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Chapter 2 – The Register and Conditions for Registration

BananaIP Counsels > The Trade Marks Act > Chapter 2 – The Register and Conditions for Registration

Chapter 2 – The Register and Conditions for Registration

 

Appointment of Registrar and Other Officers

 

3.—(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.

 

Power of Registrar to Withdraw or Transfer Cases, etc.

 

4. 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matter himself either de novo or from the stage it was so withdrawn or transfer the same to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.

 

Trade Marks Registry and Offices Thereof

 

5.—(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 shall be the
Trade Marks Registry under this Act.
(43 of 1958)

(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.

 

The Register of Trade Marks

 

6.—(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.

 

Classification of Goods and Services

 

7.—(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.

 

Publication of Alphabetical Index

 

8.—(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.

 

Absolute Grounds for Refusal of Registration

 

9.—(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.

 

Limitation as to Colour

 

10.—(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 tribunal 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.

 

Relative Grounds for Refusal of Registration

 

11.—(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.

(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—

(a) a registered trade mark 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;
(vi) the duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent 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;
(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.

 

(ii) Registration in the Case of Honest Concurrent Use etc.

 

12. 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.

 

Prohibition of Registration of Names of Chemical Elements or
International Non-Proprietary Names

 

13. 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.

 

Use of Names and Representations of Living Persons or Persons Recently Dead

 

14. 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 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.

 

Registration of Parts of Trade Marks and of Trade Marks as a Series

 

15.—(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.

 

Registration of Trade Marks as Associated Trade Marks

 

16.—(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 in respect of services which are associated with those goods or goods of that
description and with those services 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 section15, 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.

 

 

Effect of Registration of Parts of a Mark

 

17.—(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
(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.