The Trade Markets Act,1999: important cases on passing off/ Universal Law Publication

THE TRADE MARKS ACT, 1999
Introduction , Comparative Charts
CHAPTER I
PRELIMINARY
Sections 1. Short title, extent and commencement 2. Definitions and interpretation
CHAPTER 11
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 i 30. Limits on effect of registered trade mark 31. Registration to be pripui facie evidence of validity 32. Protection of registration on ground of distinctiveness in certain cases 33. Effect of acquiescence 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

Sections
CHAPTER V
ASSIGNMENT AND TRANSMISSION 37. Power of registered proprietor to assign and give receipts . . . 27 38. Assignability and transmissibility of registered trade marks . . . 27 39. Assignability and transmissibility of unregistered trade marks . . . 27 40. Restriction on assignment or transmission where multiple exclusive rights would be created . ' . . 27 41. Restriction on assignment or transmission when exclusive rights would be created in different parts of India . . . 28 42. Conditions for assignment otherwise than in connection with the goodwill of a business . . . 29 43. Assignability and transmissibility of certification trade marks . . . 29 44. Assignability and transmissibility of associated trade marks . . . 29 45. Registration of assignments and transmissions . . . 30
' CHAPTER VI USE OF TRADE MARKS AND REGISTERED USERS 46. Proposed use of trade mark by company to be formed, etc. . . . 30 47. Removal from register and imposition of limitations on ground of non-use. . 31 48. Registered users . , _ 32 49. Registration as registered user . . . 32 50. Power of Registrar for variation or cancellation of registration as registered user . . . 33 51. Power of Registrar to call for information relating to agreement in / respect of registered users . . ' . 34 52. Right of registered user to take proceedings against infringement . . . 34 53. No right of permitted user to take proceeding agciinst infringement . . . 34 54. Registered user not to have right of assignment or transmission . . . 34 55. Use of one of assoaated or substantially identical trade marks equivalent to use of another 35 56. Use of trade mark for export trade and use when form of trade connection changes 35
CHAPTER VII RECTIFICATION AND CORRECTION OF THE REGISTER 57. Power to cancel or vary registration and to rectify the register . . . 35 58. Correction of register 59. Alteration of registered trade marks . . ^ 36 60. Adaptation of entries in register to amended or substituted classification of goods or services 2^
CHAPTER VIII COLLECTIVE MARKS 61. Sjjedal 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
A«' proceedings by registered proprietor of collective mart 68. Additional grounds for removal of registration of collective mark .

CHAPTER IX
^ . CERTIFICATION TRADE MARKS6
Certain provisions of this Act not applicable to certification trade marks 38 70. Registration of certification trade marks ' 71. Applications for registration of certification trade marks 1 ^ 38 38
72. Consideration of application for registration by the 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
CHAPTER X
SPECIAL PROVISIONS FOR TEXTILE GOODS
79. Textile goods 80. Restriction on registration of textile goods 81. Stamping of piece goods, cotton yam and thread 82. Determination of character of textile goods by sampling
CHAPTER XI
APPELLATE BOARD 83. Establishment of Appellate Board 84.. Composition of Appellate Board 85. Qualifications for appointment as Chairman, Vice-Chairman, or other Members 86. Term of office of Chairman, Vice-Chairman and other Members 87. Vice-Chairman or senior-most Member to act as Chairman or discharge
his functions in certain circumstances 88. Salaries, allowances and other terms and conditions of service of Chairman, Vice-Chairman and other Members 89. Resignation and removal 90. Staff of Appellate Board 91. Appeals to Appellate Board 92. Procedure and powers of Appellate Board 93. Bar of jurisdiction of courts, etc. 94. Bar to appear before Appellate Board 95. Conditions as to making of interim orders 96. Power of Chairman to transfer cases from one Bench to another 97. Procedure for application for rectification, etc., before Appellate Board 98. Appearance of Registrar in legal proceedings 99. Costs of Registrar in proceedings before Appellate Board 100. Transfer of pending proceedings to Appellate Board
CHAPTER Xll 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. Penalty for removing piece goods, etc., contrary to section 81 107. Penalty for falsely representing a trade mark as registered 108. Penalty for improperly describing a place of business as connected with the Trade Marks Office 109. Penalty for falsification of entries in the register 110. No offence in certain cases 111. Forfeiture of goods 112. Exemption of certain persons employed in ordinary course of business 113. Procedure where invalidity of registration is pleaded by the accused.

Sections
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 pro.secution 118. Limitation of prosecution
119. Information as to commission of offence
120. Punishment of abatement 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 Protection of action taken in good faith Certain persons to be public servants Stay of proceedings where the validity of registration of the trade mark is questioned, etc. Application for rectification of register to be made to Appellate Board
in certain cases Implied warranty on saie of marked goods Powers of Registrar Exercise of discretionary power by Registrar Evidence before Registrar Death of party to a proceeding
Extension of time Abandonment . ' Preiiminary advice by the Registrar as to distinctiveness Suit for infringement, etc., to be instituted before District Court Relief in suits for infringement or for passing off Registered user to be impleaded in certain proceedings Evidence of entries in register, etc., and things done by the Registrar. Registrar and other officers not compellable to produce register, etc.. Power to require goods to show indication of origin Power to require information of imported goods bearing false trade marks Certificate of validity Groundless threats of legal proceedings Address for service < Trade usages, etc., to be taken into consideration Agents Marks registered by an agent or representative without authority
Indexes Documents open to public inspection Reports of Registrar to be placed before Parliament Fees and surcharge Savings in respect of certain matters in Chapter XII ! Declaration as to ownership of trade mark not registrable under the Registration Act, 1908 Government to be bound Special provisions relating to applications for registration from citizens of convention countries Provision as to reciprocity Power of Central Government to remove difficulties ! Power to make rules
Amendments Repeal and savings THE SCHEDULE.—Amendments