The Trade Marks Act, 1999

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The Trade Marks Act, 1999 

 (ACT NO. 47 OF 1999) 

[As on the 1st June, 2026] 

  



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LIST OF AMENDING ACTS 

1. The Trade Marks’ (Amendment) Act, 2010 (40 of 2010). 

2. The Finance Act, 2017 (7 of 2017). 

3. The Tribunals Reforms Act, 2021 (Act 33 of 2021). 

4. The Jan Vishwas (Amendment of Provisions) Act, 2023 (18 of 2023). 

_______ 

 

 

 

LIST OF ABBREVIATIONS USED 

Cl., cls.              . . . .             .            for           Clause, clauses. 

Ins.                 . . . .  .            ,,              Inserted. 

Notifn.  . . . . .  ,,     Notification. 

S., ss.  . . . . .  ,,     Section, sections. 

Sch.  . . . . .  ,,     Schedule. 

Subs.  . . . . .  ,,     Substituted. 

w.e.f.  . . . . .  ,,     with effect from. 

 

 

 

 

 

 

 

  



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THE TRADE MARKS ACT, 1999 
_________ 

ARRANGEMENT OF SECTIONS 
_________ 

CHAPTER I 

PRELIMINARY 

SECTIONS 

1. Short title, extent and commencement. 

2. Definitions and interpretation. 

 

CHAPTER II 

THE REGISTER AND CONDITIONS FOR REGISTRATION 

3. Appointment of Registrar and other officers. 

4. Power of Registrar to withdraw or transfer cases, etc. 

5. Trade Marks Registry and offices thereof. 

6. The Register of Trade Marks. 

7. Classification of goods and services. 

8. Publication of alphabetical index. 

9. Absolute grounds for refusal of registration. 

10. Limitation as to colour. 

11. Relative grounds for refusal of registration. 

12. Registration in the case of honest concurrent use, etc. 

13. Prohibition of registration of names of chemical elements or international non-proprietary names. 

14. Use of names and representations of living persons or persons recently dead. 

15. Registration of parts of trade marks and of trade marks as a series. 

16. Registration of trade marks as associated trade marks. 

17. Effect of registration of parts of a mark. 

 

CHAPTER III 

PROCEDURE FOR AND DURATION OF REGISTRATION 

18. Application for registration. 

19. Withdrawal of acceptance. 

20. Advertisement of application. 

21. Opposition to registration. 

22. Correction and amendment. 

23. Registration. 

24. Jointly owned trade marks. 

25. Duration, renewal, removal and restoration of registration. 

26. Effect of removal from register for failure to pay fee for renewal. 

 

CHAPTER IV 

EFFECT OF REGISTRATION 

27. No action for infringement of unregistered trade mark. 

28. Rights conferred by registration. 

29. Infringement of registered trade marks. 

30. Limits on effect of registered trade mark. 

31. Registration to be prima facie evidence of validity. 

32. Protection of registration on ground of distinctiveness in certain cases. 

33. Effect of acquiescence. 

 



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SECTIONS 

34. Saving for vested rights. 

35. Saving for use of name, address or description of goods or services. 

36. Saving for words used as name or description of an article or substance or service. 

 

CHAPTER IVA 

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL 

REGISTRATION UNDER THE MADRID PROTOCOL 

36A. Application of Act in case of international registration under Madrid Protocol. 

36B. Definitions. 

36C. Trade Marks Registry to deal with international applications. 

36D. International application originating from India. 

36E. International registrations where India has been designated. 

36F. Effects of international registration. 

36G. Duration and renewal of international registration. 

 

CHAPTER V 

ASSIGNMENT AND TRANSMISSION 

37. Power of registered proprietor to assign and give receipts. 

38. Assignability and transmissibility of registered trade marks. 

39. Assignability and transmissibility of unregistered trade marks. 

40. Restriction on assignment or transmission where multiple exclusive rights would be created. 

41. Restriction on assignment or transmission when exclusive rights would be created in different 

parts of India. 

42. Conditions for assignment otherwise than in connection with the goodwill of a business. 

43. Assignability and transmissibility of certification trade marks. 

44. Assignability and transmissibility of associated trade marks. 

45. Registration of assignments and transmissions. 

 

CHAPTER VI 

USE OF TRADE MARKS AND REGISTERED USERS 

46. Proposed use of trade mark by company to be formed, etc.  

47. Removal from register and imposition of limitations on ground of non-use.  

48. Registered users.  

49. Registration as registered user.  

50. Power of Registrar for variation or cancellation of registration as registered user.  

51. Power of Registrar to call for information relating to agreement in respect of registered users.  

52. Right of registered user to take proceedings against infringement.  

53. No right of permitted user to take proceeding against infringement.  

54. Registered user not to have right of assignment or transmission. 

55. Use of one of associated or substantially identical trade marks equivalent to use of another.  

56. Use of trade mark for export trade and use when form of trade connection changes.  

 

CHAPTER VII 

RECTIFICATION AND CORRECTION OF THE REGISTER 

57. Power to cancel or vary registration and to rectify the register. 

58. Correction of register. 

59. Alteration of registered trade marks. 

60. Adaptation of entries in register to amended or substituted classification of goods or services. 

 



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CHAPTER VIII 

COLLECTIVE MARKS 

SECTIONS 

61. Special provisions for collective marks. 

62. Collective mark not to be misleading as to character or significance. 

63. Application to be accompanied by regulations governing use of collective marks. 

64. Acceptance of application and regulations by Registrar. 

65. Regulations to be open to inspection. 

66. Amendment of regulations. 

67. Infringement proceedings by registered proprietor of collective mark. 

68. Additional grounds for removal of registration of collective mark. 

 

CHAPTER IX 

CERTIFICATION TRADE MARKS 

69. Certain provisions of this Act not applicable to certification trade marks. 

70. Registration of certification trade marks. 

71. Applications for registration of certification trade marks. 

72. Consideration of application for registration by Registrar. 

73. Opposition to registration of certification trade marks. 

74. Filing of regulations governing use of a certification trade mark. 

75. Infringement of certification trade marks. 

76. Acts not constituting infringement of certification trade marks. 

77. Cancellation or varying of registration of certification trade marks. 

78. Rights conferred by registration of certification trade marks. 

 

[Omitted] 

79. [Omitted.] 

80. [Omitted.] 

81. [Omitted.] 

82. [Omitted.] 

 

CHAPTER XI 

APPEALS 

83. [Omitted.] 

84. [Omitted.] 

85. [Omitted.] 

86. [Omitted.] 

87. [Omitted.] 

88. [Omitted.] 

89. [Omitted.] 

89A. [Omitted.] 

90. [Omitted.] 

91. Appeals to High Court. 

92. [Omitted.] 

93. [Omitted.] 

 

 



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SECTIONS 

94. Bar to appear  before Registrar. 

95. [Omitted.] 

96. [Omitted.] 

97. Procedure for application for rectification, etc., before High Court. 

98. Appearance of Registrar in legal proceedings. 

99. [Omitted.] 

100. [Omitted.] 

CHAPTER XII 

OFFENCES, PENALTIES AND PROCEDURE 

101. Meaning of applying trade marks and trade descriptions. 

102. Falsifying and falsely applying trade marks. 

103. Penalty for applying false trade marks, trade descriptions, etc. 

104. Penalty for selling goods or providing services to which false trade mark or false trade 

description is applied. 

105. Enhanced penalty on second or subsequent conviction. 

106. [Omitted.] 

107. Penalty for falsely representing a trade mark as registered. 

108. [Omitted.] 

109. [Omitted.] 

110. No offence in certain cases. 

111. Forfeiture of goods. 

112. Exemption of certain persons employed in ordinary course of business. 

112A. Adjudication of penalties. 

112B. Appeal. 

113. Procedure where invalidity of registration is pleaded by the accused. 

114. Offences by companies. 

115. Cognizance of certain offences and the powers of police officer for search and seizure. 

116. Evidence of origin of goods imported by sea. 

117. Costs of defence or prosecution. 

118. Limitation of prosecution. 

119. Information as to commission of offence. 

120. Punishment of abetment in India of acts done out of India. 

121. Instructions of Central Government as to permissible variation to be observed by criminal 

courts. 

CHAPTER XIII 

MISCELLANEOUS 

122. Protection of action taken in good faith. 

123. Certain persons to be public servants. 

124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. 

125. Application for rectification of register to be made to High Court in certain cases. 

126. Implied warranty on sale of marked goods. 

127. Powers of Registrar. 

128. Exercise of discretionary power by Registrar. 

129. Evidence before Registrar. 

130. Death of party to a proceeding. 

131. Extension of time. 

132. Abandonment. 

133. Preliminary advice by the Registrar as to distinctiveness. 

134. Suit for infringement, etc., to be instituted before District Court. 

135. Relief in suits for infringement or for passing off. 

136. Registered user to be impleaded in certain proceedings. 



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SECTIONS 

137. Evidence of entries in register, etc., and things done by the Registrar. 

138. Registrar and other officers not compellable to produce register, etc. 

139. Power to require goods to show indication of origin. 

140. Power to require information of imported goods bearing false trade marks. 

141. Certificate of validity. 

142. Groundless threats of legal proceedings. 

143. Address for service. 

144. Trade usages, etc., to be taken into consideration. 

145. Agents. 

146. Marks registered by an agent or representative without authority. 

147. Indexes. 

148. Documents open to public inspection. 

149. Reports of Registrar to be placed before Parliament. 

150. Fees and surcharge. 

151. Savings in respect of certain matters in Chapter XII. 

152. Declaration as to ownership of trade mark not registrable under the Registration Act, 1908. 

153. Government to be bound. 

154. Special provisions relating to applications for registration from citizens of convention countries. 

155. Provision as to reciprocity. 

156. Power of Central Government to remove difficulties. 

157. Power to make rules. 

158. Amendments. 

159. Repeal and savings. 

THE SCHEDULE. 

  



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THE TRADE MARKS ACT, 1999 

ACT NO. 47 OF 1999 

[30th December, 1999.] 

An Act 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. 

BE it enacted by Parliament in the Fiftieth Year of the Republic of India as follows:— 

CHAPTER I 

PRELIMINARY  

1. Short title, extent and commencement.—(1) This Act may be called the Trade Marks Act, 1999. 

(2) It extends to the whole of India. 

(3) It shall come into force on such date1 as the Central Government may, by notification in the 

Official Gazette, appoint: 

Provided that different dates may be appointed for different provisions of this Act, and any reference 

in any such provision to the commencement of this Act shall be construed as a reference to the coming 

into force of that provision. 

2. Definitions and interpretation.—(1) In this Act, unless the context otherwise requires,— 

2*   *   *  *  * 

(b) “assignment” means an assignment in writing by act of the parties concerned; 

(c) “associated trade marks” means trade marks deemed to be, or required to be, registered as 

associated trade marks under this Act; 

2*   *   *  *  * 

(e) “certification trade mark” means a mark capable of distinguishing the goods or services in 

connection with which it is used in the course of trade which are certified by the proprietor of the 

mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, 

accuracy or other characteristics from goods or services not so certified and registrable as such under 

Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade 

mark, of that person; 

2*   *   *  *   * 

(g) “collective mark” means a trade mark distinguishing the goods or services of members of an 

association of persons (not being a partnership within the meaning of the Indian Partnership          

Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others; 

(h) “deceptively similar”.—A mark shall be deemed to be deceptively similar to another mark if 

it so nearly resembles that other mark as to be likely to deceive or cause confusion; 

(i) “false trade description” means— 

(I) a trade description which is untrue or misleading in a material respect as regards the goods 

or services to which it is applied; or 

(II) any alteration of a trade description as regards the goods or services to which it is applied, 

whether by way of addition, effacement or otherwise, where that alteration makes the description 

untrue or misleading in a material respect; or 

 
1. 15th September, 2003, vide notification no. S.O. 1048(E), dated 15th September, 2003, see Gazette of India, Extraordinary, 

Part II, sec. 3(ii). 

2. Cls. (a), (d) and (f) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 



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(III) any trade description which denotes or implies that there are contained, as regards the 

goods to which it is applied, more yards or metres than there are contained therein standard yards 

or standard metres; or 

(IV) any marks or arrangement or combination thereof when applied— 

(a) to goods in such a manner as to be likely to lead persons to believe that the goods are 

the manufacture or merchandise of some person other than the person whose merchandise or 

manufacture they really are; 

(b) in relation to services in such a manner as to be likely to lead persons to believe that 

the services are provided or rendered by some person other than the person whose services 

they really are; or 

(V) any false name or initials of a person applied to goods or services in such manner as if 

such name or initials were a trade description in any case where the name or initials— 

(a) is or are not a trade mark or part of a trade mark; and 

(b) is or are identical with or deceptively similar to the name or initials of a person 

carrying on business in connection with goods or services of the same description or both and 

who has not authorised the use of such name or initials; and 

(c) is or are either the name or initials of a fictitious person or some person not bona fide 

carrying on business in connection with such goods or services, 

and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such 

trade description being a false trade description within the meaning of this Act; 

(j) “goods” means anything which is the subject of trade or manufacture; 

1*  *  *  *  * 

(l) “limitations” (with its grammatical variations) means any limitation of the exclusive right to 

the use of a trade mark given by the registration of a person as proprietor thereof, including 

limitations of that right as to mode or area of use within India or outside India; 

(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, 

numeral, shape of goods, packaging or combination of colours or any combination thereof; 

1*  *  *  *  * 

(o) “name” includes any abbreviation of a name; 

(p) “notify” means to notify in the Trade Mark Journal published by the Registrar; 

(q) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, 

bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork; 

(r) “permitted use”, in relation to a registered trade mark, means the use of trade mark— 

(i) by a registered user of the trade mark in relation to goods or services— 

(a) with which he is connected in the course of trade; and 

(b) in respect of which the trade mark remains registered for the time being; and 

(c) for which he is registered as registered user; and 

(d) which complies with any conditions or limitations to which the registration of 

registered user is subject; or 

(ii) by a person other than the registered proprietor and registered user in relation to goods or 

services— 

(a) with which he is connected in the course of trade; and 

 
1. Cls. (k) and (n) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 



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(b) in respect of which the trade mark remains registered for the time being; and 

(c) by consent of such registered proprietor in a written agreement; and 

(d) which complies with any conditions or limitations to which such user is subject and to 

which the registration of the trade mark is subject; 

1[(s) “prescribed” means,— 

(i) in relation to proceedings before a High Court, prescribed by rules made by the High 

Court; and 

(ii) in other cases, prescribed by rules made under this Act;] 

(t) “register” means the Register of Trade Marks referred to in sub-section (1) of section 6; 

(u) “registered” (with its grammatical variations) means registered under this Act; 

(v) “registered proprietor”, in relation to a trade mark, means the person for the time being 

entered in the register as proprietor of the trade mark; 

(w) “registered trade mark” means a trade mark which is actually on the register and remaining in 

force; 

(x) “registered user” means a person who is for the time being registered as such under        

section 49; 

(y) “Registrar” means the Registrar of Trade Marks referred to in section 3; 

(z) “Service” means service of any description which is made available to potential users and 

includes the provision of services in connection with business of any industrial or commercial matters 

such as banking, communication, education, financing, insurance, chit funds, real estate, transport, 

storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, 

entertainment, amusement, construction, repair, conveying of news or information and advertising; 

(za) “trade description” means any description, statement or other indication, direct or indirect,— 

(i) as to the number, quantity, measure, gauge or weight of any goods; or 

(ii) as to the standard of quality of any goods or services according to a classification 

commonly used or recognised in the trade; or 

(iii) as to fitness for the purpose, strength, performance or behaviour of any goods, being 

“drug” as defined in the Drugs and Cosmetics Act, 1940 (23 of 1940), or “food” as defined in the 

Prevention of Food Adulteration Act, 1954 (37 of 1954); or 

(iv) as to the place or country in which or the time at which any goods or services were made, 

produced or provided, as the case may be; or 

(v) as to the name and address or other indication of the identity of the manufacturer or of the 

person providing the services or of the person for whom the goods are manufactured or services 

are provided; or 

(vi) as to the mode of manufacture or producing any goods or providing services; or 

(vii) as to the material of which any goods are composed; or 

(viii) as to any goods being the subject of an existing patent, privilege or copyright, 

and includes— 

(a) any description as to the use of any mark which according to the custom of the trade is 

commonly taken to be an indication of any of the above matters; 

(b) the description as to any imported goods contained in any bill of entry or shipping bill; 

 
1. Subs. by Act 33 of 2021, s. 21, for cl. (s) (w.e.f. 4-4-2021). 



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(c) any other description which is likely to be misunderstood or mistaken for all or any of the 

said matters; 

(zb) “trade mark” means a mark capable of being represented graphically and which is capable of 

distinguishing the goods or services of one person from those of others and may include shape of 

goods, their packaging and combination of colours; and— 

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used 

in relation to goods or services for the purpose of indicating or so as to indicate a connection in 

the course of trade between the goods or services, as the case may be, and some person having the 

right as proprietor to use the mark; and 

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation 

to goods or services for the purpose of indicating or so as to indicate a connection in the course of 

trade between the goods or services, as the case may be, and some person having the right, either 

as proprietor or by way of permitted user, to use the mark whether with or without any indication 

of the identity of that person, and includes a certification trade mark or collective mark; 

(zc) “transmission” means transmission by operation of law, devolution on the personal 

representative of a deceased person and any other mode of transfer, not being assignment; 

(zd) “Technical Member” means a Member who is not a Judicial Member; 

1*   *  *   *  * 

(zg) “well known trade mark”, in relation to any goods or services, means a mark which has 

become so to the substantial segment of the public which uses such goods or receives such services 

that the use of such mark in relation to other goods or services would be likely to be taken as 

indicating a connection in the course of trade or rendering of services between those goods or services 

and a person using the mark in relation to the first-mentioned goods or services. 

(2) In this Act, unless the context otherwise requires, any reference— 

(a) to “trade mark” shall include reference to “collective mark” or “certification trade mark”; 

(b) to the use of a mark shall be construed as a reference to the use of printed or other visual 

representation of the mark; 

(c) to the use of a mark,— 

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in 

any physical or in any other relation whatsoever, to such goods; 

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part 

of any statement about the availability, provision or performance of such services; 

(d) to the Registrar shall be construed as including a reference to any officer when discharging the 

functions of the Registrar in pursuance of sub-section (2) of section 3; 

(e) to the Trade Marks Registry shall be construed as including a reference to any office of the 

Trade Marks Registry. 

(3) For the purposes of this Act, goods and services are associated with each other if it is likely that 

those goods might be sold or otherwise traded in and those services might be provided by the same 

business and so with descriptions of goods and descriptions of services. 

(4) For the purposes of this Act, “existing registered trade mark” means a trade mark registered under 

the Trade and Merchandise Marks Act, 1958 (43 of 1958) immediately before the commencement of this 

Act. 

  

 
1. Cls. (ze) and (zf) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 



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CHAPTER II 

THE REGISTER AND CONDITIONS FOR REGISTRATION 

3. Appointment of Registrar and other officers.—(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. 

4. Power of Registrar to withdraw or transfer cases, etc.—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. 

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

(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. 

6. The Register of Trade Marks.—(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. 

7. Classification of goods and services.—(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. 



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8. Publication of alphabetical index.—(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. 

9. Absolute grounds for refusal of registration.—(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. 

10. Limitation as to colour.—(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 1[Registrar or the High Court, 

as the case may be] 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. 

11. Relative grounds for refusal of registration.—(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. 

 
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 



14 
 

(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— 

1[(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or 

an international registration referred to in section 36E 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; 

(iv) the duration and geographical area of any registration of or any application for registration of 

that trade mark under this Act to the extent that 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; 

 
1. Subs. by Act 40 of 2010, s. 2, for cl. (a) (w.e.f. 8-7-2013). 



15 
 

(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. 

12. Registration in the case of honest concurrent use, etc.—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. 

13. Prohibition of registration of names of chemical elements or international non-proprietary 

names.—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. 

14. Use of names and representations of living persons or persons recently dead.—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 



16 
 

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. 

15. Registration of parts of trade marks and of trade marks as a series.—(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. 

16. Registration of trade marks as associated trade marks.—(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 section 15, 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. 

17. Effect of registration of parts of a mark.—(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 



17 
 

(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. 

 

CHAPTER III 

PROCEDURE FOR AND DURATION OF REGISTRATION 

18. Application for registration.—(1) Any person claiming to be the proprietor of a trade mark used 

or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in 

the prescribed manner for the registration of his trade mark. 

(2) A single application may be made for registration of a trade mark for different classes of goods 

and services and fee payable therefor shall be in respect of each such class of goods or services. 

(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry 

within whose territorial limits the principal place of business in India of the applicant or in the case of 

joint applicants the principal place of business in India of the applicant whose name is first mentioned in 

the application as having a place of business in India, is situate: 

Provided that where the applicant or any of the joint applicants does not carry on business in India, 

the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the 

place mentioned in the address for service in India as disclosed in the application, is situate. 

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it 

absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may 

think fit. 

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in 

writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at 

his decision. 

19. Withdrawal of acceptance.—Where, after the acceptance of an application for registration of a 

trade mark but before its registration, the Registrar is satisfied— 

(a) that the application has been accepted in error; or 

(b) that in the circumstances of the case the trade mark should not be registered or should be 

registered subject to conditions or limitations or to conditions additional to or different from the 

conditions or limitations subject to which the application has been accepted, 

the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if 

the application had not been accepted. 

20. Advertisement of application.—(1) When an application for registration of a trade mark has 

been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as 

may be after acceptance, cause the application as accepted together with the conditions or limitations, if 

any, subject to which it has been accepted, to be advertised in the prescribed manner: 

Provided that the Registrar may cause the application to be advertised before acceptance if it relates 

to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in 

any other case where it appears to him that it is expedient by reason of any exceptional circumstances so 

to do. 

(2) Where— 

(a) an application has been advertised before acceptance under sub-section (1); or 

(b) after advertisement of an application,— 

(i) an error in the application has been corrected; or 



18 
 

(ii) the application has been permitted to be amended under section 22, 

the Registrar may in his discretion cause the application to be advertised again or in any case falling under 

clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner 

the correction or amendment made in the application. 

21. Opposition to registration.—1[(1) Any person may, within four months from the date of the 

advertisement or re-advertisement of an application for registration, give notice in writing in the 

prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the 

registration.] 

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two 

months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send 

to the Registrar in the prescribed manner a counterstatement of the grounds on which he relies for his 

application, and if he does not do so he shall be deemed to have abandoned his application. 

(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the 

person giving notice of opposition. 

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the 

prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an 

opportunity to them to be heard, if they so desire. 

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide 

whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may 

take into account a ground of objection whether relied upon by the opponent or not. 

(6) Where a person giving notice of opposition or an applicant sending a counter-statement after 

receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require 

him to give security for the costs of proceedings before him, and in default of such security being duly 

given, may treat the opposition or application, as the case may be, as abandoned. 

(7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of 

opposition or a counter-statement on such terms as he thinks just. 

22. Correction and amendment.—The Registrar may, on such terms as he thinks just, at any time, 

whether before or after acceptance of an application for registration under section 18, permit the 

correction of any error in or in connection with the application or permit an amendment of the 

application: 

Provided that if an amendment is made to a single application referred to in sub-section (2) of section 

18 involving division of such application into two or more applications, the date of making of the initial 

application shall be deemed to be the date of making of the divided applications so divided. 

23. Registration.—(1) Subject to the provisions of section 19, when an application for registration of 

a trade mark has been accepted and either— 

(a) the application has not been opposed and the time for notice of opposition has expired; or 

(b) the application has been opposed and the opposition has been decided in favour of the 

applicant, 

the Registrar shall, unless the Central Government otherwise directs, register the said trade mark 2[within 

eighteen months of the filing of the application] and the trade mark when registered shall be registered as 

of the date of the making of the said application and that date shall, subject to the provisions of         

section 154, be deemed to be the date of registration. 

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the 

prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry. 

(3) Where registration of a trade mark is not completed within twelve months from the date of the 

application by reason of default on the part of the applicant, the Registrar may, after giving notice to the 

 
1. Subs. by Act 40 of 2010, s. 3, for sub-section (1) (w.e.f. 8-7-2013). 
2. Ins. by s. 4, ibid. (w.e.f. 8-7-2013). 



19 
 

applicant in the prescribed manner, treat the application as abandoned unless it is completed within the 

time specified in that behalf in the notice. 

(4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a 

clerical error or an obvious mistake. 

24. Jointly owned trade marks.—(1) Save as provided in sub-section (2), nothing in this Act shall 

authorise the registration of two or more persons who use a trade mark independently, or propose so as to 

use it, as joint proprietors thereof. 

(2) Where the relations between two or more persons interested in a trade mark are such that no one 

of them is entitled as between himself and the other or others of them to use it except— 

(a) on behalf of both or all of them; or 

(b) in relation to an article or service with which both or all of them are connected in the course of 

trade, 

those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in 

relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested 

in a single person. 

25. Duration, renewal, removal and restoration of registration.—(1) The registration of a trade 

mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from 

time to time in accordance with the provisions of this section. 

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the 

prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew 

the registration of the trade mark for a period of ten years from the date of expiration of the original 

registration or of the last renewal of registration, as the case may be (which date is in this section referred 

to as the expiration of the last registration). 

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar 

shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the 

conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, 

and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied 

with the Registrar may remove the trade mark from the register: 

Provided that the Registrar shall not remove the trade mark from the register if an application is made 

in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration 

of the last registration of the trade mark and shall renew the registration of the trade mark for a period of 

ten years under sub-section (2). 

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the 

Registrar shall, after six months and within one year from the expiration of the last registration of the 

trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if 

satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade 

mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of 

ten years from the expiration of the last registration. 

26. Effect of removal from register for failure to pay fee for renewal.—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 1[Registrar or the High Court, as 

the case may be] 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. 

 
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 



20 
 

CHAPTER IV 

EFFECT OF REGISTRATION 

27. No action for infringement of unregistered trade mark.—(1) No person shall be entitled to 

institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade 

mark. 

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off 

goods or services as the goods of another person or as services provided by another person, or the 

remedies in respect thereof. 

28. Rights conferred by registration.—(1) Subject to the other provisions of this Act, the 

registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive 

right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is 

registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this 

Act. 

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any 

conditions and limitations to which the registration is subject. 

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or 

nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so 

far as their respective rights are subject to any conditions or limitations entered on the register) be deemed 

to have been acquired by any one of those persons as against any other of those persons merely by 

registration of the trade marks but each of those persons has otherwise the same rights as against other 

persons (not being registered users using by way of permitted use) as he would have if he were the sole 

registered proprietor. 

29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person 

who, not being a registered proprietor or a person using by way of permitted use, uses in the course of 

trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or 

services in respect of which the trade mark is registered and in such manner as to render the use of the 

mark likely to be taken as being used as a trade mark. 

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person 

using by way of permitted use, uses in the course of trade, a mark which because of— 

(a) its identity with the registered trade mark and the similarity of the goods or services covered 

by such registered trade mark; or 

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services 

covered by such registered trade mark; or 

(c) its identity with the registered trade mark and the identity of the goods or services covered by 

such registered trade mark, 

is likely to cause confusion on the part of the public, or which is likely to have an association with the 

registered trade mark. 

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to 

cause confusion on the part of the public. 

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person 

using by way of permitted use, uses in the course of trade, a mark which— 

(a) is identical with or similar to the registered trade mark; and 

(b) is used in relation to goods or services which are not similar to those for which the trade mark 

is registered; and 

(c) the registered trade mark has a reputation in India and the use of the mark without due cause 

takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade 

mark. 



21 
 

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade 

name or part of his trade name, or name of his business concern or part of the name, of his business 

concern dealing in goods or services in respect of which the trade mark is registered. 

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he— 

(a) affixes it to goods or the packaging thereof; 

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes 

under the registered trade mark, or offers or supplies services under the registered trade mark; 

(c) imports or exports goods under the mark; or 

(d) uses the registered trade mark on business papers or in advertising. 

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a 

material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods 

or services, provided such person, when he applied the mark, knew or had reason to believe that the 

application of the mark was not duly authorised by the proprietor or a licensee. 

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising— 

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial 

matters; or 

(b) is detrimental to its distinctive character; or 

(c) is against the reputation of the trade mark. 

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade 

mark may be infringed by the spoken use of those words as well as by their visual representation and 

reference in this section to the use of a mark shall be construed accordingly. 

30. Limits on effect of registered trade mark.—(1) Nothing in section 29 shall be construed as 

preventing the use of a registered trade mark by any person for the purposes of identifying goods or 

services as those of the proprietor provided the use— 

(a) is in accordance with honest practices in industrial or commercial matters, and 

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or 

repute of the trade mark. 

(2) A registered trade mark is not infringed where— 

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, 

value, geographical origin, the time of production of goods or of rendering of services or other 

characteristics of goods or services; 

(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in 

any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods 

to be exported to any market or in relation to services for use or available for acceptance in any place 

or country outside India or in any other circumstances, to which, having regard to those conditions or 

limitations, the registration does not extend; 

(c) the use by a person of a trade mark— 

(i) in relation to goods connected in the course of trade with the proprietor or a registered user 

of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor 

or the registered user conforming to the permitted use has applied the trade mark and has not 

subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the 

use of the trade mark; or 

(ii) in relation to services to which the proprietor of such mark or of a registered user 

conforming to the permitted use has applied the mark, where the purpose and effect of the use of 

the mark is to indicate, in accordance with the fact, that those services have been performed by 

the proprietor or a registered user of the mark; 



22 
 

(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be 

accessory to, other goods or services in relation to which the trade mark has been used without 

infringement of the right given by registration under this Act or might for the time being be so used, if 

the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so 

adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise 

than in accordance with the fact, a connection in the course of trade between any person and the 

goods or services, as the case may be; 

(e) the use of a registered trade mark, being one of two or more trade marks registered under this 

Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade 

mark given by registration under this Act. 

(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the 

goods in the market or otherwise dealing in those goods by that person or by a person claiming under or 

through him is not infringement of a trade mark by reason only of— 

(a) the registered trade mark having been assigned by the registered proprietor to some other 

person, after the acquisition of those goods; or 

(b) the goods having been put on the market under the registered trade mark by the proprietor or 

with his consent. 

(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose 

further dealings in the goods in particular, where the condition of the goods, has been changed or 

impaired after they have been put on the market. 

31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a 

trade mark registered under this Act (including applications under section 57), the original registration of 

the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie 

evidence of the validity thereof. 

(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the 

ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness 

and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade 

mark had been so used by the registered proprietor or his predecessor in title as to have become 

distinctive at the date of registration. 

32. Protection of registration on ground of distinctiveness in certain cases.—Where a trade mark 

is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of 

the use which has been made of it, it has after registration and before commencement of any legal 

proceedings challenging the validity of such registration, acquired a distinctive character in relation to the 

goods or services for which it is registered. 

33. Effect of acquiescence.—(1) Where the proprietor of an earlier trade mark has acquiesced for a 

continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no 

longer be entitled on the basis of that earlier trade mark— 

(a) to apply for a declaration that the registration of the later trade mark is invalid, or 

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to 

which it has been so used, 

unless the registration of the later trade mark was not applied in good faith. 

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the 

use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding 

that the earlier trade mark may no longer be invoked against his later trade mark. 

34. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of 

registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or 

nearly resembling it in relation to goods or services in relation to which that person or a predecessor in 

title of his has continuously used that trade mark from a date prior— 



23 
 

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the 

proprietor or a predecessor in title of his; or 

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or 

services in the name of the proprietor of a predecessor in title of his; 

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the 

second mentioned trade mark by reason only of the registration of the first-mentioned trade mark. 

35. Saving for use of name, address or description of goods or services.—Nothing in this Act 

shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide 

use by a person of his own name or that of his place of business, or of the name, or of the name of the 

place of business, of any of his predecessors in business, or the use by any person of any bona fide 

description of the character or quality of his goods or services. 

36. Saving for words used as name or description of an article or substance or service.—(1) The 

registration of a trade mark shall not be deemed to have become invalid by reason only of any use after 

the date of the registration of any word or words which the trade mark contains or of which it consists as 

the name or description of an article or substance or service: 

Provided that, if it is proved either— 

(a) that there is a well known and established use of the said word as the name or description of 

the article or substance or service by a person or persons carrying on trade therein, not being use in 

relation to goods or services connected in the course of trade with the proprietor or a registered user 

of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified 

by the proprietor; or 

(b) that the article or substance was formerly manufactured under a patent that a period of two 

years or more after the cesser of the patent has elapsed and that the said word is the only practicable 

name or description of the article or substance, 

the provisions of sub-section (2) shall apply. 

(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-section (1) are proved 

with respect to any words, then,— 

(a) for the purposes of any proceedings under section 57 if the trade mark consists solely of such 

words, the registration of the trade mark, so far as regards registration in respect of the article or 

substance in question or of any goods of the same description, or of the services or of any services of 

the same description, as the case requires, shall be deemed to be an entry wrongly remaining on the 

register; 

(b) for the purposes of any other legal proceedings relating to the trade mark,— 

(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or 

any other law to the use of the trade mark; or 

(ii) if the trade mark contains such words and other matter, all such right of the proprietor to 

the use of such words, 

in relation to the article or substance or to any goods of the same description, or to the service or to any 

services of the same description, as the case requires, shall be deemed to have ceased on the date on 

which the use mentioned in clause (a) of the proviso to sub-section (1) first became well known and 

established or at the expiration of the period of two years mentioned in clause (b) of the said proviso. 
 

1[CHAPTER IVA 

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL 

REGISTRATION UNDER THE MADRID PROTOCOL 

36A. Application of Act in case of international registration under Madrid Protocol.—The 

provisions of this Chapter shall apply to international applications and international registrations under 

the Madrid Protocol. 

 
1. Ins. by Act 40 of 2010, s. 5 (w.e.f. 8-7-2013). 



24 
 

36B. Definitions.—In this Chapter, unless the context otherwise requires,— 

(a) “application”, in relation to a Contracting State or a Contracting Organisation, means an 

application made by a person who is a citizen of, or is domiciled in, or has a real and effective 

industrial or commercial establishment in, that Contracting State or a State which is a member of that 

Contracting Organisation, as the case may be. 

Explanation.—For the purposes of this clause, “real and effective industrial or commercial 

establishment” means and includes any establishment where some bona fide industrial or commercial 

activity takes place and need not necessarily be the principal place of business; 

(b) “basic application” means an application for the registration of a trade mark filed under 

section 18 and which is used as a basis for applying for an international registration; 

(c) “basic registration” means the registration of a trade mark under section 23 and which is used 

as a basis for applying for an international registration; 

(d) “Common Regulations” means the Regulations concerning the implementation of the Madrid 

Protocol; 

(e) “Contracting Organisation” means a Contracting Party that is an intergovernmental 

organisation; 

(f) “Contracting Party” means a Contracting State or Contracting Organisation party to the 

Madrid Protocol; 

(g) “Contracting State” means a country party to the Madrid Protocol; 

(h) “international application” means an application for international registration or for extension 

of the protection resulting from an international registration to any Contracting Party made under the 

Madrid Protocol; 

(i) “International Bureau” means the International Bureau of the World Intellectual Property 

Organisation; 

(j) “international registration” means the registration of a trade mark in the register of the 

International Bureau effected under the Madrid Protocol; 

(k) “Madrid Agreement” means the Madrid Agreement Concerning the International Registration 

of Marks adopted at Madrid on the 14th day of April, 1891, as subsequently revised and amended; 

(l) “Madrid Protocol” means the Protocol relating to the Madrid Agreement Concerning the 

International Registration of Marks adopted at Madrid on the 27th day of June, 1989, as amended 

from time to time. 

36C. Trade Marks Registry to deal with international applications.—Notwithstanding anything 

contained in sub-section (3) of section 5, an international application shall be dealt with by the head office 

of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by 

notification in the Official Gazette, specify. 

36D. International application originating from India.—(1) Where an application for the 

registration of a trade mark has been made under section 18 or a trade mark has been registered under 

section 23, the applicant or the registered proprietor may make an international application on the form 

prescribed by the Common Regulations for international registration of that trade mark. 

(2) A person holding an international registration may make an international application on the form 

prescribed by the Common Regulations for extension of the protection resulting from such registration to 

any other Contracting Party. 

(3) An international application under sub-section (1) or sub-section (2) shall designate the 

Contracting Parties where the protection resulting from the international registration is required. 

(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the 

international application correspond to the particulars appearing, at the time of the certification, in the 

application under section 18 or the registration under section 23, and shall indicate the date and number of 

that application or the date and number of that registration as well as the date and number of the 



25 
 

application from which that registration resulted, as the case may be, and shall within the prescribed 

period, forward the international application to the International Bureau for registration, also indicating 

the date of the international application. 

(5) Where at any time before the expiry of a period of five years of an international registration, 

whether such registration has been transferred to another person or not, the application under section 18 

or the registration under section 23, as the case may be, has been withdrawn or cancelled or has expired or 

has been finally refused in respect of all or some of the goods or services listed in the international 

registration, the protection resulting from such international registration shall cease to have effect: 

Provided that where an appeal is made against the decision of registration and an action requesting for 

withdrawal of application or an opposition to the application has been initiated before the expiry of the 

period of five years of an international registration, any final decision resulting into withdrawal, 

cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of 

the international registration. 

(6) The Registrar shall, during the period of five years beginning with the date of international 

registration, transmit to the International Bureau every information referred to in sub-section (5). 

(7) The Registrar shall notify the International Bureau the cancellation to be effected to an 

international registration keeping in view the current status of the basic application or the basic 

registration, as the case may be. 

36E. International registrations where India has been designated.—(1) The Registrar shall, after 

receipt of an advice from the International Bureau about any international registration where India has 

been designated, keep a record of the particulars of that international registration in the prescribed 

manner. 

(2) Where, after recording the particulars of any international registration referred to in                  

sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark 

in India should not be granted or such protection should be granted subject to conditions or limitations or 

to conditions additional to or different from the conditions or limitations subject to which the international 

registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of 

protection and inform the International Bureau in the prescribed manner within eighteen months from the 

date on which the advice referred to in sub-section (1) was received. 

(3) Where the Registrar finds nothing in the particulars of an international registration to refuse grant 

of protection under sub-section (2), he shall within the prescribed period cause such international 

registration to be advertised in the prescribed manner. 

(4) The provisions of sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in 

relation to an international registration as if such international registration was an application for 

registration of a trade mark under section 18. 

(5) When the protection of an international registration has not been opposed and the time for notice 

of opposition has expired, the Registrar shall within a period of eighteen months of the receipt of advice 

under sub-section (1) notify the International Bureau its acceptance of extension of protection of the trade 

mark under such international registration and, in case the Registrar fails to notify the International 

Bureau, it shall be deemed that the protection has been extended to the trade mark. 

(6) Where a registered proprietor of a trade mark makes an international registration of that trade 

mark and designates India, the international registration from the date of the registration shall be deemed 

to replace the registration held in India without prejudice to any right acquired under such previously held 

registration and the Registrar shall, upon request by the applicant, make necessary entry in the register 

referred to in sub-section (1) of section 6. 

(7) A holder of international registration of a trade mark who designates India and who has not been 

extended protection in India shall have the same remedy which is available to any person making an 

application for the registration of a trade mark under section 18 and which has not resulted in registration 

under section 23. 

(8) Where at any time before the expiry of a period of five years of an international registration, 

whether such registration has been transferred to another person or not, the related basic application or, as 



26 
 

the case may be, the basic registration in a Contracting Party other than India has been withdrawn or 

cancelled or has expired or has been finally refused in respect of all or some of the goods or services 

listed in the international registration, the protection resulting from such international registration in India 

shall cease to have effect. 

36F. Effects of international registration.—(1) From the date of the international registration of a 

trade mark where India has been designated or the date of the recording in the register of the International 

Bureau about the extension of the protection resulting from an international registration of a trade mark to 

India, the protection of the trade mark in India shall be the same as if the trade mark had been registered 

in India. 

(2) The indication of classes of goods and services given by the applicant shall not bind the Registrar 

with regard to the determination of the scope of the protection of the trade mark. 

36G. Duration and renewal of international registration.—(1) The international registration of a 

trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period 

of ten years from the expiry of the preceding period. 

(2) Subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be 

allowed for renewal of the international registration.] 

CHAPTER V 

ASSIGNMENT AND TRANSMISSION 

37. Power of registered proprietor to assign and give receipts.—The person for the time being 

entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any 

rights appearing from the register to be vested in any other person, have power to assign the trade mark, 

and to give effectual receipts for any consideration for such assignment. 

38. Assignability and transmissibility of registered trade marks.—Notwithstanding anything in 

any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be 

assignable and transmissible, whether with or without the goodwill of the business concerned and in 

respect either of all the goods or services in respect of which the trade mark is registered or of some only 

of those goods or services. 

39. Assignability and transmissibility of unregistered trade marks.—An unregistered trade mark 

may be assigned or transmitted with or without the goodwill of the business concerned. 

40. Restriction on assignment or transmission where multiple exclusive rights would be 

created.—(1) Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or 

transmissible in a case in which as a result of the assignment or transmission there would in the 

circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the 

persons concerned to the use, in relation to— 

(a) same goods or services; 

(b) same description of goods or services; 

(c) goods or services or description of goods or services which are associated with each other, 

of trade marks nearly resembling each other or of identical trade mark, if having regard to the similarity 

of the goods and services and to the similarity of the trade marks, the use of the trade marks in exercise of 

those rights would be likely to deceive or cause confusion: 

Provided that an assignment or transmission shall not be deemed to be invalid under this sub-section 

if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having 

regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in 

relation to goods to be sold, or otherwise traded in, within India otherwise than for export therefrom, or in 

relation to goods to be exported to the same market outside India or in relation to services for use at any 

place in India or any place outside India  in relation to services available for acceptance in India. 

(2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in 

the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to 



27 
 

him a certificate stating whether, having regard to the similarity of the goods or services and of the trade 

marks referred to in the case, the proposed assignment would or would not be invalid under                 

sub-section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the 

certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under 

sub-section (1) of the assignment in so far as such validity or invalidity depends upon the facts set out in 

the case, but, as regards a certificate in favour of validity, only if application for the registration under 

section 45 of the title of the person becoming entitled is made within six months from the date on which 

the certificate is issued. 

41. Restriction on assignment or transmission when exclusive rights would be created in 

different parts of India.—Notwithstanding anything in sections 38 and 39, a trade mark shall not be 

assignable or transmissible in a case in which as a result of the assignment or transmission there would in 

the circumstances subsist, whether under this Act or any other law— 

(a) an exclusive right in one of the persons concerned, to the use of the trade mark limited to use 

in relation to goods to be sold or otherwise traded in, in any place in India, or in relation to services 

for use, or services available for acceptance in any place in India; and 

(b) an exclusive right in another of these persons concerned, to the use of a trade mark nearly 

resembling the first-mentioned trade mark or of an identical trade mark in relation to— 

(i) the same goods or services; or 

(ii) the same description of goods or services; or 

(iii) services which are associated with those goods or goods of that description or goods 

which are associated with those services or services of that description, 

limited to use in relation to goods to be sold or otherwise traded in, or services for use, or available for 

acceptance, in any other place in India: 

Provided that in any such case, on application in the prescribed manner by the proprietor of a trade 

mark who proposes to assign it, or by a person who claims that a registered trade mark has been 

transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if 

he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would 

not be contrary to the public interest may approve the assignment or transmission, and an assignment or 

transmission so approved shall not, unless it is shown that the approval was obtained by fraud or 

misrepresentation, be deemed to be invalid under this section or section 40 if application for the 

registration under section 45 of the title of the person becoming entitled is made within six months from 

the date on which the approval is given or, in the case of a transmission, was made before that date. 

42. Conditions for assignment otherwise than in connection with the goodwill of a business.—
Where an assignment of a trade mark, whether registered or unregistered is made otherwise than in 

connection with the goodwill of the business in which the mark has been or is used, the assignment shall 

not take effect unless the assignee, not later than the expiration of six months from the date on which the 

assignment is made or within such extended period, if any, not exceeding three months in the aggregate, 

as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the 

assignment, and advertises it in such form and manner and within such period as the Registrar may direct. 

Explanation.—For the purposes of this section, an assignment of a trade mark of the following 

description shall not be deemed to be an assignment made otherwise than in connection with the goodwill 

of the business in which the mark is used, namely:— 

(a) an assignment of a trade mark in respect only of some of the goods or services for which the 

trade mark is registered accompanied by the transfer of the goodwill of the business concerned in 

those goods or services only; or 

(b) an assignment of a trade mark which is used in relation to goods exported from India or in 

relation to services for use outside India if the assignment is accompanied by the transfer of the 

goodwill of the export business only. 



28 
 

43. Assignability and transmissibility of certification trade marks.—A certification trade mark 

shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which  

application shall be made in writing in the prescribed manner. 

44. Assignability and transmissibility of associated trade marks.—Associated trade marks shall 

be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this 

Act, they shall, for all other purposes, be deemed to have been registered as separate trade mark. 

1[45. Registration of assignments and transmissions.—(1) Where a person becomes entitled by 

assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the 

Registrar to register his title, and the 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 assignment or transmission to be entered on 

the register. 

(2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title 

only where there is a reasonable doubt about the veracity of any statement or any document furnished. 

(3) Where the validity of an assignment or transmission is in dispute 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 and in all other cases the Registrar shall dispose of the application 

within the prescribed period. 

(4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be 

ineffective against a person acquiring a conflicting interest in or under the registered trade mark without 

the knowledge of assignment or transmission.] 

CHAPTER VI 

USE OF TRADE MARKS AND REGISTERED USERS 

46. Proposed use of trade mark by company to be formed, etc.—(1) No application for the 

registration of a trade mark in respect of any goods or services shall be refused nor shall permission for 

such registration be withheld, on the ground only that it appears that the applicant does not use or propose 

to use the trade mark if the Registrar is satisfied that— 

(a) a company is about to be formed and registered under the Companies Act, 1956 (1 of 1956) 

and that the applicant intends to assign the trade mark to that company with a view to the use thereof 

in relation to those goods or services by the company, or 

(b) the proprietor intends it to be used by a person, as a registered user after the registration of the 

trade mark. 

(2) The provisions of section 47 shall have effect, in relation to a trade mark registered under the 

powers conferred by this sub-section, as if for the reference, in clause (a) of sub-section (1) of that 

section, to the intention on the part of an applicant for registration that a trade mark should be used by 

him there were substituted a reference to the intention on his part that it should be used by the company or 

registered user concerned. 

(3) The 2[Registrar or the High Court, as the case may be] 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. 

(4) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods or services 

is registered in the name of an applicant who, relies on intention to assign the trade mark to a company, 

then, unless within such period as may be prescribed or within such further period not exceeding six 

months as the Registrar may, on application being made to him in the prescribed manner, allow, the 

company has been registered as the proprietor of the trade mark in respect of those goods or services, the 

registration shall cease to have effect in respect thereof at the expiration of that period and the Registrar 

shall amend the register accordingly. 

 
1. Subs. by Act 40 of 2010, s. 6, for section 45 (w.e.f. 8-7-2013). 
2. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 



29 
 

47. Removal from register and imposition of limitations on ground of non-use.—(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 1[High Court] by any 

person aggrieved on the ground either— 

(a) that the trade mark was registered without any bona fide intention on the part of the applicant 

for registration that it should be used in relation to those goods or services by him or, in a case to 

which the provisions of section 46 apply, by the company concerned or the registered user, as the case 

may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods 

or services by any proprietor thereof for the time being up to a date three months before the date of 

the application; or 

(b) that up to a date three months before the date of the application, a continuous period of five 

years from the date on which the trade mark is actually entered in the register or longer had elapsed 

during which the trade mark was registered and during which there was no bona fide use thereof in 

relation to those goods or services by any proprietor thereof for the time being: 

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 1[Registrar or 

the High Court, as the case may be] is of opinion that he might properly be permitted so to register such a 

trade mark, the 1[Registrar or the High Court, as the case may be] 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) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as 

regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular 

place in India (otherwise than for export from India), or in relation to goods to be exported to a 

particular market outside India; or in relation to services for use or available for acceptance in a 

particular place in India or for use in a particular market outside India; and 

(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 2[High Court] 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. 

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the 

purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special 

circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by 

any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the 

goods or services to which the application relates. 

48. Registered users.—(1) Subject to the provisions of section 49, a person other than the registered 

proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the 

goods or services in respect of which the trade mark is registered. 

 
1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 



30 
 

(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall 

be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any 

other purpose for which such use is material under this Act or any other law. 

49. Registration as registered user.—(1) Where it is proposed that a person should be registered as 

a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly 

apply in writing to the Registrar in the prescribed manner, and every such application shall be 

accompanied by— 

(a) the agreement in writing or a duly authenticated copy thereof, entered into between the 

registered proprietor and the proposed registered user with respect to the permitted use of the trade 

mark; and 

(b) an affidavit made by the registered proprietor or by some person authorised to the satisfication 

of the Registrar to act on his behalf,— 

(i) giving particulars of the relationship, existing or proposed, between the registered 

proprietor and the proposed registered user, including particulars showing the degree of control 

by the proprietor over the permitted use which their relationship will confer and whether it is a 

term of their relationship that the proposed registered user shall be the sole registered user or that 

there shall be any other restriction as to persons for whose registration as registered users 

application may be made; 

(ii) stating the goods or services in respect of which registration is proposed; 

(iii) stating the conditions or restrictions, if any, proposed with respect to the characteristics 

of the goods or services, to the mode or place of permitted use, or to any other matter; 

(iv) stating whether the permitted use is to be for a period or without limit of period, and, if 

for a period, the duration thereof; and 

(c) such further documents or other evidence as may be required by the Registrar or as may be 

prescribed. 

(2) When the requirements of sub-section (1) have been complied with, the Registrar shall register the 

proposed registered user in respect of the goods or services as to which he is so satisfied. 

(3) The Registrar shall issue notice in the prescribed manner of the registration of a person as a 

registered user, to other registered users of the trade mark, if any. 

(4) The Registrar shall, if so requested by the applicant, take steps for securing that information given 

for the purposes of an application under this section (other than matters entered in the register) is not 

disclosed to rivals in trade. 

50. Power of Registrar for variation or cancellation of registration as registered user.—(1) 

Without prejudice to the provisions of section 57, the registration of a person as registered user— 

(a) may be varied by the Registrar as regards the goods or services in respect of which it has 

effect on the application in writing in the prescribed manner of the registered proprietor of the trade 

mark; 

(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of 

the registered proprietor or of the registered user or of any other registered user of the trade mark; 

(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of 

any person on any of the following grounds, namely:— 

(i) that the registered user has used the trade mark otherwise than in accordance with the 

agreement under clause (a) of sub-section (1) of section 49 or in such way as to cause or to be 

likely to cause, deception or confusion; 

(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact 

material to the application for registration which if accurately represented or disclosed would not 

have justified the registration of the registered user; 



31 
 

(iii) that the circumstances have changed since the date of registration in such a way that at 

the date of such application for cancellation they would not have justified registration of the 

registered user; 

(iv) that the registration ought not to have been effected having regard to rights vested in the 

applicant by virtue of a contract in the performance of which he is interested; 

(d) may be cancelled by the Registrar on his own motion or on the application in writing in the 

prescribed manner by any person, on the ground that any stipulation in the agreement between the 

registered proprietor and the registered user regarding the quality of the goods or services in relation 

to which the trade mark is to be used is either not being enforced or is not being complied with; 

(e) may be cancelled by the Registrar in respect of any goods or services in relation to which the 

trade mark is no longer registered. 

(2) The Registrar shall issue notice in the prescribed manner in respect of every application under this 

section to the registered proprietor and each registered user (not being the applicant) of the trade mark. 

(3) The procedure for cancelling a registration shall be such as may be prescribed: 

Provided that before cancelling of registration, the registered proprietor shall be given a reasonable 

opportunity of being heard. 

51. Power of Registrar to call for information relating to agreement in respect of registered 

users.—(1) The Registrar may, at any time during the continuance of the registration of the registered 

user, by notice in writing, require the registered proprietor to confirm to him within one month that the 

agreement filed under clause (a) of sub-section (1) of section 49 continues to be in force. 

(2) If the registered proprietor fails to furnish the confirmation within one month as required under 

sub-section (1), the registered user shall cease to be the registered user on the day immediately after the 

expiry of the said period and the Registrar shall notify the same. 

52. Right of registered user to take proceedings against infringement.—(1) Subject to any 

agreement subsisting between the parties, a registered user may institute proceedings for infringement in 

his own name as if he were the registered proprietor, making the registered proprietor a defendant and the 

rights and obligations of such registered user in such case being concurrent with those of the registered 

proprietor. 

(2) Notwithstanding anything contained in any other law, a registered proprietor so added as 

defendant shall not be liable for any costs unless he enters an appearance and takes part in the 

proceedings. 

53. No right of permitted user to take proceeding against infringement.—A person referred to in 

sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding 

for any infringement. 

54. Registered user not to have right of assignment or transmission.—Nothing in this Act shall 

confer on a registered user of a trade mark any assignable or transmissible right to the use thereof. 

Explanation I.—The right of a registered user of a trade mark shall not be deemed to have been 

assigned or transmitted within the meaning of this section in the following cases, namely:— 

(a) where the registered user being an individual enters into a partnership with any other person 

for carrying on the business concerned; but in any such case the firm may use the trade mark, if 

otherwise in force, only for so long as the registered user is a member of the firm; 

(b) where the registered user being a firm subsequently undergoes a change in its constitution; but 

in any such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long 

as any partner of the original firm at the time of its registration as registered user, continues to be a 

partner of the reconstituted firm. 

Explanation II.—For the purposes of Explanation I, “firm” has the same meaning as in the Indian 

Partnership Act, 1932 (9 of 1932). 

 



32 
 

55. Use of one of associated or substantially identical trade marks equivalent to use of 

another.—(1) Where under the provisions of this Act, use of a registered trade mark is required to be 

proved for any purpose, the 1[Registrar or the High Court, as the case may be] 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 not substantially affecting its identity, as an equivalent for the use required to be proved. 

(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, be deemed to be 

also use of any trade mark being a part thereof and registered in accordance with sub-section (1) of 

section 15 in the name of the same proprietor. 

(3) Notwithstanding anything in section 32, the use of part of the registered trade mark in sub-section 

(2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act. 

56. Use of trade mark for export trade and use when form of trade connection changes.—(1) 

The application in India of trade mark to goods to be exported from India or in relation to services for use 

outside India and any other act done in India in relation to goods to be so exported or services so rendered 

outside India which, if done in relation to goods to be sold or services provided or otherwise traded in 

within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade 

mark in relation to those goods or services for any purpose for which such use is material under this Act 

or any other law. 

(2) The use of a registered trade mark in relation to goods or services between which and the person 

using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to 

cause deception or confusion on the ground only that the mark has been or is used in relation to goods or 

services between which and the said person or a predecessor in title of that person a different form of 

connection in the course of trade subsisted or subsists. 

CHAPTER VII 

RECTIFICATION AND CORRECTION OF THE REGISTER 

57. Power to cancel or vary registration and to rectify the register.—(1) On application made in 

the prescribed manner to the 2[High Court] or to the Registrar by any person aggrieved, the 3[Registrar or 

the High Court, as the case may be,] 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 2[High Court] or to 

the Registrar, and the 3[Registrar or the High Court, as the case may be,] may make such order for 

making, expunging or varying the entry as it may think fit. 

(3) The 3[Registrar or the High Court, as the case may be,] 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 3[Registrar or the High Court, as the case may be,] 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 2[High Court] 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. 

58. Correction of register.—(1) The Registrar may, on application made in the prescribed manner 

by the registered proprietor,— 

(a) correct any error in the name, address or description of the registered proprietor of a trade 

mark, or any other entry relating to the trade mark; 

 
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 

2. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 

3. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021). 



33 
 

(b) enter any change in the name, address or description of the person who is registered as 

proprietor of a trade mark; 

(c) cancel the entry of a trade mark on the register; 

(d) strike out any goods or classes of goods or services from those in respect of which a trade 

mark is registered, 

and may make any consequential amendment or alteration in the certificate of registration, and for that 

purpose, may require the certificate of registration to be produced to him. 

(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade 

mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, 

address or description of the registered user. 

59. Alteration of registered trade marks.—(1) The registered proprietor of a trade mark may apply 

in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not 

substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such 

terms and subject to such limitations as he may think fit. 

(2) The Registrar may cause an application under this section to be advertised in the prescribed 

manner in any case where it appears to him that it is expedient so to do, and where he does so, if within 

the prescribed time from the date of the advertisement any person gives notice to the Registrar in the 

prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so 

required, decide the matter. 

(3) Where leave is granted under this section, the trade mark as altered shall be advertised in the 

prescribed manner, unless the application has already been advertised under sub-section (2). 

60. Adaptation of entries in register to amended or substituted classification of goods or 

services.—(1) The Registrar shall not make any amendment of the register which would have the effect 

of adding any goods or classes of goods or services to those in respect of which a trade mark is registered 

(whether in one or more classes) immediately before the amendment is to be made or of antedating the 

registration of a trade mark in respect of any goods or services: 

Provided that this sub-section, shall not apply when the Registrar is satisfied that compliance 

therewith would involve undue complexity and that the addition or antedating, as the case may be, would 

not affect any substantial quantity of goods or services and would not substantially prejudice the rights of 

any person. 

(2) A proposal so to amend the register shall be brought to the notice of the registered proprietor of 

the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar 

by any person aggrieved on the ground that the proposed amendment contravenes the provisions of     

sub-section (1). 

CHAPTER VIII 

COLLECTIVE MARKS 

61. Special provisions for collective marks.—(1) The provisions of this Act shall apply to collective 

marks subject to the provisions contained in this Chapter. 

(2) In relation to a collective mark the reference in clause (zb) of sub-section (1) of section 2 to 

distinguishing the goods or services of one person from those of others shall be construed as a reference 

to distinguishing the goods or services of members of an association of persons which is the proprietor of 

the mark from those of others. 

62. Collective mark not to be misleading as to character or significance.—A collective mark shall 

not be registered if it is likely to deceive or cause confusion on the part of public in particular if it is likely 

to be taken to be something other than a collective mark, and in such case the Registrar may require that a 

mark in respect of which application is made for registration comprise some indication that it is a 

collective mark. 



34 
 

63. Application to be accompanied by regulations governing use of collective marks.—(1) An 

application for registration of a collective mark shall be accompanied by the regulations governing the use 

of such collective mark. 

(2) The regulations referred to in sub-section (1) shall specify the persons authorised to use the mark, 

the conditions of membership of the association and, the conditions of use of the mark, including any 

sanctions against misuse and such other matters as may be prescribed. 

64. Acceptance of application and regulations by Registrar.—If it appears to the Registrar that the 

requirements for registration are satisfied, he shall accept the application together with the regulations, 

either unconditionally or subject to such conditions including amendments of the said regulations, if any, 

as he may deem fit or refuse to accept it and if accepted shall notify the regulations. 

65. Regulations to be open to inspection.—The regulations referred to in sub-section (1) of     

section 63 shall be open to public inspection in the same way as the register as provided in section 148. 

66. Amendment of regulations.—Any amendment of regulations referred to in sub-section (1) of 

section 63 shall not be effective unless the amended regulations are filed with the Registrar, and accepted 

and published by him in accordance with section 64. 

67. Infringement proceedings by registered proprietor of collective mark.—In a suit for 

infringement instituted by the registered proprietor of a collective mark as plaintiff the court shall take 

into account any loss suffered or likely to be suffered by authorised users and may give such directions as 

it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on 

behalf of such authorised users. 

68. Additional grounds for removal of registration of collective mark.—The registration of a 

collective mark may also be removed from the register on the ground— 

(a) that the manner in which the collective mark has been used by the proprietor or authorised 

user has caused it to become liable to mislead the public as a collective mark; or 

(b) that the proprietor has failed to observe, or to secure the observance of the regulations 

governing the use of the mark. 

Explanation I.—For the purposes of this Chapter, unless the context otherwise requires, “authorised 

user” means a member of an association authorised to use the registered collective mark of the 

association. 

Explanation II.—For the purposes of this Act, use of a collective mark by an authorised user referred 

to in Explanation I shall be deemed to be the use by the registered proprietor thereof. 

CHAPTER IX 

CERTIFICATION TRADE MARKS 

69. Certain provisions of this Act not applicable to certification trade marks.—The following 

provisions of this Act shall not apply to certification trade marks, that is to say,— 

(a) clauses (a) and (c) of sub-section (1) of section 9; 

(b) Sections 18, 20 and 21, except as expressly applied by this Chapter; 

(c) Sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56; 

(d) Chapter XII, except section 107. 

70. Registration of certification trade marks.—A mark shall not be registrable as a certification 

trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the 

provision of services of the kind certified. 

71. Applications for registration of certification trade marks.—(1) An application for the 

registration of a mark as a certification trade mark shall be made to the Registrar in the prescribed manner 

by the person proposed to be registered as the proprietor thereof, and accompanied by a draft for the 

regulations to be deposited under section 74. 



35 
 

(2) Subject to the provisions of section 70, the provisions of sections 18, 19 and 22 shall apply in 

relation to an application under this section as they apply in relation to an application under section 18, 

subject to the modification that references therein to acceptance of an application shall be construed as 

references to authorisation to proceed with an application. 

(3) In dealing under the said provisions with an application under this section, the 1[Registrar or the 

High Court, as the case may be,] 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. 

72. Consideration of application for registration by Registrar.—(1) The Registrar shall consider 

the application made under section 71 with regard to the following matters, namely:— 

(a) whether the applicant is competent to certify the goods in respect of which the mark is to be 

registered; 

(b) whether the draft of the regulations to be filed under section 74 is satisfactory; 

(c) whether in all the circumstances the registration applied for would be to the public advantage, 

and may either— 

(i) refuse the application; or 

(ii) accept the application and approve the said draft of the regulations either without modification 

and unconditionally or subject to any conditions or limitations, or to any amendments or 

modifications of the application or of the regulations, which he thinks requisite having regard to any 

of the said matters. 

(2) Except in the case of acceptance and approval without modification and unconditionally, the 

Registrar shall not decide any matter under sub-section (1) without giving the applicant an opportunity of 

being heard. 

73. Opposition to registration of certification trade marks.—When an application has been 

accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be 

advertised in the prescribed manner, and the provisions of section 21 shall apply in relation to the 

registration of the mark as they apply in relation to an application under section 18. 

74. Filing of regulations governing use of a certification trade mark.—(1) There shall be filed at 

the Trade Marks Registry in respect of every mark registered as a certification trade mark regulations for 

governing the use thereof, which shall include provisions as to the cases in which the proprietor is to 

certify goods or services and to authorise the use of the certification trade mark, and may contain any 

other provisions which the Registrar may by general or special order, require or permit to be inserted 

therein (including provisions conferring a right of appeal to the Registrar against any refusal of the 

proprietor to certify goods or to authorise the use of the certification trade mark in accordance with the 

regulations); and regulations so filed shall be open to inspection in like manner as the register as provided 

in section 148. 

(2) The regulations so filed may, on the application of the registered proprietor, be altered by the 

Registrar. 

(3) The Registrar may cause such application to be advertised in any case where it appears to him 

expedient so to do, and where he does so, if within the time specified in the advertisement any person 

gives notice of opposition to the application, the Registrar shall not decide the matter without giving the 

parties an opportunity of being heard. 

75. Infringement of certification trade marks.—The right conferred by section 78 is infringed by 

any person who, not being the registered proprietor of the certification trade mark or a person authorised 

by him in that behalf under the regulations filed under section 74, using it in accordance therewith, uses in 

the course of trade, a mark, which is identical with, or deceptively similar to the certification trade mark 

 
1. Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021). 



36 
 

in relation to any goods or services in respect of which it is registered, and in such manner as to render the 

use of the mark likely to be taken as being a use as a trade mark. 

76. Acts not constituting infringement of certification trade marks.—(1) Notwithstanding 

anything contained in this Act, the following acts do not constitute an infringement of the right to the use 

of a registered certification trade mark— 

(a) where a certification trade mark is registered subject to any conditions or limitations entered 

on the register, the use of any such mark in any mode, in relation to goods to be sold or otherwise 

traded in any place, or in relation to goods to be exported to any market or in relation to services for 

use or available for acceptance in any place, country or territory or in any other circumstances, to 

which having regard to any such limitations, the registration does not extend; 

(b) the use of a certification trade mark in relation to goods or services certified by the proprietor 

of the mark if, as to those goods or services or a bulk of which they form part, the proprietor or 

another in accordance with his authorisation under the relevant regulations has applied the mark and 

has not subsequently removed or obliterated it, or the proprietor has at any time expressly or 

impliedly consented to the use of the mark; 

(c) the use of a certification trade mark in relation to goods or services adapted to form part of, or 

to be accessory to, other goods in relation to which the mark has been used without infringement of 

the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably 

necessary in order to indicate that the goods or services are so adapted and neither the purpose nor the 

effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods or 

services are certified by the proprietor. 

(2) Clause (b) of sub-section (1) shall not apply to the case of use consisting of the application of a 

certification trade mark to goods or services, notwithstanding that they are such goods or services as are 

mentioned in that clause if such application is contrary to the regulations referred to in that clause. 

(3) Where a certification trade mark is one of two or more trade marks registered under this Act, 

which are identical or nearly resemble each other, the use of any of those trade marks in exercise of the 

right to the use of that trade mark given by registration, shall not be deemed to be an infringement of the 

right so given to the use of any other of those trade marks. 

77. Cancellation or varying of registration of certification trade marks.—The Registrar may, on 

the application in the prescribed manner of any person aggrieved and after giving the proprietor an 

opportunity of opposing the application, make such order as he thinks fit for expunging or varying any 

entry in the register to a certification trade mark, or for varying the regulations, on any of the following 

grounds, namely:— 

(a) that the proprietor is no longer competent, in the case of any of the goods or services in 

respect of which the mark is registered, to certify those goods or services; 

(b) that the proprietor has failed to observe any provisions of the regulations to be observed on his 

part; 

(c) that it is no longer to the public advantage that the mark should remain registered; 

(d) that it is requisite for the public advantage that if the mark remains registered, the regulations 

should be varied. 

78. Rights conferred by registration of certification trade marks.—(1) Subject to the provisions 

of sections 34, 35 and 76, the registration of a person as a proprietor of certification trade mark in respect 

of any goods or services shall, if valid, give to that person the exclusive right to the use of the mark in 

relation to those goods or services. 

(2) The exclusive right to the use of a certification trade mark given under sub-section (1) shall be 

subject to any conditions and limitations to which the registration is subject. 
 

[CHAPTER X.—SPECIAL PROVISIONS FOR TEXTILE GOODS.]—Omitted by the Trade Marks 

(Amendment) Act, 2010 (40 of 2010), s. 7 (w.e.f. 8-7-2013). 



37 
 

79. [Textile goods.]—Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 

80. [Restriction on registration of textile goods.]—Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 

81. [Stamping of piece goods, cotton yarn and thread.]— Omitted by s. 7, ibid. (w.e.f. 8-7-2013). 

82. [Determination of character of textile goods by sampling.]—Omitted by s. 7, ibid.                

(w.e.f. 8-7-2013). 

CHAPTER XI 
1[APPEALS] 

83. [Establishment of Appellate Board.]—Omitted by The Tribunal Reforms Act, 2021 (33 of 2021), 

s. 21 (w.e.f. 4-4-2021). 

84. [Composition of Appellate Board.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

85. [Qualifications for appointment as Chairperson, Vice-Chairperson, or other Members.]— 

Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

86. [Term of office of Chairperson, Vice-Chairperson and other Members.]—Omitted by s. 21, 

ibid. (w.e.f. 4-4-2021). 

87. [Vice-Chairperson or senior-most Member to act as Chairperson or discharge his functions in 

certain circumstances.]— Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

88. [Salaries, allowances and other terms and conditions of service of Chairperson, Vice-

[Chairperson] and other Members.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

89. [Resignation and removal.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

89A. [Qualifications, terms and conditions of service of Chairperson, Vice-Chairperson and 

member.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

90. [Staff of Appellate Board.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

91. Appeals to 2[High Court].—(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 2[High Court] 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 2[High Court] that he had sufficient cause for not preferring the appeal within the 

specified period.  

(3) An appeal to the 2[High Court] 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.  

92. [Procedure and powers of Appellate Board.]—Omitted by The Tribunal Reforms Act, 2021 (33 

of 2021), s. 21 (w.e.f. 4-4-2021). 

93. [Bar of jurisdiction of courts, etc.]—Omitted by s. 21, ibid. (w.e.f. 4-4-2021). 

3[94. Bar to appear before Registrar.—On ceasing to hold the office, the erstwhile Chairperson, 

Vice-Chairperson or other Members shall not appear before the Registrar.] 

95. [Conditions as to making of interim orders.]—Omitted by The Tribunal Reforms Act, 2021     

(33 of 2021), s. 21 (w.e.f. 4-4-2021).  

96. [Power of Chairperson to transfer cases from one Bench to another.]—Omitted by s. 21, ibid. 

(w.e.f. 4-4-2021). 

 
1. Subs. by Act 33 of 2021, s. 21, for “APPELLATE BOARD” (w.e.f. 4-4-2021). 

2. Subs. by  s. 21, ibid, for “Appellate Board” (w.e.f. 4-4-2021). 

3. Subs. by s. 21, ibid, for s. 94 (w.e.f. 4-4-2021). 



38 
 

97. Procedure for application for rectification, etc., before 1[High Court].—(1) An application for 

rectification of the register made to the 1[High Court] under section 57 shall be in such form as may be 

prescribed.  

(2) A certified copy of every order or judgment of the 1[High Court] 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.  

98. Appearance of Registrar in legal proceedings.—(1) The Registrar shall have the right to appear 

and be heard— 

(a) in any legal proceedings before the 1[High Court] 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;  

(b) in any appeal to the 2[High Court] from an order of the Registrar on an application for 

registration of a trade mark— 

(i) which is not opposed, and the application is either refused by the Registrar or is accepted 

by him subject to any amendments, modifications, conditions or limitations, or  

(ii) which has been opposed and the Registrar considers that his appearance is necessary in 

the public interest,  

and the Registrar shall appear in any case if so directed by the 2[High Court].  

(2) Unless the 1[High Court] 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.  

99. [Costs of Registrar in proceedings before Appellate Board.]—Omitted by The Tribunals 

Reforms Act, 2021 (33 of 2021), s. 21 (w.e.f. 4-4-2021).  

100. [Transfer of pending proceedings to Appellate Board.]—Omitted by s. 21, ibid.  

(w.e.f. 4-4-2021). 

CHAPTER XII 

OFFENCES, PENALTIES AND PROCEDURE 

101. Meaning of applying trade marks and trade descriptions.—(1) A person shall be deemed to 

apply a trade mark or mark or trade description to goods or services who— 

(a) applies it to the goods themselves or uses it in relation to services; or  

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in 

possession for sale or for any purpose of trade or manufacture; or  

(c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in 

possession for sale or for any purpose of trade or manufacture, in or with any package or other thing 

to which a trade mark or mark or trade description has been applied; or  

(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to the 

belief that the goods or services in connection with which it is used are designated or described by 

that trade mark or mark or trade description; or  

(e) in relation to the goods or services uses a trade mark or trade description in any sign, 

advertisement, invoice, catalogue, business letter, business paper, price list or other commercial 

document and goods are delivered or services are rendered to a person in pursuance of a request or 

order made by reference to the trade mark or trade description as so used.  

 
1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 

2. Subs. by s. 21, ibid., for “Board” (w.e.f. 4-4-2021). 



39 
 

(2) A trade mark or mark or trade description shall be deemed to be applied to goods whether it is 

woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package 

or other thing.  

102. Falsifying and falsely applying trade marks.—(1) A person shall be deemed to falsify a trade 

mark who, either,— 

(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively 

similar mark; or  

(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.  

(2) A person shall be deemed to falsely apply to goods or services a trade mark who, without the 

assent of the proprietor of the trade mark,—  

(a) applies such trade mark or a deceptively similar mark to goods or services or any package 

containing goods;  

(b) uses any package bearing a mark which is identical with or deceptively similar to the trade 

mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than 

the genuine goods of the proprietor of the trade mark.  

(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in      

sub-section (2), is in this Act referred to as a false trade mark.  

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or 

services, the burden of proving the assent of the proprietor shall lie on the accused.  

103. Penalty for applying false trade marks, trade descriptions, etc.—Any person who—  

(a) falsifies any trade mark; or  

(b) falsely applies to goods or services any trade mark; or  

(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument 

for the purpose of falsifying or of being used for falsifying, a trade mark; or 

(d) applies any false trade description to goods or services; or  

(e) applies to any goods to which an indication of the country or place in which they were made 

or produced or the name and address of the manufacturer or person for whom the goods are 

manufactured is required to be applied under section 139, a false indication of such country, place, 

name or address; or  

(f) tampers with, alters or effaces an indication of origin which has been applied to any goods to 

which it is required to be applied under section 139; or  

(g) causes any of the things above-mentioned in this section to be done,  

shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a 

term which shall not be less than six months but which may extend to three years and with fine which 

shall not be less than fifty thousand rupees but which may extend to two lakh rupees:  

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, 

impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand 

rupees. 

104. Penalty for selling goods or providing services to which false trade mark or false trade 

description is applied.—Any person who sells, lets for hire or exposes for sale, or hires or has in his 

possession for sale, goods or things, or provides or hires services, to which any false trade mark or false 

trade description is applied or which, being required under section 139 to have applied to them an 

indication of the country or place in which they were made or produced or the name and address of the 

manufacturer, or person for whom the goods are manufactured or services provided, as the case may be, 

are without the indications so required, shall, unless he proves,— 

(a) that, having taken all reasonable precautions against committing an offence against this 

section, he had at the time of commission of the alleged offence no reason to suspect the genuineness 



40 
 

of the trade mark or trade description or that any offence had been committed in respect of the goods 

or services; or  

(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power 

with respect to the person from whom he obtained such goods or things or services; or  

(c) that otherwise he had acted innocently,  

be punishable with imprisonment for a term which shall not be less than six months but which may 

extend to three years and with fine which shall not be less than fifty thousand rupees but which may 

extend to two lakh rupees:  

Provided that the court may, for adequate and special reasons to be mentioned in the judgment, 

impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand 

rupees.  

105. Enhanced penalty on second or subsequent conviction.—Whoever having already been 

convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be 

punishable for the second and for every subsequent offence, with imprisonment for a term which shall not 

be less than one year but which may extend to three years and with fine which shall not be less than one 

lakh rupees but which may extend to two lakh rupees:  

Provided that the court may, for adequate and special reason to be mentioned in the judgement, 

impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees:  

Provided further that for the purposes of this section, no cognizance shall be taken of any conviction 

made before the commencement of this Act.  

106. [Penalty for removing piece goods, etc., contrary to section 81.]—Omitted by The Jan 

Vishwas (Amendment of Provisions) Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 1-8-2024). 

107. Penalty for falsely representing a trade mark as registered.—(1) No person shall make any 

representation— 

(a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered 

trade mark; or  

(b) with respect to a part of a registered trade mark, not being a part separately registered as a 

trade mark, to the effect that it is separately registered as a trade mark; or  

(c) to the effect that a registered trade mark is registered in respect of any goods or services in 

respect of which it is not in fact registered; or  

(d) to the effect that registration of a trade mark gives an exclusive right to the use thereof in any 

circumstances in which, having regard to limitation entered on the register, the registration does not in 

fact give that right.  

(2) If any person contravenes any of the provisions of sub-section (1), he shall be 1[liable to penalty of 

a sum equal to one half per cent. of the total sales or turnover, as the case may be, in business or of the 

gross receipts in profession, as computed in the audited accounts of such person, or a sum equal to five 

lakh rupees, whichever is less].  

(3) For the purposes of this section, the use in India in relation to a trade mark of the word 

“registered”, or of any other expression, symbol or sign referring whether expressly or impliedly to 

registration, shall be deemed to import a reference to registration in the register, except—  

(a) where that word or other expression, symbol or sign is used in direct association with other 

words delineated in characters at least as large as those in which that word or other expression, 

symbol or sign is delineated and indicating that the reference is to registration as a trade mark under 

the law of a country outside India being a country under the law of which the registration referred to 

is in fact in force; or  

 
1. Subs. by Act 18 of 2023, s. 2 and Sch., for certain words (w.e.f. 1-8-2024).  



41 
 

(b) where that other expression, symbol or sign is of itself such as to indicate that the reference is 

to such registration as is mentioned in clause (a); or  

(c) where that word is used in relation to a mark registered as a trade mark under the law of a 

country outside India and in relation solely to goods to be exported to that country or in relation to 

services for use in that country.  

108. [Penalty for improperly describing a place of business as connected with the Trade Marks 

Office.]—Omitted by The Jan Vishwas (Amendment of Provisions) Act, 2023 (18 of 2023), s. 2 and 

Schedule (w.e.f. 1-8-2024). 

109. [Penalty for falsification of entries in the register.]—Omitted by s. 2 and Schedule, ibid. 

(w.e.f. 1-8-2024).  

110. No offence in certain cases.—The provisions of sections 102, 103, 104 and 105 shall, in 

relation to a registered trade mark or proprietor of such mark, be subject to the rights created or 

recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid 

sections if,— 

(a) the alleged offence relates to a registered trade mark and the act or omission is permitted 

under this Act; and  

(b) the alleged offence relates to a registered or an unregistered trade mark and the act or 

omission is permitted under any other law for the time being in force.  

111. Forfeiture of goods.—(1) Where a person is convicted of an offence under section 103 or 

section 104 or section 105 or is acquitted of an offence under section 103 or section 104 on proof that he 

acted without intent to defraud, or under section 104 on proof of the matters specified in clause (a),  

clause (b) or clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to 

Government of all goods and things by means of, or in relation to, which the offence has been committed, 

or but for such proof as aforesaid would have been committed.  

(2) When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal 

shall lie against the forfeiture also.  

(3) When a forfeiture is directed on acquittal and the goods or things to which the direction relates are 

of value exceeding fifty rupees, an appeal against the forfeiture may be preferred, within thirty days from 

the date of the direction, to the court to which in appealable cases appeals lie from sentences of the court 

which directed the forfeiture.  

(4) When a forfeiture is directed on a conviction, the court, before whom the person is convicted, may 

order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.  

112. Exemption of certain persons employed in ordinary course of business.—Where a person 

accused of an offence under section 103 proves—  

(a) that in the ordinary course of his business he is employed on behalf of other persons to apply 

trade marks or trade descriptions, or as the case may be, to make dies, blocks, machines, plates, or 

other instruments for making, or being used in making, trade marks; and  

(b) that in the case which is the subject of the charge he was so employed, and was not interested 

in the goods or other thing by way of profit or commission dependent on the sale of such goods or 

providing of services, as the case may be; and  

(c) that, having taken all reasonable precautions against committing the offence charged, he had, 

at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade 

mark or trade description; and  

(d) that, on demand made by or on behalf of the prosecutor, he gave all the information in his 

power with respect to the persons on whose behalf the trade mark or trade description was applied,  

he shall be acquitted.  
  



42 
 

1[112A. Adjudication of penalties.—The Registrar may, by an order, authorise an officer referred to 

in section 3, to be adjudicating officer for holding an inquiry and imposing penalty under the provisions 

of this Act, in the manner as may be prescribed, after giving a reasonable opportunity of being heard. 

112B. Appeal.—(1) Whoever aggrieved by an order of the adjudicating officer under section 112A 

may prefer an appeal to the appellate authority, who shall be an officer at least one rank above the 

adjudicating officer, within a period of sixty days from the date of receipt of the order, as the Central 

Government may by notification authorise in this behalf. 

(2) Every appeal under this section shall be preferred in such form and manner as may be prescribed. 

(3) An appeal may be admitted after the expiry of the period of sixty days if the appellant satisfies the 

appellate authority that he had sufficient cause for not preferring the appeal within that period. 

(4) No appeal shall be disposed of unless the appellant has been given a reasonable opportunity of 

being heard. 

(5) The appellate authority referred to in sub-section (1) shall dispose of the appeal within sixty days 

from the date of filing. 

(6) Notwithstanding anything contained in this Act, if the person fails to comply with the order of the 

adjudicating officer under section 112A or the order of the appellate authority under this section, as the 

case may be, within ninety days of such order, he shall, in addition to the penalty, be punishable with fine 

of one lakh rupees or imprisonment for a term which may extend to one year, or with both.] 

113. Procedure where invalidity of registration is pleaded by the accused.—(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 2[High Court] 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 2[High Court] 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 
3[Registrar or the High Court, as the case may be,] 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.  

114. Offences by companies.—(1) If the person committing an offence under this Act is a company, 

the company as well as every person in charge of, and responsible to, the company for the conduct of its 

business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall 

be liable to be proceeded against and punished accordingly:  

Provided that nothing contained in this sub-section shall render any such person liable to any 

punishment if he proves that the offence was committed without his knowledge or that he exercised all 

due diligence to prevent the commission of such offence.  

 
1. Ins. by Act 18 of 2023, s. 2 and Sch. (w.e.f. 1-8-2024).  

2. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 

3. Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021). 



43 
 

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been 

committed by a company and it is proved that the offence has been committed with the consent or 

connivance of, or that the commission of the offence is attributable to any neglect on the part of, any 

director, manager, secretary or other officer of the company, such director, manager, secretary or other 

officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and 

punished accordingly.  

Explanation.—For the purposes of this section— 

(a) “company” means any body corporate and includes a firm or other association of individuals; 

and  

(b) “director”, in relation to a firm, means a partner in the firm.  

115. Cognizance of certain offences and the powers of police officer for search and seizure.—(1) 

No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on 

complaint in writing made by the Registrar or any officer authorised by him in writing:  

Provided that in relation to clause (c) of sub-section (1) of section 107, a court shall take cognizance 

of an offence on the basis of a certificate issued by the Registrar to the effect that a registered trade mark 

has been represented as registered in respect of any goods or services in respect of which it is not in fact 

registered.  

(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall 

try an offence under this Act.  

(3) The offences under section 103 or section 104 or section 105 shall be cognizable.  

(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he 

is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to be, 

committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or 

things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as 

practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the 

case may be:  

Provided that the police officer, before making any search and seizure, shall obtain the opinion of the 

Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so 

obtained.  

(5) Any person having an interest in any article seized under sub-section (4), may, within fifteen days 

of such seizure, make an application to the Judicial Magistrate of the first class or Metropolitan 

Magistrate, as the case may be, for such article being restored to him and the Magistrate, after hearing the 

applicant and the prosecution, shall make such order on the application as he may deem fit.  

116. Evidence of origin of goods imported by sea.—In the case of goods brought into India by sea, 

evidence of the port of shipment shall, in a prosecution for an offence under this Act or under clause (b) 

of section 112 of the Customs Act, 1962 (52 of 1962) relating to confiscation of goods under clause (d) of 

section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of 

the said Act for the protection of trade marks relating to import of goods, be prima facie evidence of the 

place or country in which the goods were made or produced.  

117. Costs of defence or prosecution.—In any prosecution under this Act, the court may order such 

costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court 

deems reasonable having regard to all the circumstances of the case and the conduct of the parties and the 

costs so awarded shall be recoverable as if they were a fine.  

118. Limitation of prosecution.—No prosecution for an offence under this Act or under clause (b) 

of section 112 of the Customs Act, 1962 (52 of 1962), relating to confiscation of goods under clause (d) 

of section 111 and notified by the Central Government under clause (n) of sub-section (2) of section 11 of 

the said Act for the protection of trade marks, relating to import of goods shall be commenced after 

expiration of three years next after the commission of the offence charged, or two years after the 

discovery thereof by the prosecutor, whichever expiration first-happens.  

119. Information as to commission of offence.—An officer of the Government whose duty it is to 

take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say 

whence he got any information as to the commission of any offence against this Act.  



44 
 

120. Punishment of abetment in India of acts done out of India.—If any person, being within 

India, abets the commission, without India, of any act which, if committed in India, would, under this 

Act, be an offence, he may be tried for such abetment in any place in India in which he may be found, and 

be punished therefor with the punishment to which he would be liable if he had himself committed in that 

place the act which he abetted.  

121. Instructions of Central Government as to permissible variation to be observed by criminal 

courts.—The Central Government may, by notification in the Official Gazette, issue instructions for the 

limits of variation, as regards number, quantity, measure, gauge or weight which are to be recognised by 

criminal courts as permissible in the case of any goods.  

CHAPTER XIII 

MISCELLANEOUS 

122. Protection of action taken in good faith.—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.  

123. Certain persons to be public servants.—Every person appointed under this Act 1*** shall be 

deemed to be a public servant within the meaning of section 21 of the Indian Penal Code (45 of 1860).  

124. Stay of proceedings where the validity of registration of the trade mark is questioned, 

etc.—(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 2[High Court], 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 2[High Court] 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.  

125. Application for rectification of register to be made to 2[High Court] in certain cases.—(1) 

Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s 

 
1. The words “and every Member of the Appellate Board” omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

2. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 



45 
 

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 1[High Court] and not to 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 1[High Court].  

126. Implied warranty on sale of marked goods.—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.  

127. Powers of Registrar.—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, make 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.  

128. Exercise of discretionary power by Registrar.—Subject to the provisions of section 131, the 

Registrar shall not exercise any discretionary or other power vested to 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.  

129. Evidence before Registrar.—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.  

130. Death of party to a proceeding.—If a person who is a party to a proceeding under this Act (not 

being a proceeding before 2*** 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.  

131. Extension of time.—(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.  

 
1. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 
2. The words “the Appellate Board or” omitted by s. 21, ibid. (w.e.f. 4-4-2021). 



46 
 

(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.  

132. Abandonment.—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.  

133. Preliminary advice by the Registrar as to distinctiveness.—(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.  

134. Suit for infringement, etc., to be instituted before District Court.—(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.  

(2) 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 (5 of 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.  

Explanation.—For the purposes of sub-section (2), “person” includes the registered proprietor and 

the registered user.  

135. Relief in suits for infringement or for passing off.—(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 matters, 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 



47 
 

(b) where in a suit for infringement 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 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. 

136. Registered user to be impleaded in certain proceedings.—(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. 

137. Evidence of entries in register, etc., and things done by the Registrar.—(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. 

138. Registrar and other officers not compellable to produce register etc.—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. 

139. Power to require goods to show indication of origin.—(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. 



48 
 

(4) The provisions of section 23 of the General Clauses Act, 1897 (10 of 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. 

(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 transshipment in or transit 

through India or otherwise. 

140. Power to require information of imported goods bearing false trade marks.—(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 goods 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 (52 of 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. 

1[(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 liable to penalty of ten thousand rupees: 

Provided that the penalty under this section shall be levied and recovered by such authority under the 

Customs Act, 1962 (52 of 1962) for this purpose.] 

(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. 

141. Certificate of validity.—If in any legal proceeding for rectification of the register before the 
2[High Court] 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 2[High Court] 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. 

142. Groundless threats of legal proceedings.—(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. 

 
1. Subs. by Act 18 of 2023, s. 2 and Schedule, for sub-section (3) (w.e.f. 1-8-2024). 

2. Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021). 



49 
 

(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. 

143. Address for service.—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. 

144. Trade usages, etc., to be taken into consideration.—In any proceeding relating to a trade 

mark, the 1[Registrar or the High Court, as the case may be,] 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. 

145. Agents.—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. 

146. Marks registered by an agent or representative without authority.—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. 

147. Indexes.—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. 

148. Documents open to public inspection.—(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 section 74, 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: 

 
1. Subs. Act 33 of 2021, by s. 21, for “tribunal” (w.e.f. 4-4-2021).  



50 
 

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 printout 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). 

149. Reports of Registrar to be placed before Parliament.—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. 

150. Fees and surcharge.—(1) There shall be paid in respect of 1[applications, international 

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. 

151. Savings in respect of certain matters in Chapter XII.—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 (52 of 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 

(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. 

152. Declaration as to ownership of trade mark not registrable under the Registration           

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

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

154. Special provisions relating to applications for registration from citizens of convention 

countries.—(1) With a view to the fulfilment 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 Organisation, as the case may 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 

 
1. Subs. by Act 40 of 2010, s. 8, for “applications” (w.e.f. 8-7-2013). 



51 
 

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. 

155. Provision as to reciprocity.—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 or                

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. 

156. Power of Central Government to remove difficulties.—(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. 

157. Power to make rules.—(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; 



52 
 

1[(vii) the manner of giving a notice of opposition and the fee payable for such notice under      

sub-section (1) and sending counter-statement 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 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; 

2[(ixa) the time within which the international application is to be forwarded to the International 

Bureau and the manner of certifying the particulars by the Registrar under sub-section (4) of      

section 36D; 

(ixb) the manner of keeping a record of particulars of an international registration under          

sub-section (1) of section 36E; 

(ixc) the manner of informing the International Bureau under sub-section (2) of section 36E; 

(ixd) the manner of advertising the international registration and the time within which the 

international registration shall be advertised under sub-section (3) of section 36E;] 

(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; 

2[(xiiia) the period within which the Registrar shall dispose of an application under                          

sub-section (3) 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 making 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; 

 
1. Subs. by Act 40 of 2010, s. 9, for clause (vii) (w.e.f. 8-7-2013). 
2. Ins. by s. 9, ibid. (w.e.f. 8-7-2013). 



53 
 

(xxiv) the manner of advertising an application under section 73; 

(xxv) the manner of making an application under section 77; 

1*   *   *  *   * 

(xxix) the salaries and allowances payable to, and the other terms and conditions of service of, the 
2[Chairperson], 3[Vice-Chairperson] and other Members under sub-section (1) of section 88; 

(xxx) the procedure for investigation of misbehavior or incapacity of the 2[Chairperson],              
3[Vice-Chairperson] and other Members under sub-section (3) of section 89; 

4*  *  *   *    * 

(xxxiii) the form in which and the particulars to be included in the application to the 5[High Court] 

under sub-section (1) of section 97; 

6[(xxxiiia) the manner of holding inquiry and imposing penalty under Section 112A; 

(xxxiiib) the form and manner of preferring appeal under sub-section (2) of Section 112B;] 

(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 sessions, 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. 

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

specified therein. 

 
1. Cls. (xxvi), (xxvii) and (xxviii) omitted by Act 40 of 2010, s. 9 (w.e.f. 8-7-2013). 

2. Subs. by Act 7 of 2017, s. 161, for “Chairman” (w.e.f. 26-5-2017). 

3. Subs. by s. 161, ibid., for “Vice-Chairman” (w.e.f. 26-5-2017). 

4. Cls. (xxxi) and (xxxii) omitted by Act 33 of 2021, s. 21 (w.e.f. 4-4-2021). 

5. Subs. by s. 21, ibid., for “Appellate Board” (w.e.f. 4-4-2021). 

6. Ins. by Act 18 of 2023, s. 2 and Sch. (w.e.f. 1-8-2024). 



54 
 

159. Repeal and savings.—(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby 

repealed. 

(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1987), with 

respect to repeals, any notification, rule, order, requirement, 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 (43 of 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. 

(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 (43 of 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. 

  



55 
 

THE SCHEDULE 

(See section 158) 

AMENDMENTS 

 

Year Act No. Short title Amendment 

1956 1 The Companies 

Act, 1956 

(1) In Section 20, for sub-section (2), the following      

sub-sections shall be substituted, namely:— 

“(2) Without prejudice to the generality of the foregoing 

power, a name which is identical with, or too nearly 

resembles,— 

(i) the name by which a company in existence has 

been previously registered, or 

(ii) a registered trade mark, or a trade mark which is 

subject of an application for registration, of any 

other person under the Trade Marks Act, 1999,  

may be deemed to be undesirable by the Central 

Government within the meaning of sub-section (1). 

(3) The Central Government may, before deeming a name 

as undesirable under clause (ii) of sub-section (2), 

consult the Registrar of Trade Marks.”. 

(II) In section 22, in sub-section (1),— 

(i) for the portion beginning with “if, through” 

and ending with “the first-mentioned 

company—” the following shall be 

substituted, namely:— 

“If, through inadvertence or otherwise, a company on 

its first registration or on its registration by a new 

name, is registered by a name which,— 

(i) in the opinion of the Central Government, is 

identical with, or too nearly resembles, the name 

by which a company in existence has been 

previously registered, whether under this Act or 

any previous companies law, the first mentioned 

company, or 

(ii) on an application by a registered proprietor of a 

trade mark, is in the opinion of the Central 

Government identical with, or too nearly 

resembles, a registered trade mark of such 

proprietor under the Trade Marks Act, 1999, 

such company,—”; 

(ii) the following proviso shall be added, namely:— 

“Provided that no application under clause (ii) 

made by a registered proprietor of a trade mark 

after five years of coming to notice of 

registration of the company shall be considered 

by the Central Government.”. 

 



56 
 

 

STATEMENT OF OBJECTS AND REASONS 

The Trade and Merchandise Marks Act, 1958 has served its purpose over the last four decades. It was 

felt that a comprehensive review of the existing law be made in view of developments in trading and 

commercial practices, increasing globalisation of trade and industry, the need to encourage investment 

flows and transfer of technology, need for simplification and harmonization of trade mark management 

systems and to give effect to important judicial decisions. To achieve these purposes, the present Bill 

proposes to incorporate, inter alia the following, namely:— 

(a) providing for registration of trade mark for services, in addition to goods; 

(b) registration of trade marks, which are imitation of well known trade marks, not to be permitted, 

besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the 

provisions for defensive registration of trade marks are proposed to be omitted; 

(c) amplification of factors to be considered for defiring a well-known mark; 

(d) doing away with the system of maintaining registration of trade marks in Part A and Part B with 

different legal rights, and to provide only a single register with simplified procedure for registration and 

with equal rights; 

(e) simplifying the procedure for registration of registered user and enlarging the scope of permitted 

use; 

(f) providing for registration of “Collective Marks” owned by associations, etc.; 

(g) providing an Appellate Board for speedy disposal of appeals and rectification applications which at 

present lie before High Court; 

(h) transferring the final authority relating to registration of certification trade marks to the Registrar 

instead of the Central Government; 

(i) providing enhanced punishment for the offences relating to trade marks on par with the present 

Copyright Act, 1957, to prevent the sale of spurious goods; 

(j) prohibiting use of some one else’s trade marks as part of corporate names, name of business 

concern; 

(k) extension of application of convention country to include countries which are members of Group 

or union of countries and Inter-Governmental Organisations; 

(1) incorporating other provisions, like amending the definition of “trade marks”, provisions for filing 

a single application for registration in more than one class, increasing the period of registration and 

renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of courts to 

bring the law in this respect on par with the copyright law, amplifying the powers of the court to grant    

expert injunction in certain cases and other related amendments to simplify and streamline the trade mark 

law and procedure. 

2. In view of the extensive amendments necessitated in the Trade and Merchandise Marks Act, 1958, it 

has been thought fit to repeal and re-enact the said Act incorporating the necessary changes. 

3. The Bill seeks to achieve the above objects. The Notes on clauses explain the various provisions of 

the Bill. 

 

 

 

NEW DELHI;         MURASOLI MARAN. 

The 19th November, 1999.