Professional Documents
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TRADE MARKS
This chapter deals with Evolution of Indian Trade marks Act from 1940
to 2009. Prior to 1940 there was no statutory law relating to trade marks in India.
The law applicable to the subject was based on common law of England before the
The Trade Marks Act 1940 introduced for the first time to address the
issues relating to the registration and statutory protection of trade marks in India.
This Act was in force until 1958, when Trade and Merchandise Marks Act was
passed. This Act was repealed and the present law is governed by the Trade Marks
Act 1999.
The Trade Marks Act 1999 has made substantial changes in the law. As
regards unregistered trade marks, some of the law are codified, while others are
based on common law for which one has to refer the decisions of courts.
and complex. It has been found necessary to safeguard the bonafide interest of other
traders from litigation and harassment by owners of registered trade marks, apart
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from protecting the purchasing public from imposition and fraud by infringers of
The Present Act of 1999, apart from simplifying the law, has introduced
many new provisions, which are in the interest of trade mark owners as well as the
consumers of goods.
For historical reasons both the common law and the statutory law of trade
marks in India have closely followed the pattern of English Law. The Trade Marks
Act, 1940, which was the first statute on the subject introduced in India, was almost
a replica of the U.K.Trade Marks Act 1938. This Act was subsequently replaced by
the Trade and Merchandise Marks Act 1958. Apart from making substantial
alterations in the previous law this Act takes into account some provisions relating
to trade marks contained in the Indian penal Code, the Criminal Procedure Code and
Sea Customs Act. This Act has again been repealed by the Trade Marks Act 1999.
The object of trade mark law is to deal with precise nature of the rights
which a person can acquire in respect of trade mark, the mode of acquisition of such
rights, the method of transfer of those rights to others, the precise nature of
infringement of such rights, the procedure for enforcement of those rights and the
undergone change from time to time in tune with changing pattern of business
methods and practices. Even the very concept of a trade mark and its functions have
changed. Already in UK a new trade mark law had been enacted in 1994. In India,
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The salient features of the Trade Marks Act 1999 are presented below
1. The Trade Marks Act, 1999 deals with entire law relating to trade
marks and its procedures2.
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11. Provisions for protection of well known trade marks and test for
determination of such marks.
15. Registered user provisions simplified. Registrar has been given the
power to decide.
18. Creation of Appellate Board to hear and decide appeals from the
decisions of Registrar.
21. Enlarging the jurisdiction of courts to bring the law on par with the
Copy Right Laws, amplifying the powers of the court to grant
injunction in certain cases and other related amendments to
simplify and streamline the Trade Mark Law and procedure.
22. The Act provides registration of trade marks for services also in
addition to goods.
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23. Registration of names of chemical element or international non-
proprietary names are prohibited under Section 13. So also the
names and re-presentations of living persons or persons recently
dead cannot be used for registration unless the consent is obtained
from the concerned persons.
27. The Provisions of this Act do not affect rights of action against any
person for passing off goods or services (Section 27 (2)].
29. The Trade Marks Act, 1999, provides reliefs in any suit for
infringement of trade marks or for passing-off under Section 135.
They are injunction and at the option of the plaintiff either damages
or an account of profits.
30. The Act provides enhanced punishment for the offences relating to
trade marks on par with the present Copyright Act, 1957, to prevent
the sale of spurious goods.
31. Section 5 of the Act establishes the Trade marks Registry. The Act
also empowers the Central Government to appoint the Registrar of
Trade marks (Section 3). He is in control and management of the
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Register of Trade marks. The registration of trade marks is under
the control of the Registrar.
32. Section 142 protects the persons against groundless threats of legal
proceedings.
goodwill.
The Trade Marks Act, 1999 has been enacted to amend and consolidate
the law relating to trade marks, to provide for registration and better protection of
trade marks for goods and services and for the prevention of the use of fraudulent
marks. The following are the important Provision and Rules of Assignment and
INDIA
transmission of trade made in Chapter V of Trade Mark Act 1999. As per law, it is
an intangible asset having value. Right of a trade mark is licensable, assignable and
transmissible as any other right in a property. It may pass to a successor on the death
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2. A registered trade mark is assignable or transmissible with or without
Agreement mandates that the owner of a registered trade mark shall have the right
to assign the trade mark with or without the transfer of the business to which the
of the business concerned. Under the former law there was an express prohibition to
the effect that unregistered trade mark is not assignable or transmissible except
along with the goodwill of the business concerned except in specified circumstances.
more than one person which would be likely to deceive or cause confusion.
limitations imposed, the goods are to be sold in different markets-either within India
validity is to be conclusive.
rights on a territorial basis and creating rights in different persons in different parts
of India, which existed in the old Act are continued to be retained in the present law.
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6. Assignment without goodwill of business will not take effect unless
assignor obtains directions of the Registrar and advertises the assignment as per
directions and as prescribed. It is submitted that this old approach is not consistent
with the present day reforms in the law relating to trade mark.
7. Assignment of certification trade mark can only be done with the consent
of the Registrar. The only change introduced relating to this provision is the
substitution of the word Registrar for the word Central Government, consequent
on the change of law vesting final authority for disposal of applications for
old procedure. If the validity of the assignment is in dispute, the Registrar may
refuse to register, unless the rights of parties are determined by the competent court.
If there is in force any law regulating the transmission of money outside India, the
Registrar shall not register the title of a person who becomes entitled to a trade mark
permission of the authority specified in such law for such transmission (Rule 73).
10. The particulars that will be entered are the name and address of the
assignee, the date of assignment, where the assignment is in respect of any right in
the mark, a description of the right assigned, the basis under which assignment is
made and the date on which the entry is made in the register.
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11. Rule 68 to 79 of the Trade marks Rules contain the procedural
guidelines.
concerned [Sec. 2 (1) (b)]. No specific form has been prescribed for the purpose.
representative of a deceased and any order mode of transfer, not being assignment
transferred only along with the goodwill of the business for the goods in respect of
which the mark was used. Under Sec. 39 of the Trade Marks Act 1999, a trade mark
can be assigned with or without the goodwill of the business concerned. This
recognizes the modern principle that a trade mark and the goodwill of the business
business, the assignee will not be able to protect the trade mark since in the absence
of the goodwill of business no action for passing off will lie. Unless the assignee
registers the trade mark that assignment does not result in any enforceable right to
the assignee.
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A registered trade mark can be assigned or transmitted with or without
the goodwill of the business concerned (SS 37 & 38). Salient features of the relevant
registration. The power to assign is given to the person for the time being entered in
the register as proprietor of trade mark (Sec 37) and to give receipt for any
consideration for such assignment. If the mark was registered in the wrong name,
the registered proprietor has power to assign the mark and the validity of the
subsequent assignment. But the intention of transferring the trade mark along with
Trade Marks
without the goodwill of the business concerned. The assignment need not
necessarily relate to the whole of the goods for which the mark is registered but may
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3. Sec. 39 Assignability and Transmissibility of Registered Trade Mark
unregistered trade mark with or without the goodwill of the business concerned
(Sec. 39).
question will arise whether the similarity of the trade marks assigned. The similarity
of the goods for which they are assigned are such that the use of the marks by more
than one person concerned would be likely to deceive or cause confusion, thereby
In such cases the proprietor of the registered trade mark who proposes to
assign it may submit to the Registrar u/s. 40 a statement of case setting out the
circumstances and the Registrar may issue a certificate stating whether the proposed
territorial basis is not permitted. The Registrar, however approve the assignment or
transmission if he is satisfied that the use of the trade mark in exercise of the rights
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6. Sec. 42 Condition for assignment otherwise than in connection with
particular goods in respect of which the mark is used. Goodwill connected with
export business is considered different from goodwill connected with local business.
u/s. 39 to 41.
Assignment without goodwill of business will not take effect unless the
assignee advertises the assignment in accordance with the direction of the Registrar
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i.e. within 6 months from the date of assignment or extended period, if any, not
exceeding three months in the aggregate. The purpose of the advertisement is to give
notice of the assignment without goodwill of the business to the public. Application
for direction of advertisement should be made to the Registrar within the time
prescribed u/s. 42. The Registrar will give directions as to the form and manner of
advertisement and also the period within which the assignment should be advertised.
the mark is used. In the case of unused trade mark, advertisement does not appear to
be necessary.
If for any reason, there is a failure on the part of the assignee to take
necessary action within six months or within the extended time allowed, the
assignment will become inoperative for registration of his title under section 45.
otherwise than with the consent of the Registrar, for which application shall be made
consent of the Registrar of Trade marks. After obtaining the necessary consent, the
procedure for entering the name of the subsequent proprietor on the register is the
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8. Sec. 44 Assignability and Transmissibility of Associated
Trade Marks
and not separately. The object of this provision is to prevent the likelihood of
deception or confusion arising from the use of similar trade marks by different
The procedure for entering on the register the name of the subsequent
registered trade mark, he shall apply in the prescribed manner to the Registrar to
his satisfaction, register him as the proprietor of the trade marks of the goods or
services in respect of which the assignment or transmission has effect and will be
between the parties, the Registrar may refuse to register the assignment or
transmission until the rights of the parties have been determined by a competent
court.
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10. The Trade Marks (Amendment) Bill, 2009
substituted namely
New Sec 45
registered trade mark, he shall apply in the prescribed manner to the Registrar to
register his title and Registrar shall, on receipt of the application* register him as the
proprietor of the trade mark in respect of the goods or services in respect of which
the assignment or transmission has effect and shall cause particulars of such
ii. The Registrar may require the applicant to furnish evidence or further
evidence in proof of title only where there is reasonable doubt about the truth of any
between the parties, the registrar may refuse to register the assignment or
transmission until the rights of parties have been determined by competent court,
and *in all other cases the Registrar shall dispose of the application within the
iv. Until an application has been filed for registering a person as the
against a person acquiring a conflicting interest in or under the registered trade mark
Act)
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11. Parties Adversely Affected
hearing to be given to the partly adversely affected by the order, when an application
is made before the registrar, in the eye of law, there is a necessary implication that
the party adversely affected should be heard before an order for the removal of his
of natural justice, the order is void in law and if that order is relief upon it can be
transmission has been entered in the register without giving notice to the affected
parties, the Registrar may expunge the entry from the register u/s.45. If the Registrar
is in doubt as to the validity of the assignment, he has a duty to hear the parties
notice to other partner, whose name was deleted from the register is against natural
cancelled.
mark, petition field before the High Court to revalidate the assignment by the
consideration the principles of natural justice, the Registrar has to decide if the
matter is remanded to him. If the Registrar decides in violation of natural justice, his
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13. Stamping of Assignment Deed
therefore, attracts the provisions of the Stamp Act. However, an assignment deed
which is not properly stamped is admissible in evidence under the Stamp Act on
payment of the necessary stamp duty and penalty u/s. 37, a registered trade mark can
be assigned for any consideration which shows that the quantum or nature of the
consideration is immaterial.
alteration in the mark. For example, a change in the name of the proprietor. Any
such alteration can be carried out in the register only under the provisions of Sec. 59.
If the alteration would substantially affect the identity of the mark, if may not be
allowed u/.s 59 and a fresh registration of the altered mark may be necessary.
deed which later on was shown to be fraudulent, the register will be rectified by
restoring the name of the partner removed. Where registered marks are assigned to a
ground of refusal of registration of the assignment before the final outcome of the
rectification proceedings.
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16. Colourable Assignment
for the purpose of using its name, which is similar to that of a successful competitor,
The assignee of a business with goodwill, trade mark and trade name is
entitled to sell the goods under the same levels and represent themselves as the
successors to the assignees business. But, they cannot make representation that the
goods are guaranteed by the assignor, for example, by the use of the assignors
facsimile signature and words of guarantee which the assignor had used on his
labels.
The assignee of a registered trade mark can file a suit for infringement before the
registration of the assignment is effected. The assignment confers title to the mark
on the assignee and registration of the assignment is only the completion of his title.
deed that he is the assignee of the trade mark along with the good will of business.
The partnership firm is entitled to the benefit of prior user of the trade mark
arbitrator, the jurisdiction of the arbitration is wide enough to adjudicate upon the
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20. Erstwhile Partners right to name
A partner who has retired from a partnership firm is not entitled to use
the name of the partnership firm from which he has retired in his own new business.
marks from 1960 and 1970 onwards largely reflecting the growing importance of the
goods or services in connection with which it is used in the course of trade which is
certified by the proprietor of the mark. The function of the certification trade mark is
not to indicate trade origin but to certify the goods or services. The definition of
trade mark includes a certificate of trademark also. Certification Trade marks are
assignable or transmissible only with the consent of the registrar or trade marks.
After obtaining the necessary consent, the procedure for entering the name of the
subsequent proprietor on the register is the same as for an ordinary trade mark.
proprietor of the mark from those of others. Associated trade marks are assignable or
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transmissible only as a whole and not separately .The object of this provision is to
prevent the likelihood of deception or confusion arising from the use of similar trade
Trade marks shall now include services service providers will be able to
register their service marks. The period of registration of trade marks has been
The Trade marks (Amendment) Rules 2010 brought into force by the
and Transmission , which forms part of Trade Marks Act , it is necessary to examine
AND TRANSMISSION
registered proprietor.
instrument, if any, under which the applicant, or, in the case of a joint application,
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the person other than the registered proprietor claims to be entitled to the trade mark
and such instrument or a duly certified copy thereof shall be produced at the Trade
Marks Registry for inspection at the time of application. The Registrar may require
and retain an attested copy of any instrument produced for inspection in proof of
title.
Where a person applying under rule 68 for registration of his title, does
not establish his claim under any document or instrument which is capable in itself
of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either
upon or with the application, state a case setting forth the full particulars of the facts
upon which his claim to be proprietor of the trade mark is based, and showing that
the trade mark has been assigned or transmitted to him. If the Registrar so requires,
The Registrar may call upon any person who applies to be registered as
proprietor of a registered trade mark to furnish such proof or additional proof of title
of a person is not properly or sufficiently stamped, the Registrar shall impound and
deal with it in the manner provided by Chapter IV of the Indian Stamp Act, 1899
(2 of 1899).
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vi. RULE 73. Assignments involving transmission of moneys
outside India
India, the Registrar shall not register the title of a person who becomes entitled to a
of the permission of the authority specified in such law for such transmission.
TM-20 and shall state the date on which the assignment was made. The application
shall give particulars of the registration in the case of a registered trade mark, and in
the case of an unregistered mark shall show the mark and give particulars including
user of the unregistered trade mark that has been assigned therewith. The Registrar
may call for any evidence or further information and if he is satisfied with regard to
the various matters he shall issue directions in writing with respect to the
which section 41 applies, unless his approval has been obtained under the said
(3) A request for an extension of the period within which the application
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viii. RULE 75. Application for entry of assignment without goodwill
(a) Whether the trade mark had been or was used in the business in any of
(b) Whether the assignment was made otherwise than in connection with the
goodwill of that business, and if both those circumstances subsisted, then the
applicant shall leave at the Trade Marks Registry a copy of the directions to
advertise the assignment, obtained upon application under rule 74, and such proof,
show that his directions have been fulfilled and if the Registrar is not satisfied that
the directions have been fulfilled, he shall not proceed with the application.
under the same registration number as subsequent proprietors of a trade mark, each
of the resulting separate registrations in the names of those different persons shall be
Any person who desires to obtain the Registrar's certificate under sub-
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the Registrar with his application in Form TM-17 or Form TM-19, as the case may
be, a statement of case in duplicate setting out the circumstances and a copy of any
Registrar may call for any evidence or further information that he may consider
necessary and the statement of case shall be amended if required to include all the
Registrar, after hearing (if so required) the applicant and any other person whom the
Registrar may consider to be interested in the transfer, shall consider the matter and
thereof, as the case may be, to the applicant and shall also inform such other person
accordingly. Where a statement of case is amended, three copies thereof in its final
form shall be left at the Trade Marks Registry. The Registrar shall seal a copy of the
Where the Registrar has allowed the assignment of a trade mark under this Act,
there shall be entered in the register the following particulars of assignment, namely:
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xii. RULE 79. Registration of assignment to a company under section 46
For the purposes of sub-section (4) of section 46, the period within which
upon application made under rule 68 shall be six months from the date of
advertisement in the Journal of the registration of the trade mark or such further
period not exceeding six months as the Registrar may allow on application being
made in Form TM-25 by the applicant for registration of title or the registered
proprietor, as the case may be, at any time before or during the period for which the
of trade marks in the Trade marks Act 1999 are presented in this chapter for the
better understanding of the legal compliance and legal remedies available to the
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CHAPTER III END NOTES
1. Trade marks Law and Practice SARKAR Page no: 332 to 342.
3. Law of Trade Marks and Passing Off including European Law, Unfair
Competition , Trade Dress and Geographical Indication. P.NARAYANAN
Chapter 18 18.02 to 18.32. pg no 402 to 412.