shall
not be admissible in evidence against such person in any such prosecution for an offence
under that Chapter or against clause (h) of section 112 of the Customs Act, 1962 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
(52 of 1962)
(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.

Declaration as to Ownership of Trade Mark not Registrable Under the Registration Act, 1908

152. Notwithstanding anything contained in the Registration Act, 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.
(16 of 1908)

Government to Be Bound

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

Special Provisions Relating to Applications for Registration from Citizens of Convention Countries

154.—(1) With a view to the fulfillment of a treaty, convention or arrangement with
any country or country which is a member of a group of countries or union of countries or
Inter Governmental Organisation outside India which affords to citizens of India similar
privileges as granted to its own citizens, the Central Government may, by notification in the
Official Gazette, declare such country or group of countries or union of countries or Inter
Governmental Organisation to be a convention country or group of countries or union of
countries or Inter Governmental Organisations, as the case my 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.

Provision as to Reciprocity

155. 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 of 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.

Power of Central Government to Remove Difficulties

156.—(1) If any difficulty arises in giving effect to the provisions of this Act, the
Central Government may, by order published in the Official Gazette, make such provisions
not inconsistent with the provisions of this Act as may appear to be necessary for removing
the difficulty:
Provided that no order shall be made under this section after the expiry of five years
from the commencement of this act.
(2) Every order made under this section shall, as soon as may be after it is made, be laid
before each House of Parliament.

 

Power to Make Rules

157.—(1) The Central Government may, by notification in the Official Gazette and
subject to the conditions of previous publication, make rules to carry out the provisions of this
Act.
(2) In particular, and without prejudice to the generality of the foregoing power, such
rules may provide for all or any of the following matters, namely:—
(i) the matters to be included in the Register of Trade Marks under sub-section (1) of
section 6, and the safeguards to be observed in the maintenance of records on computer
floppies or diskettes or in any other electronic form under sub-section (2) of that section;
(ii) the manner of publication of alphabetical index of classification of goods and
services under sub-section (1) of section 8;
(iii) The manner in which the Registrar may notify a word as an international
non-proprietary name under section 13;
(iv) The manner of making an application for dissolution of an association under
sub-section (5) of section 16;
(v) The manner of making an application for registration of a trade mark under
sub-section (1) of section 18;
(vi) The manner of advertising of an application for registration under sub-section (1),
and the manner of notifying corrections or amendments under sub-section (2), of section 20;
(vii) The manner of making an application and the fee payable for such application
giving notice under sub-section (1) and sending counter statements under sub-section (2) and
submission of evidence and the time therefor under sub-section (4) of section 21;
(viii) The form of certificate of registration under sub-section (2), and the manner of
giving notice to the applicant under sub-section (3) of section 23;
(ix) The forms of application for renewal and restoration the time within which such
application is to be made and the fee and surcharge if any payable with each application,
under section 25 and the time within which the Registrar shall send a notice and the manner of
such notice under sub-section (3) of that section;
(x) The manner of submitting statement of cases under sub-section (2) of section 40;
(xi) The manner of making an application by the proprietor of a trade mark under
section 41;
(xii) The manner of making an application for assignment or transmission of a
certification trade mark under section 43;
(xiii) The manner of making an application to the Registrar to register title under
sub-section (1) of section 45;

(xiv) The manner in which and the period within which an application is to be made
under sub-section (4) of section 46;
(xv) The manner of marking an application under sub-section (2) of section 47;
(xvi) The manner of making an application, documents and other evidence to
accompany such application under sub-section (1) and the manner in which notice is to be
issued under sub-section (3) of section 49;
(xvii) The manner of making an application under sub-section (1), the manner of
issuing a notice under sub-section (2) and the procedure for cancelling a registration under
sub-section (3) of section 50;
(xviii) The manner of making applications under sub-sections (1) and (2), the manner
of giving notice under sub-section (4) and the manner of service of notice of rectification
under sub-section (5) of section 57;
(xix) The manner of making an application under section 58;
(xx) The manner of making an application under sub-section (1), the manner of
advertising an application, time and manner of notice by which application may be opposed
under sub-sections (2) and (3) of section 59;
(xxi) The manner of advertisement under sub-section (2) of section 60;
(xxii) The other matters to be specified in the regulations under sub-section (2) of
section 63;
(xxiii) The manner of making an application under sub-section (1) of section 71;
(xxiv) The manner of advertising an application under section 73;
(xxv) The manner of making an application under section 77;
(xxvi) The classes of goods under section 79;
(xxvii) The conditions and restrictions under sub-section (2) of section 80;
(xxviii) Determination of character of textile goods by sampling under section 82;
(xxix) The salaries and allowances payable to, and the other terms and conditions of
service of, the Chairman, Vice Chairman and other Member under sub-section (1) of
section 88;
(xxx) The procedure for investigation of misbehaviour or incapacity of the Chairman,
Vice-Chairman and other Members under sub-section (3) of section 89;
(xxxi) The salaries and allowances and other conditions of service of the officers and
other employees of the Appellate Board under sub-section (2), and the manner in which the
officers and other employees of the Appellate Board shall discharge their functions under
sub-section (3), of section 90;

(xxxii) The form of making an appeal, the manner of verification and the fee payable
under sub-section (3) of section 91;
(xxxiii) The form in which and the particulars to be included in the application to the
Appellate Board under sub-section (1) of section 97;
(xxxiv) The manner of making an application for review under clause (c) of
section 127;
(xxxv) the time within which an application is to be made to the Registrar for
exercising his discretionary power under section 128;
(xxxvi) the manner of making an application and the fee payable therefor under
sub-section (1) of section 131;
(xxxvii) the manner of making an application under sub-section (1) and the period for
withdrawal of such application under sub-section (2) of section 133;
(xxxviii) the manner of authorising any person to act and the manner of registration as
a trade mark agent under section 145;
(xxxix) the conditions for inspection of documents under sub-section (1) and the fee
payable for obtaining a certified copy of any entry in the register under sub-section (2) of
section 148;
(xl) the fees and surcharge payable for making applications and registration and other
matters under section 150;
(xli) any other matter which is required to be or may be prescribed.
(3) The power to make rules conferred by this section shall include the power to give
retrospective effect in respect of the matters referred to in clauses (xxix) and (xxxi) of
sub-section (2) from a date not earlier than the date of commencement of this Act, but no
retrospective effect shall be given to any such rule so as to prejudicially affect the interests of
any person to whom sub-rule may be applicable.
(4) Every rule made by the Central Government under this Act shall be laid, as soon as
may be after it is made, before each House of Parliament, while it is in session for a total
period of thirty days which may be comprised in one session or in two or more successive
session, 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.

Amendments

158. The enactment specified in the Schedule shall be amended in the manner specified
therein.

Repeal and Savings

159.—(1) The Trade and Merchandise Marks act, 1958 is hereby repealed.
(43 of 1958)
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897,
with respect to repeals, any notification, rule, order, requirements, 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 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.
(10 of 1897 & 43 of 1958)
(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 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.

 

 

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