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TRADE AND MERCHANDISE MARKS ACT, 1958 [REPEALED]

Ministry of Law and Justice

Act nº 43 of 1958


  • Chapter 1
  • Chapter 2
  • Chapter 3
  • Chapter 4
  • Chapter 5
  • Chapter 6
  • Chapter 7
  • Chapter 8
  • Chapter 9
  • Chapter 10
  • Chapter 11
  • Schedules
  • Act nº 43 of 1958

Preamble

THE TRADE AND MERCHANDISE MARKS ACT, 1958

[Act, No. 43 of 1958]

[17th October, 1958]

PREAMBLE

An Act to provide for the registration and belter protection of trade marks and for the prevention of the vse of fraudulent marks on merchandise.

be it enacted by Parliament in the Ninth Year of the Republic of India as follows:--

Chapter 1

Section 1. Short title, extent and commencement

(1) The Act may be called the Trade and Merchandise Marks Act, 1958.

(1) It extends to the whole of India.

(2) It shall come into force on such date 1as the Central Government may, by notification in the Official Gazette, appoint.

1. Came into force on 25-11-1959, see Gazette of India, 1959, Extra. Pt. II, section, 3(ii), p. 583.


Section 2. Definitions and interpretation

(1) In this Act, unless the context otherwise requires,--

(a) "assignment" means an assignment in writing by act of the parties concerned;

(b) "associated trade marks" means trade marks deemed to be, or required to be, registered as associated trade marks under this Act;

(c) "certification trade mark" means a mark adapted in relation to any goods to distinguish, in the course of trade, goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registrable as such under the provisions of Chapter VIII in respect of those goods in the name as proprietor of the certification trade mark, of that person;

(d) "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;

(e) "District Court" has the meaning assigned to it in the Code of Civil Procedure, 1908 (5 of 1908);

(f) "false trade description" means

(i) a trade description which is untrue or misleading in a material respect as regards the goods to which it is applied; or

(ii) any alteration of a trade description as regards the goods 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

(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 applied to goods in such 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; or

(v) any false name or initials of a person applied to goods 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 of the same description 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 of some person not bona fide carrying on business in connection with such goods,

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;

(g) "goods" means anything which is the subject of trade or manufacutre;

(h) "High Court" means the High Court having jurisdiction under section 3;

(i) "limitations" (with its grammatical variations) means any limitations 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 of use, as to use in relation to goods to be sold or otherwise traded in within India, or as to use in relation to goods to be exported to any market outside India;

(j) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof;

(k) "name" includes any abbreviation of a name;

(l) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;

(m) "permitted use", in relation to a registered trade mark, means the use of a trade mark--

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

(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

(ii) which complies with any conditions or restrictions to which the registration of the trade mark is subject;

(n) "prescribed" means, in relation to proceedings before a High Court, prescribed by rules made by the High Court, and in other cases, prescribed by rules made under this Act;

(o) "register" means the Register of Trade Marks referred to in section 6;

(p) "registered" (with its grammatical variations) means registered under this Act;

(q) "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;

(r) "registered trade mark' means a trade mark which is actually on the register;

(s) "registered user" means a person who is for the time being registered as such under section 49;

(t) "Registrar" means the Registrar of Trade Marks referred to in section 4;

(u) "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, according to a classification commonly used or recognised in the trade; or

(iii) as to fitness for the purpose, strength, performance or behavious of any goods, being stet as defined in the Drugs 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 were made or produced; or

(v) as to the name and address or other indication of the indentity of the manufacturer or of the person for whom the goods are manufactured; or

(vi) as to the mode of manufacture or producing any goods; 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 a bill or entry of shipping bill;

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

(v) "trade mark" means--

(i) in relation to Chapter X (other than section 81), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and

(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some" person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII;

(w) "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;

(x) "tribunal" means the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending.

(2) in this Act, unless the context otherwise requires, any reference--

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

(b) to the use of a mark 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;

(c) to a registered trade mark shall be construed as dincluding a reference to a trade mark registered in Part A of the register or Part Bof the register, as the case may be;

(d) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of subsection (2) of section 4;

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

Section 3. High Court having jurisdiction

The High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the following cases is situate, namely:--

(a) in relation to a trade mark on the Register of Trade marks at the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor of the trade mark as entered in the register at such commencement is situate;

(b) in relation to a trade mark for which an application for registration of pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant as disclosed in his application is situate;

(c) in relation to a trade mark registered in the names of joint proprietors before the commencement of this Act, the office of the Trade Marks Registry within whose territorial limtis the principal place of business in India of the proprietor whose name is entered first in the register at such commencement as having such place of business is situate;

(d) in relation to a trade mark for which an application for regislration in the names of joint proprietors is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whole territorial limits the principal place of business in India of the proprietor whose name is first mentioned in me said application as having such place of business is situate;

(e) where the registered proprietor or the applicant for registration as aforesaid has no place of business in India or where none of the jointly registered proprietors or none of the joint applicants as aforesaid has any place of business in India, the office of the Trade Marks Registry within whose territorial limits--

(i) in relation to trade mark on the Register of Trade Marks at the commencement of this Act, the place mentioned in the address for service in India as entered in the register at such commencement;

(ii) in relation to a trade mark for which an application for registration is pending at or is made on or after such commencement, the place mentioned in the address for service in India as specified in the application, is situate.

Chapter 2

Section 4. Registrar of Trade Marks

(1) The Central Government may,by notification in the Official Gazette, appoint a person to be known as theController-General of Patents, Designs and Trade Marks, who shall be the 1 [Registrarof Trade Marks] for the purposes of this Act. 2 [***].

(2) The Central Government mayappoint such other officers with such designations as it thinks fit for thepurpose of discharging, under the superintendence and direction of theRegistrar, such functions of the Registrar under this Act as he may from timeto time authorise them to discharge.

1.Substituted by Act 58 of 1960, section 3 and Second Schedule, for "Registrar".

2. The words"and the Controller of Patents and Designs for the purposes of the IndianPatents and Designs Act, 1911 (2 of 1911)" omitted by Act 39 of 1970, section163 (w.e.f. 20-4-72).


Section 5. Trade Marks Registry and offices thereof

(1) For the purpose of this Act there shall be established a Registry which shall be known as the Trade Marks Registry.

(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 officers of the Trade Marks Registry,

(3) The Central Government may, by notification 1in 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.

1. See Notification No. S.O. 2602, dated 25th November, 1959, Gazette of India, Extra. 1959, Pt.II, section 3 (iii), pg.583.


Section 6. The Register of Trade Marks

(1) For the purposes of thisAct, a record called the Register of Trade Marks shall be kept at the headoffice of the Trade Marks Registry, wherein shall be entered all registeredtrade marks with the names, addresses and descriptions of registered users, disclaimers,conditions, limitations and such other matters relating to registered trademarks as may be prescribed.

(2) No notice of any trust,express or implied or constructive, shall be entered in the register and nosuch notice shall be receivable by the Registrar.

(3) Subject to thesuperintendence and direction of the Central Government, the register shall bekept under the control and management of the Registrar.

(4) There shall be kept at eachbranch office of the Trade Marks Registry a copy of the register and such ofthe other documents mentioned in section 125 as the Central Government may, bynotification in the Official Gazette, direct.

Section 7. Part A and Part B of the register

(1) The register referred to in section 6 shall be divided into two parts called respectively Part A and Part B.

(2) The Register of Trade Marks existing at the commencement of this Act shall be incorporated with and form part of Part A of the register, and this Part shall comprise all trade marks entered in the Register of Trade marks existing at the commencement of this act and all trade marks which after such commencement may be entered in Part A of the register.

(3) Part Bof the register shall comprise all trade marks which after the commencement of this Act may be entered in Part Bof the register.

Section 8. Registration to be in respect of particular goods

(1) A trade mark may be registered in respect of any or al! of the goods comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

Section 9. Requisites for registration in Parts A and B of the register

(1) A trademark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:--

(a) the name of a company, individual or firm represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions in clauses (a), (b), (c) and (d) of sub-section (I) shall not be registereable in Part A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either gradually or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(4) A trade mark shall not be registered in Part Bof the register unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which--

(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods--

(a) registered in Part A of the register may be registered in Part Bof the register; and

(b) registered in Part Bof the register may be registered in Part A of the register, in the name of the same proprietor of the same trade mark or any part or parts thereof.

Section 10. Limitation as to colour

(1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

Section 11. Prohibition of registration of certain marks

A mark

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court,

shall not be registered as a trade mark.

Section 12. Prohibition of registration of identical or deceptively similar trade marks

(1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.

(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods the Registrar may defer the acceptance of the application or applications bearing a later date until after the deermination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.

(3) In 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 trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose,