EXTRACTS FROM AMENDMENTS OF THE TRADE MARKS ACT, 1999 (47 OF 1999)
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Definitions and Interpretation.
2. (1) In this Act, unless the context otherwise requires,-
(a) “Appellate Board” means the Appellate Board established under section 83;
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(d) “Bench” means a Bench of the Appellate Board;
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(f) “Chairperson” means the Chairperson of the Appellate Board;
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(k) “Judicial Member” means a Member of the Appellate Board appointed as such under this Act, and includes the Chairperson and the Vice-Chairperson;
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(n) “Member” means a Judicial Member or a Technical Member of the Appellate Board and includes the Chairperson and the Vice-Chairperson;
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(s) “prescribed” means prescribed by rules made under this Act;
(ze) “tribunal” means the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending;
(zf) “Vice-Chairperson” means a Vice-Chairperson of the Appellate Board;
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.
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Effect of removal from register for failure to pay fee for renewal.
26. 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 either-
(a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or
(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
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Proposed use of trade mark by company to be formed, etc.
46. (1) * * * * *
(3) 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.
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Removal from register and imposition of limitations on ground of non-use.
47. (1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either-
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(b) * * * *
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 under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to-
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered.
(2) Where in relation to any goods or services in respect of which a trade mark is registered-
(a) * * * *
(b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the 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 that registration shall cease to extend to such use.
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Use of one of associated or substantially identical trade marks equivalent to use of another.
55. (1) 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 no substantially affecting its identity, as an equivalent for the use required to be proved.
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CHAPTER VII
RECTIFICATION AND CORRECTION OF THE REGISTER
Power to cancel or vary registration and to rectify the register.
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.
(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.
(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.
(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).
(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.
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Applications for Registeration of certification trade marks.
71. (1)* * * * *
(3) 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.
CHAPTER XI
APPELLATE BOARD
Establishment of Appellate Board.
83. The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act and under the Copyright Act, 1957 (47 of 1957.).
Composition of Appellate Board.
84. (1) The Appellate Board shall consist of a Chairperson, Vice-Chairperson and such number of other Members, as the Central Government may deem fit and, subject to the other provisions of this Act, the jurisdiction, powers and authority of the Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the Chairperson-
(a) may, in addition to discharging the functions of the Judicial Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the case may be, the Technical Member, of any other Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairperson, the Judicial Member or the Technical Member appointed to one Bench to discharge also the functions of the Judicial Member or the Technical Member, as the case may be, of another Bench.
(4) Where any Benches are constituted, the Central Government may, from time to time, by notification, make provisions as to the distribution of the business of the Appellate Board amongst the Benches and specify the matters which may be dealt with by each Bench.
(5) If any question arises as to whether any matter falls within the purview of the business allocated to a Bench, the decision of the Chairperson shall be final.
Explanation.-For the removal of doubts, it is hereby declared that the expression matter includes an appeal under section 91.
(6) If the Members of a Bench differ in opinion on any point, they shall state the point or points on which they differ, and make a reference to the Chairperson who shall either hear the point or points himself or refer the case for hearing on such point or points by one or more of the other Members and such point or points shall be decided according to the opinion of the majority of the Members who have heard the case, including those who first heard it.
Qualifications for appointment as Chairperson, Vice-Chairperson, or other Members.
85. (1) A person shall not be qualified for appointment as the Chairperson unless he-
(a) is, or has been, a Judge of a High Court; or
(b) has, for at least two years, held the office of a Vice-Chairperson.
(2) A person shall not be qualified for appointment as the Vice-Chairperson, unless he-
(a) has, for at least two years, held the office of a Judicial Member or a Technical Member; or
(b) has been a Member of the Indian Legal Service and has held a post in Grade I of that Service or any higher post for at least five years.
(3) A person shall not be qualified for appointment as a Judicial Member, unless he-
(a) has been a member of the Indian Legal Service and has held the post in Grade I of that Service for at least three years; or
(b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical Member, unless he-
(a) has, for at least ten years, exercised functions of a tribunal under this Act or under the Trade and Merchandise Marks Act, 1958 (43 of 1958.), or both, and has held a post not lower than the post of a Joint Registrar for at least five years; or
(b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law.
(5) Subject to the provisions of sub-section (6), the Chairperson, Vice-Chairperson and every other Member shall be appointed by the President of India.
(6) No appointment of a person as the Chairperson shall be made except after consultation with the Chief Justice of India.
Term of office of Chairperson, Vice- Chairperson and other Members.
86. The Chairperson, Vice-Chairperson or other Members shall hold office as such for a term of five years from the date on which he enters upon his office or until he attains,-
(a) in the case of Chairperson and Vice-Chairperson, the age of sixty-five years; and
(b) in the case of a Member, the age of sixty-two years, whichever is earlier.
Vice-Chairperson or senior-most Member to act as Chairperson or discharge his functions in certain circumstances.
87. (1) In the event of or any vacancy in the office of the Chairperson by reasons of his death, resignation or otherwise, the Vice-Chairperson and in his absence the senior-most Member shall act as Chairperson until the date on which a new Chairperson, appointed in accordance with the provisions of this Act to fill such vacancy, enters upon his office.
(2) When the Chairperson is unable to discharge his functions owing to his absence, illness or any other cause, the Vice-Chairperson and in his absence the senior-most Member shall discharge the functions of the Chairperson until the date on which the Chairperson resumes his duty.
Salaries, allowances and other terms and conditions of service of Chairperson, Vice-Chairperson and other Members.
88. (1) The salaries and allowances payable to, and other terms and conditions of service (including pension, gratuity and other retirement benefits), of the Chairperson, Vice-Chairperson and other members shall be such as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), a person who, immediately before the date of assuming office as the Chairperson, Vice-Chairperson or other Member was in service of Government, shall be deemed to have retired from service on the date on which he enters upon office as the Chairperson, Vice-Chairperson or other Member.
Resignation and removal.
89. (1) The Chairperson, Vice-Chairperson or any other Member may, by notice in writing under his hand addressed to the President of India, resign his office:
Provided that the Chairperson, Vice-Chairperson or any other Member shall, unless he is permitted by the President of India to relinquish his office sooner, continue to hold office until the expiry of three months from the date of receipt of such notice or until a person duly appointed as his successor enters upon his office or until the expiry of his term of office, whichever is earlier.
(2) The Chairperson, Vice-Chairperson or any other Member shall not be removed from his office except by an order made by the President of India on the ground of proved misbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in which the Chairperson, Vice-Chairperson or other Member had been informed of the charges against him and given a reasonable opportunity of being heard in respect of those charges.
(3) The Central Government may, by rules, regulate the procedure for the investigation of misbehaviour or incapacity of the Chairperson, Vice-Chairperson or other Member referred to in sub-section (2).
Qualifications, terms and conditions of service of Chairperson, Vice-Chairperson and member.
89A. Notwithstanding anything in this Act, the qualifications, appointment, term of office, salaries and allowances, resignations, removal and other terms and conditions of service of the Chairperson, Vice-Chairperson and other Members of the Appellate Board appointed after the commencement of Part XIV of chapter VI of the Finance Act 2017 (7 of 2017.), shall be governed by the provisions of section 184 of that Act:
Provided that the Chairperson, Vice-Chairperson and other Members appointed before the commencement of Part XIV of Chapter VI of the Finance Act, 2017 (7 of 2017.), shall continue to be governed by the provisions of this Act, and the rules made thereunder as if the provisions of section 184 of the Finance Act, 2017, had not come into force.
Staff of Appellate Board.
90. (1) The Central Government shall determine the nature and categories of the officers and other employees required to assist the Appellate Board in the discharge of its functions and provide the Appellate Board with such officers and other employees as it may think fit.
(2) The salaries and allowances and conditions of service of the officers and other employees of the Appellate Board shall be such as may be prescribed.
(3) The officers and other employees of the Appellate Board shall discharge their functions under the general superintendence of the Chairperson in the manner as may be prescribed.
Appeals to Appellate Board.
91. (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.
Procedure And powers of Appellate Board.
92. (1) The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure, 1908 (5 of 1908.), but shall be guided by principles of natural justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of places and times of its hearing.
(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908.), while trying a suit in respect of the following matters, namely:-
(a) receiving evidence;
(b) issuing commissions for examination of witnesses;
(c) requisitioning any public record; and
(d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the Indian Penal Code (45 of 1860.), and the Appellate Board shall be deemed to be a civil court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973 (2 of 1974.).
Bar of Jurisdiction of courts, etc.
93. No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (1) of section 91.
Bar to appear before Appellate Board.
94. On ceasing to hold office, the Chairperson, Vice-Chairperson or other Members shall not appear before the Appellate Board or the Registrar.
Conditions as to making of interim orders.
95. Notwithstanding anything contained in any other provisions of this Act or in any other law for the time being in force, no interim order (whether by way of injunction or stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless-
(a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to the party against whom such appeal is made or proposed to be made; and
(b) opportunity is given to such party to be heard in the matter.
Power of Chairperson to transfer cases from one Bench to another.
96. On the application of any of the parties and after notice to the parties, and after hearing such of them as he may desire to be heard, or on his own motion without such notice, the Chairman may transfer any case pending before one Bench, for disposal, to any other Bench.
Procedure for application for rectification, etc., before Appellate Board.
97. (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.
Appearance of Registrar in Legal proceedings.
98. (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;
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(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.
Costs of Registrar in proceedings Before Appellate Board.
99. In all proceedings under this Act before the Appellate Board the costs of the Registrar shall be in the discretion of the Board, but the Registrar shall not be ordered to pay the costs of any of the parties.
Transfer of pending proceedings to Appellate Board.
100. All cases of appeals against any order or decision of the Registrar and all cases pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate Board from the date as notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.
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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.
(2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the 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.
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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 (45 of 1860.).
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.
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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.
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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.
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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 judgment in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.
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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.
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Power to make rules.
157. (1) * * * * *
(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:-
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(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;
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