ajay amitabh suman

2009-12-25T23:39:00.000-08:00

Equivalent citations: 2006 (32) PTC 713 Reg
Bench: D Bansod, Artm
Aftab Tobacco Products vs Amanat Tobacco Gul Manufacture on 27/3/2006
JUDGMENT
D.S. Bansod, ARTM
1 The matter relates to the Review Petition dated 4th June, 2004 on FormTM−57 under Section 97(C) of the Trade and Merchandise Marks Act, 1958 filed bythe opponents/petitioners against the Order dated 5th May, 2004 passed by ShriRamji Lal, Assistant Registrar of Trade Marks (under the provisions of The TradeMarks Act, 1999) vide which the Opposition No. DEL−T−3769 was abandoned. Thegrounds of review are stated in the Review Petition (Statement of Case).
2 In brief the facts in this case are that the trade mark Raja Gul Label wassought for registration under application No. 583085 in class 34 claimingproprietorship to the mark since the year 1987 by M/s Aftab Tobacco Products,Malikpura, P.O. Mohamadabad, Yusufpur, Distt, Ghazipur, U.P. The application wasadvertised in Trade Marks Journal No. 1269 dated 16th April, 2002 at page No.
349.
1 A notice of opposition on Form TM−5 was lodged on 5th August, 2002 by M/sAmanat Tobacco Gul Manufacturers, Near Mahavir Dharamshala, Yusufpur,Mohamadabad, Distt, Ghazipur, U.P − 23227, objecting to the registration of theaforesaid mark of the Applicant under Sections 9, 11(a), 11(c), 12(1), 12(3) and18(1) of the Trade and Merchandise Marks Act, 1958. The counter−statement wasfiled by the applicant on 23rd April, 2003 denying all the material averments inthe notice of opposition. A request on Form TM−56 was filed for an extension oftime (two months) up to 11th April, 2004 for filing the opponent’s evidence insupport of opposition. The said request was partly allowed and the extension oftime up−to 15th March, 2004 was granted to the opponents for filing an evidenceand informed to the opponent vide office letter No. 9444 dated 5th March, 2004as per provision of Rule 50(1) of the Trade Marks Rules, 2002. Another requeston Form TM−56 was filed for extension of time of one month (i.e. 15.03.2004 to15.04.2004) but the said request was refused under the provision of Trade MarksAct, 1999 on 25th March, 2004.
2 The Review Petition came up for hearing before me on 24th October, 2005when Shri O.P. Chauhan, Advocate appeared on behalf of the Opponents/Petitionersand Shri Ajay Amitabh Suman, Advocate authorised by M/s Delhi RegistrationService appeared on behalf of the Applicant/Respondent.
3 The legal position of review under the Trade Marks Act, 1999 and the TradeMarks Rules, 2002 are that they did not specify any grounds for review of theRegistrar’s decision. The provisions contained in Order 47 Rule 1 of the Code ofCivil Procedure do not in terms apply to the proceedings before the Registrar.But since the Legislature has deliberately used a term which has a known legalsignificance in Law, it must be taken that the Legislature has attacked to thatterm that known legal significance. Hence, it would appear that the term"Review" in Section 127(C) of the Trade Marks Act, 1999 must be construed ashaving the same legal meaning as in Order 47 Rule 1 of Civil Procedure Code.
4 Under Order 47 Rule 1 of Civil Procedure Code, a Review Petition can beentertained only on the basis of one or more of the following grounds:

I. On the ground of discovery of new and important matter or evidencewhich, after the exercise of due diligence, was not within the Applicantsknowledge or could not be produced by him at the time when the decree was passedor order made, or

II. On account of some mistake or error apparent on the face of the Record,
or III. For any other sufficient reason.
1 The question arises whether there is any mistake or error apparent on theface of the record to review the order.
2 Shri O.P. Chauhan, Advocate for the opponents/petitioners readout thestatement of the case and grounds of Review and submitted that the evidence ofthe opponents filed on 5.4.2004 was not considered in the present case and lawwas not properly applied. Shri O.P. Chauhan, Advocate further submitted that theorder for abandonment was passed under the 1999 Act cogently in violation andcontravention of Section 159(4) of the Trade Marks Act, 1999. Hence, order assuch should have been passed under the 1958 Act, which is still in force asenumerated under Section 159(4) of the 1999 Act as the instant opposition wasfiled under the provisions of 1958 Act and not under the Trade Marks Act, 1999.Moreover, the refusal of TM−56 dated 16th March, 2004 was not communicated tothe opponents which is a serious lapse on the part of the ex−Assistant Registrarand hence there is a patent mistake or error apparent on the face of record asenvisage within the provisions of Order 47, Rule 1 of Civil Procedure Code.
3 Shri Ajay Amitabh Suman, Advocate appeared on behalf of theapplicant/respondent stated that the Trade Marks Act, 1999 is actionable forTM−56 dated 9.2.2004 and thereafter dated 16.3.2004 and invited my attention toRule 50 of The Trade Marks Rules, 2002 as well as Section (sic) of The TradeMarks Act, 1999 and requested for dismissal of the Review Petition with cost asthere is no apparent mistake on the face of the record.
4 Shri O.P. Chauhan submitted that the opponents evidence was on record onthe date of passing an impugned order dated 5th May, 2004 and requested to allowthe review petition filed by the opponents/petitioners.

11. The provisions of Rule 50 of The Trade Marks Rules, 2002 are as under:
Evidence in support of opposition.−

(1) Within two months from services on him of a copy of thecounterstatement or within such further period not exceeding one month in theaggregate thereafter as the Registrar may on request allow the opponent shalleither leave with the Registrar, such evidence by way of affidavit as he maydesire to adduce in support of his opposition or shall intimate to the Registrarand to the applicant in writing that he does not desire to adduce evidence insupport of his opposition but intends to rely on the facts stated in the noticeof opposition. He shall deliver to the applicant copies of any evidence that heleaves with the Registrar under this sub−rule and intimate the Registrar inwriting of such delivery.

(2) If an opponent takes no action under Sub−rule (1) within the timementioned therein, he shall be deemed to have abandoned his opposition.

(3) An application for the extension of the period of one month mentionedin Sub−rule (1) shall be made in Form TM−56 accompanied by the prescribed feebefore the expiry of the period of two months mention and therein.
12. Under Rule 50(1) two months time is permitted to file the opponentsevidence and thereafter one month extension in the aggregate can be granted andif the request is allowed the opponent shall either Leave with the Registrar,such evidence by way of affidavit as he may desire to adduce in support of hisopposition or shall intimate to the Registrar and to the applicant in writingthat he does not desire to adduce evidence in support of his opposition butintends to rely on the facts stated in the notice of opposition. In the present case opponents/petitioners has filed evidence after the 3 months period i.e. on5th April, 2004. The extension of time up to 15th March, 2004 was granted to theopponents for filing an evidence and was accordingly informed to the opponentsvide office Letter No. 9944 dated 5th March, 2004. Therefore the order wasrecorded on 25th March, 2004 under the provision of Rule 50(2) which says "If anopponent takes no action under Sub−rule (1) within the time mentioned therein,he shall be deemed to have abandoned his opposition. This fact was considered bythe Registrar at the time of passing the order as provided in Rule 50 of theTrade Marks Rules, 2002. Hence, there is no error apparent on the face of therecord as pleaded by the opponents/petitioners.
The application for registration was filed on 15.10.1992 and the saidmatter is pending, I feel great injustice will accrue to the applicant ifregistration is denied to the applicant for the negligence of the Opponents.Moreover, the opponents/petitioners have a remedy to apply for itsrectification.
1 I find that a careful consideration was given to the material placed onthe record. I do not find any reason or mistake apparent on the face of therecord to justify the review of the order in the absence of any petition. In thepresent case as already observed above the then Assistant Registrar vide hisOrder dated 5th May, 2004 gave a definite finding on merits after taking intoconsideration all the facts lead before him.
2 In view of the foregoing and on consideration of the overall facts andcircumstances of the case, I hereby dismiss the Review Petition filed by theopponents/petitioners.
16. There shall be no order as to the costs.

2009-12-25T23:38:00.001-08:00

INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018

(Circuit Bench sitting at Delhi)

TRA/108/2004/TM/DEL (C.O. No. 7/1998)

THURSDAY THIS, THE 17th DAY OF FEBRUARY, 2005

Hon’ble SHRI JUSTICE S. JAGADEESAN -- Chairman
Hon’ble DR. RAGHBIR SINGH --Vice-Chairman

SHRI DEEPAK KISHORE JOSHI
Trading as
M/s. GALAXY FOOTWEAR
A-21/1, Naraina Industrial Area
Phase-I
NEW DELHI - 110 028 -- Applicant

(By Advocate – None)

Vs.
1. M/s. OSWAL INDUSTRIES
H-26, Udyog Nagar
DELHI – 110 041.

2. THE REGISTRAR OF TRADE MARKS
Trade Marks Registry
Okhla Industrial Estate
NEW DELHI – 110 020 -- Respondents

(By Advocate – Shri Ajay Amitabh Suman for R-1)

O R D E R
(No. 60 of 2005)

Hon’ble Shri Justice S. Jagadeesan

While the matter was pending before the Hon’ble High Court of Delhi, the learned counsel for the first respondent filed IA/104/2000 for discharging him from the case and the High Court directed notice to the applicant. By endorsement dated 20.11.2001 from the High Court, it is seen that the notice sent to the applicant returned un-served with endorsement ‘Locked’. Fresh notice was ordered by the High Court on 4.11.2003, the service of which could not be effected. The notice send from the Registry of the Appellate Board to the applicant also returned with remarks that ‘Galaxy Footwear is closed since long’, who is the applicant herein. In view of the same, no option is left with us but to dismiss the TRA/108/2004/TM/DEL for non-prosecution. Accordingly, the same is dismissed.
(Dr. Raghbir Singh) (Justice S. Jagadeesan) Vice-Chairman Chairman
AVN
Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.

2009-12-25T23:37:00.001-08:00

INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018

(Circuit Bench sitting at Delhi)

C.O.D. No. 15 of 2004 in S.R. No 190/2004/TM/IPAB

WEDNESDAY THIS, THE 9th DAY OF FEBRUARY, 2005

Hon’ble Shri JUSTICE S. JAGADEESAN -- Chairman
Hon’ble Dr. RAGHBIR SINGH --Vice-Chairman

1. M/s. HAMDARD INDUSTRIES
Dhaunra Tanda
BAREILLY – 243 204
UTTAR PRADESH -- Petitioner/Appellant

(By Advocate Shri Ajay Amitabh Suman)

Vs.

1. M/s. HAMDARD NATIONAL FOUNDATION (INDIA)
2A/3, Asaf Ali Road
NEW DELHI – 110 002.

2. ASSISTANT REGISTRAR OF TRADE MARKS
TRADE MARKS REGISTRY
Okhla Industrial Area
NEW DELHI – 110 020. -- Respondents

(By Advocate - Ms. Monika Vij for R1)

O R D E R (No.45/05)

Hon’ble Shri Justice S. Jagadeesan

The petitioner has preferred this appeal against the order of the Assistant Registrar of Trade Marks, New Delhi dated 23.7.2004 wherein the opposition of the first respondent was allowed and the application of the petitioner for registration was rejected.

2. The petition is to condone the delay of 28 days for filing the appeal. The petitioner has stated that the order of the Assistant Registrar of Trade Marks, New Delhi was communicated to the counsel on 17.8.2004 and the same was forwarded to the petitioner by their counsel. The petitioner has misplaced the impugned order of the Assistant Registrar and totally forgot about the filing of appeal till they were reminded by their counsel. Immediately on the reminder, the petitioner gave instructions to their counsel to prefer the appeal and the appeal was filed before this Board on 13.12.2004. The period of limitation prescribed under Section 91(1) of the Trade Marks Act, 1999, is three months from the date of communication of the order. Hence the appeal ought to have been filed on or before 16.11.2004. The delay is due to misplacement of the impugned order and as such, the delay is neither wilful nor wanton. The delay being a bonafide one, unless the delay is condoned, the petitioner will be prejudiced. Hence the delay has to be condoned. The learned counsel for the petitioner Shri Ajay Amitabh Suman argued the matter reiterating the averments made in support of the petition for condoning the delay.

3. Ms. Monika Vij, the learned counsel for the first respondent, by referring to some of the judgements, vehemently opposed the application for condoning the delay contending that the petitioner has not explained each day’s delay and as such, the petition is liable to be dismissed. Further, the learned counsel for the first respondent contented that the whole-sale reason given by the petitioner cannot be accepted and it is for the petitioner to instruct the counsel for filing the appeal, immediately on receipt of the impugned order. The misplacement of the impugned order itself establishes the grave negligence on the part of the petitioner and as such, the petitioner failed to establish any sufficient cause for condoning the delay.

4. We carefully considered the above contentions of both the counsels. It is unnecessary for us to refer to the judgements cited by the learned counsel for the first respondent for the simple reason that the factum of the availability of sufficient cause has to be considered on the facts and circumstances of each case and the precedence cannot be followed in a blanket manner.

5. Coming to the reason given by the petitioner for the delay is that their counsel immediately on receipt of the impugned order of the Assistant Registrar had forwarded the same to them and they misplaced the said impugned order. Due to the misplacement of the impugned order they totally forgot about the matter till a reminder came from their counsel. Immediately, the petitioner made arrangements and the appeal has been filed with a delay of 28 days. It is for us to consider whether the reason given by the petitioner for the delay would be a sufficient cause as contemplated under Section 91, which is in parametria Section 5 of the Limitation Act, 1963.

6. The reason given by the petitioner is misplacement of the impugned order received by them. The misplacement cannot be explained for everyday. Naturally, the papers have to be traced and unless and until it is established that there is some malafide intention of the petitioner to drag on the proceedings, it will amount to sufficient cause. Hence we are of the opinion that there is sufficient cause for condoning the delay.

7. Though we found that there is sufficient cause for condonation of delay, there is no doubt that misplacement of the order is due to negligence on the part of the petitioner to protect their right. Even though there may not be any malafide intention to delay the proceedings but still the petitioner could have been a little more careful in prosecuting the matter by avoiding the delay. Hence we impose a cost of Rs. 2,500/- on the petitioner for condoning the delay. This C.O.D. petition No. 15/2004 is ordered on condition that the petitioner shall pay a sum of Rs. 2,500/- to the learned counsel for the first respondent or the first respondent by way of Demand Draft within one week from the receipt of this order, failing which the C.O.D shall stand dismissed.
(Dr. Raghbir Singh) (Justice S. Jagadeesan)
Vice-Chairman Chairman
AVN
Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board

Supreme Court on Pending Matters Pertaining to IPR

2009-09-17T05:42:00.001-07:00

Supreme Court of India
CIVIL APPEAL No. 6309 of 2009
Judge(s): MARKANDEY KATJU, ASOK KUMAR GANGULY
Date of Judgment: 16 September, 2009
BAJAJ AUTO LIMITED
VersusTVS MOTOR COMPANY LIMITED

J U D G M E N T
MARKANDEY KATJU, J.
1. Leave granted.
2. This Appeal has been filed against the impugned order of the Division Bench of the High Court of Judicature at Madras dated 18.5.2009 in O.S.A. No. 92 of 2008. 3. It appears that a suit bearing No. C.S. No.1111 of 2007 had been filed by the appellant herein before the learned Single Judge of the Madras High Court alleging infringement of its patent No.195904 under the Indian Patents Act, 1973 ( for short 'the Act').
4. The learned Single Judge granted an interim injunction on 16th February, 2008. 5. Challenging the said interim order dated 16th February, 2008, an appeal was filed by the respondent-defendant before the Division Bench of the Madras High Court which allowed the appeal by the impugned order dated 18.5.2009. 6. Hence, this appeal before us by special leave.
7. It is evident that the suit is still pending before the learned Single Judge of the Madras High Court. We are unhappy that the matter has been pending in the High Court at the interlocutory stage for such a long time as the suit was filed in December, 2007 and yet even written statement has not been filed. 8. Recently, we have held in Special Leave Petition(C) No.21594 of 2009 decided on 07th September, 2009 in the case of M/s. Shree Vardhman Rice & Gen Mills vs. M/s Amar Singh Chawalwala as follows:
"...Without going into the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper.
Proviso (a)to Order XVII Rule 1(2)C.P.C. states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary. The Court should also observe clauses (b) to (e) of the said proviso.
In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit."
9. As has been observed by us in the aforesaid case, experience has shown that in our country, suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. This is a very unsatisfactory state of affairs, and hence we had passed the above quoted order in the above-mentioned case to serve the ends of justice. We direct that the directions in the aforesaid order be carried out by all courts and tribunals in this country punctually and faithfully. 10. In the present case, although arguments were advanced at some length by the learned counsel for both the parties, we are of the opinion that instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date.
11. Hence, without going into the merits of the controversy, we direct the respondent-defendant to file written statement in the suit, if not already filed, on or before the last date for closing of the Madras High Court for Dussehra holidays. We would request the learned Single Judge who is trying the suit to commence the hearing of the suit on the re-opening of the Madras High Court after Dussehra holidays and then carry it on a day to day basis. No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30th November, 2009.
12. The interim orders of this Court dated 08th June, 2009 and 31st August, 2009 are vacated and substituted by the following directions.
13. The respondent shall be entitled to sell its product but it shall maintain an accurate records/accounts of its all India and export sales.We are appointing a Receiver to whom the records of such sale shall be furnished every fortnight by the respondent and the same shall be signed and authenticated by a responsible officer of the respondent. A copy of the same shall be given to the appellant also. We are requesting the Hon'ble the Chief Justice of the Madras High Court to forthwith nominate a Receiver in the matter to whom the sale records/accounts will be submitted by the respondent fortnightly, and the Receiver will verify the said sale records/accounts and thereafter submit his Report to the learned Bench of Madras High Court where the suit is pending. A copy of the same will be sent to the parties also. This direction will continue till the pendency of the suit. The remuneration of the Receiver will be fixed by the Hon'ble Chief Justice.
14. We make it clear that we are not making any observations on the merits of the case. The learned Single Judge shall decide the suit without being influenced by this order or by any observations made in the impugned order of the Division Bench or in the order of the learned Single Judge granting temporary injunction in favour of the appellant herein.
15. The Secretary General of this Court is directed to send a copy of this judgment forthwith to the Registrar General of the Madras High Court who shall place the same before Hon'ble the Chief Justice for obtaining the appropriate directions. 16. Copy of this order be given to the parties today itself.
17. The Appeal is disposed of accordingly. No costs.
18. Leave granted.
19. In view of our judgment in Civil Appeal arising from S.L.P.(C) No.13933 of 2009, this appeal is also disposed of on the same terms. No costs.

Design Act 2000

2009-03-25T04:47:00.000-07:00

THE DESIGNS ACT, 2000
No. 16 of 2000
[25
th
May, 2000]
An Act to consolidate and amend the law relating to protection of designs.
BE it enacted by Parliament in the Fifty first Year of the Republic of India as follows:-
CHAPTER 1
P
RELIMINARY
1. (1) This Act may be called the Design Act, 2000.
(2) It extends to the whole of India.
(3) It shall come into force on such date as the Central Government may, by
notification, appoint and 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.
Short title, extent and
Commencement
2. In this Act, unless there is anything repugnant in the subject or
context.
(a) “article” means any article of manufacture and any substance, artificial, or partly
artificial and partly natural and includes any part of an article capable of being
made and sold separately;
(b) “Controller” means the Controller-General of Patents, Designs and Trade Marks
referred to in Section 3;
(c) “copyright” means the exclusive right to apply a design to any article in any
class in which the design is registered;
d) “design” means only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article whether in two dimensional or
three dimensional or in both forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished article
appeal to and are judged solely by the eye; but does not include any mode or
principle of construction or anything which is in substance a mere mechanical
device, and does not include any trade mark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as
defined in section 479 of the Indian Penal Code or any artistic work as defined in
clause (c) of section 2 of the Copyright Act, 1957
(e) “High Court” shall have the same meaning as assigned to it in
clause (i) of sub-section (I) of section 2 of the Patents Act, 1970;
(f) “legal representative” means a person who in law represents the estate of a
deceased person;
Definition
43 of 1958
45 of 1860
14 of 1957
39 of 1970
(g) “original”, in relation to a design, means originating from the
author of such design and includes the cases which though old in
themselves yet are new in their application;
(h) “Patent Office” means the patent office referred to in section 74
of the Patents Act, 1970.
39 of 1970
(i) “prescribed” means prescribed by rules under this Act; and
Page 2
(j) “proprietor of a new or original design”,-
(i) where the author of the design, for good
consideration, executes the work for some other person, means the
person for whom the design is so executed;
(ii) where any person acquires the design or the right to apply the
design to any article, either exclusively of any other person or otherwise, means, in
the respect and to the extent in and to which the design or right has been so
acquired, the person by whom the design or right is so acquired; and
(iii) in any other case, means the author of the design; and
where the property in or the right to apply, the design has devolved
from the original proprietor upon any other person, includes that
other person.
CHAPTER II
R
EGISTRATION OF DESIGNS
3. (1) The Controller General of Patents, Designs and Trade Marks appointed under
sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 shall
be the Controller of Designs for the purposes of this Act.
Controller and other
officers
43 of 1958
(2) For the purposes of this Act, the Central Government may appoint
as many examiners and other officers and with such designations, as
it thinks fit.
(3) Subject to the provisions of this Act, the officers appointed under
sub-section (2) shall discharge under the superintendence and
directions of the Controller such functions of the Controller under this
Act as he may, from time to time by general or special order in
writing, authorise them to discharge.
(4) Without prejudice to the generality of the provisions of sub-section (3), the
Controller may by order in writing and for reasons to be recorded therein, withdraw
any matter pending before an officer appointed under sub-section (2) and deal with
such mater himself either de novo or from the stage it was so withdrawn or transfer
the same to another officer appointed under sub-section (2) 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.
4. A design which
(a) is not new or original; or
b) has been disclosed to the public anywhere in India or in any other
country by publication in tangible form or by use or in any other way
prior to the filing date, or where applicable, the priority date of the
application for registration; or
(c) is not significantly distinguishable from known designs or combination of
known designs; or
(d) comprises or contains scandalous or obscene matter shall not be registered.
Prohibition of
registration of certain
designs.
5. (1) The Controller may, on the application of any person claiming to be
the
proprietor of any new or original design not previously published in any country
and which is not contrary to public order or morality, register the design under
this Act.
Application registration
of designs
Page 3
Provided that the Controller shall before such registration refer the application for
examination, by an examiner appointed under sub-section (2) of section 3, as to
whether such design is capable of being registered under this Act and the rules
made thereunder and consider the report of the examiner on such reference.
(2) Every application under Sub-Section (1) shall be in the prescribed form and
shall be filed in the Patent Office in the prescribed manner and shall be
accompanied by the prescribed fee.
(3) A design may be registered in not more than one class, and, in case of doubt as
to the class in which a design ought to be registered, the Controller may decide the
question.
(4) The Controller may, if he thinks fit, refuse to register any design presented to
him for registration; but any person, person aggrieved by any such refusal may
appeal to the High Court.
(5) An application which, owing to any default or neglect on the part of the
applicant, has not been completed so as to enable registration to be effected within
the prescribed time shall be deemed to be abandoned.
(6) A design when registered shall be registered as of the date of the application for
registration.
6. (1) A design may be registered in respect of any or all of the articles comprised
in a prescribed class of articles.
Registration on to be in
(2) Any question arising as to the class within which any article falls shall be
determined by the Controller whose decision in the matter shall be final.
respect of
particular article.
(3) Where a design has been registered in respect of any article comprised in a class
of article, the application of the proprietor of the design to register it in respect of
some one or more other articles comprised in that class of articles shall not be
refused, nor shall the registration thereof invalidated.
(a) on the ground of the design not being a new or original design, by reason
only that it was so previously registered; or
(b) on the ground of the design having been previously published in India
or in any other country, by reason only that it has been applied to article in respect
of which it was previously registered:
Provided that such subsequent registration shall not extend the period of copyright
in the design beyond that arising from previous registration.
4) Where any person makes an application for the registration of a design in
respect of any article and either-
(a) that design has been previously registered by another person in
respect of some other article; or
(b) the design to which the application relates consists of a design
previously registered by another person in respect of the same or
some other article with modifications or variations not sufficient to
alter the character or substantially to affect the identity thereof,
then, if at any time while the application is pending the applicant becomes the
registered proprietor of the design previously registered, the foregoing provisions of
the section shall apply as if at the time of making the application the applicant had
been the registered proprietor of that design.
7. The Controller shall, as soon as may be after the registration of a design, cause
publication of the prescribed particulars of the design to be published in such
manner as may be prescribed and thereafter the design shall be open to public
inspection
Publication of
particulars of registered
Design
8. (1) If the Controller is satisfied on a claim made in the prescribed manner
at any time before a design has been registered that by virtue of any assignment
or agreement in writing made by the applicant or one of the applicants for
registration of the design or by operation of law, the claimant
would, if
the design were then registered, be entitled thereto or to the interest of the
Power of Controller to
make orders regarding
substitution of
application etc.
Page 4
applicant therein,or to an undivided share of the design or of that interest, the
Controller may, subject to the provisions of this section, direct that the
application shall proceed in the name of the claimant or in the names of the
claimants and the applicant or the other joint applicant or applicants, accordingly
as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any assignment or
agreement made by one two or more joint applicants for registration of a design
except with the consent of the other joint applicant or applicants.
3) No such direction as aforesaid shall be given by virtue of any
assignment or agreement for the assignment of the benefit of a design unless-
(a) the design is identified therein by reference to the
number of the application for the registration; or
(b) there is produced to the Controller an acknowledgement
by the person by whom the assignment or agreement was made that
the assignment or agreement relates to the design in respect of which
that application is made; or
(c) the rights of the claimant in respect of the design have
been finally established by the decision of a court; or
(d) the Controller gives directions for enabling the
application to proceed or for regulating the manner in which it
should be proceeded with under sub-section (5).
(4) Where one of two or more joint applicants for registration of a design dies at
any time before the design has been registered, the Controller may, upon a request
in that behalf made by the survivor or survivors, and with the consent of the legal
representative of the deceased, direct that the application shall proceed in the name
of the survivor or survivors alone.
(5) If any dispute arises between joint applicants for registration of a design
whether or in what manner the application should be proceeded with, the
Controller may, upon application made to him in the prescribed manner by any of
the parties, and after giving to all parties concerned an opportunity to be heard,
give such directions as he thinks fit for enabling the application to proceed in the
name of one or more of the parties alone or for regulating the manner in which it
should be proceeded with, or for both those purposes, as the case may require.
9. (1) The Controller shall grant a certificate of registration to the
proprietor of the design when registered
Certificate of
registration
(2) The Controller may, in case of loss of the original certificate, or in
any other case in which he deems it expedient, furnish one or more
copies of the certificate.
10. (1) There shall be kept at the Patent Office a book called the
register of designs, wherein shall be entered the names and addresses
of proprietors of registered designs, notifications of assignments
and of transmissions of registered designs, and such other matter as
may be prescribed and such register may be maintained wholly or
partly on computer, floppies or diskettes, subject to such safeguards
as may be prescribed.
Register of designs
(2) Where the register is maintained wholly or partly on computer
floppies and diskettes under sub-section (1), any reference in this Act
to any entry in the register shall be construed as the reference to entry
so maintained on computer, floppies or diskettes.
(3) The register of designs existing at the commencement of this Act
shall be incorporated with and form part of the register of designs
Page 5
under this Act.
(4) The register of designs shall be prima facie evidence of any
matter by this Act directed or authorized to be entered therein.
CHAPTER III
C
OPYRIGHT IN REGISTERED DESIGNS
11. (1) When a design is registered, the registered proprietor of the design shall,
subject to the provisions of this Act, have copyright in the design during ten
years from the date of registration.
Copyright on
registration
(2) If, before the expiration of the said ten years, application for the
extension of the period of copyright is made to the Controller in the
prescribed manner, the Controller shall, on payment of the prescribed
fee, extend the period of copy-right for a second period of five years
from the expiration of the original period of ten years.
12. (1) Where a design has ceased to have effect by reason of failure
to pay the fee for the extension of copyright under sub-section (2)
of section 11, the proprietor of such design or his legal representative
and where the design was held by two or more persons jointly, then,
with the leave of the Controller one or more of them without jointing
the others, may, within one year from the date on which the design
ceased to have effect, make an application for the restoration of the
design in the prescribed manner on payment of such fee as may be
prescribed.
Restoration of lapsed
designs.
(2) An application under this section shall contain a statement,
verified in the prescribed manner, fully setting out the circumstances
which led to the failure to pay the prescribed fee, and the Controller
may require from the applicant such further evidence as he may
think necessary.
13. (1) If, after hearing the applicant in cases where the applicant
so desires or the Controller thinks fit, the Controller is satisfied that
the failure to pay the fee for extension of the period of copyright
was unintentional and that there has been no undue delay in the
making of the application, the Controller shall upon payment of any
unpaid fee for extension of the period of copyright together with
prescribed additional fee restore the registration of design.
Procedure for disposal
of applications for
restoration of lapsed
designs.
(2) The Controller may, if he thinks fit as a condition of restoring the
design, require that any entry shall be made in the register of any
document or matter which under the provision of this Act, has to be
entered in the register but which has not been so entered.
14. (1) Where the registration of a design is restored, the rights
of the registered proprietor shall be subject to such provisions as
may be prescribed and to such other provisions as the Controller
thinks fit to impose for the protection or compensation of persons
who may have begun to avail themselves of, or have taken definite
steps by contract or otherwise to avail themselves of, the benefit
of applying the design between the date when the registration of the
design
ceased to have effect and the date of restoration of the
Rights of proprietor of
lapsed design which
have been restored.
Page 6
registration of the design.
(2) No suit or other proceeding shall be commenced in respect of
piracy of a registered design or infringement of the copyright in such
design committed between the date on which the registration of the
design ceased to have effect and the date of the restoration of the
design.
15. (1) Before delivery on sale of any articles to which a registered
design has been applied, the proprietor shall-
(a) (if exact representations or specimens were not finished on the
application for registration) furnish to the Controller the prescribed
number of exact representations or specimens of the design; and, if
he fails to do so, the Controller may, after giving notice thereof to
the proprietor, erase his name from the register and thereupon the
copyright in the design shall cease; and
Requirements before
delivery on sales.
(b) causes each such article to be marked with the prescribed mark,
or with the prescribed words or figures denoting that the design is
registered; and, if he fails to do so, the proprietor shall not be entitled
to recover any penalty or damages in respect of any infringement of
his copyright in the design unless he shows that he took all proper
steps to ensure the marking of the article, or unless he shows that the
infringement took place after the person guilty thereof knew or had
received notice of the existence of the copyright in the design.
(2) Where a representation is made to the Central Government by or
on behalf of any trade or industry that in the interest of the trade or
industry it is expedient to dispense with or modify as regards any
class or description of articles any of the requirements of this section
as to marking, the Central Government may, if it thinks fit, by rule
under this Act, dispense with or modify such requirements as regards
any such class or description of articles to such extent and subject to
such conditions as it thinks fit.
16. The disclosure of a design by the proprietor to any other person,
in such circumstances as would make it contrary to good faith for
that other person to use or publish the design, and the disclosure of a
design in breach of good faith by any person, other than the
proprietor of the design, and the acceptance of a first and
confidential order for articles bearing a new or original textile
design intended for registration, shall not be deemed to be a
publication of the design sufficient to invalidate the copyright
thereof if registration thereof is obtained subsequently to the
disclosure or acceptance.
Effect of disclosure on
copyright.
17. (1) During the existence of copyright in a design, any person on
furnishing such information as may enable the Controller to identify
the design and on payment of the prescribed fee may inspect the
design in the prescribed manner.
Inspection of registered
designs
(2) Any person may, on application to the Controller and on payment
of such fee as may be prescribed, obtain a certified copy of any
registered design.
18. On the request of any person furnishing such information
Information as to
Page 7
as may enable the Controller to identify the design, and on
payment of the prescribed fee, the Controller shall inform such
person whether the registration still exists in respect of the design,
and, if so, in respect of what classes of articles, and shall state the
date of registration, and the name and address of the registered
proprietor.
existence of copyright.
19. (1) Any person interested may present a petition for the
cancellation of the registration of a design at any time after the
registration of the design, to the Controller on any of the following
grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior
to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.
Cancellation of
registration.
(2) An appeal shall lie from any order of the Controller under this
section to the High Court, and the Controller may at any time refer
any such petition to the High Court, and the High Court shall decide
any petition so referred.
20. A registered design shall have to all intents the like effect as
against the Government as it has against any person and the
provisions of Chapter XVII of the Patents Act, 1970 shall apply to
registered designs as they apply to patents.
Designs to bind
Government. 30 of
1970.
CHAPTER IV
INDUSTRIAL AND INTERNATIONAL EXHIBITIONS
21. The exhibition of a design, or of any article to which a design is
applied, at an industrial or other exhibition to which the provisions
of this section have been extended by the Central Government by
notification in the Official Gazette, or the publication of a description
of the design, during or after the period of the holding of the
exhibition, or the exhibition of the design or the article or the
publication of a description of the design by any person else-where
during or after the period of the holding of the exhibition, without
the privity or consent of the proprietor, shall not prevent the
design from being registered or invalidate the registration thereof:
Provisions as to exhibitions.
Provided that-
(a) the exhibitor exhibiting the design or article, or publishing a
description of the design, gives to the Controller previous notice in
Page 8
the prescribed form; and
(b) the application for registration is made within six months from the
date of first exhibiting the design or article or publishing a description
of the design.
CHAPTER V
L
EGAL PROCEEDINGS
22. (I) During the existence of copyright in any design it shall not be lawful for any
person-
Piracy of
registered
design.
(a) for the purpose of sale to apply or cause to be applied to any article in any class
of articles in which the design is registered, the design or any fraudulent or obvious
imitation thereof, except with the license or written consent of the registered
proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered
proprietor, any article belonging to the class in which the design has been
registered, and having applied to it the design or any fraudulent or obvious
imitation thereof, or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in which the design is registered
without the consent of the registered proprietor, to publish or expose or cause to be
published or exposed for sale that article.
2. (1) If any person acts in contravention of this section, he shall be liable for
every contravention-
(a) to pay to the registered proprietor of the design a sum not
exceeding twenty-five thousand rupees recoverable as a contract
debt, or
(b) if the proprietor elects to bring a suit for the recovery of
damages for any such contravention, and for an injunction against
the repetition thereof, to pay such damages as may be awarded and to
be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one
design under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief
under this subsection shall be instituted in any court below the court
of District Judge.
(3) In any suit or any other proceeding for relief under sub-
section (2), ever ground on which the registration of a design may be
cancelled under section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to
sub-Section (2), where any ground or which the registration of a
design may be cancelled under section 19 has been availed of as a
ground of defence and sub-section (3) in any suit or other proceeding
for relief under sub-section (2), the suit or such other proceedings
shall be transferred by the Court in which the suit or such other
proceeding is pending, to the High Court for decision.
Page 9
(5) When the court makes a decree in a suit under sub-section (2),
it shall send a copy of the decree to the Controller, who shall cause
an entry thereof to be made in the register of designs.
23. The provisions of the Patents Act, 1970 with regard to certificates
of the validity of a patent, and to the remedy in case of groundless
threats of legal proceedings by a patentee shall apply in the case
of registered designs in like manner as they apply in the case of
patents, with the substitution of references to the copyright in a
design for reference to a patent, and of references to the proprietor of
a design for references to patentee, and of references to the design for
references to the invention.
Application of certain of the
provisions the Act as to the
patents to designs.
CHAPTER VI
G
ENERAL
Fees
24. (1) There shall be paid in respect of the registration of designs
and applications therefor and in respect of other matters relating to
designs under this Act such fees may be prescribed.
Fees
(2) A proceeding in respect of which a fee is payable under this Act
or the rules made thereunder shall be of no effect unless the fee has
been paid.
Provisions as to Registers and other Documents in the Patent Office.
25. There shall not be entered in any register kept under this
Act, or be receivable by the Controller, any notice of any trust
expressed, implied or constructive.
Notice of trust not to be
entered in registers.
26. Every register kept under this Act shall at all convenient times
be open to the inspection of the public, subject to the provisions of
this Act; and certified copies, sealed with the seal of the Patent
Office, of any entry in any such register shall be given to any person
requiring the same on payment of the prescribed fee:
Provided that where such register is maintained wholly or partly on
computer, the inspection of such register under this section shall be
made by inspecting the computer print out of the relevant entry in the
register so maintained on computer.
Inspection of and
extracts from registers.
27. Reports of or to the Controller made under this Act other than
the report referred to in section 45 shall not in any case be published
Privilege of reports of
Controller
Page 10
or be open to public inspection.
28. Where an application for a design has been abandoned or refused,
the application
and any
drawings, photographs, tracings,
representations or specimens left in connection with the
application shall not at any time be open to public inspection or be
published by the Controller.
Prohibition and
publication of
specification, drawings,
etc where application
abandoned, etc.
29. The Controller may, on request in writing accompanied by the
prescribed fee correct any clerical error in the representation of a
design or in the name or address of the proprietor of any design, or in
any other matter, which is entered upon the register of designs.
Power for Controller
to Correct Clerical
errors.
30. (1) Where a person becomes entitled by assignments,
transmission or other operation of law to the copyright in a registered
design, he may make application in the prescribed form to the
Controller to register his title, and the Controller shall, on receipt of
such application and on proof of title to his satisfaction, register
him as the proprietor of such design, and shall cause an entry to be
made in the prescribed manner in the register of the assignment,
transmission or other instrument affecting the title.
Entry of assignment
and transmitions in
registers.
(2) Where any person becomes entitled as mortgage, licensee or
otherwise to any interest in a registered design, he may make
application to the Controller to register his title, and the Controller
shall, on receipt of such application and on proof of title to his
satisfaction, cause notice of the interest to be entered in the prescribed
manner in the register of designs, with particulars of the instrument, if
any, creating such interest.
(3) For the purposes of sub-section (1) or sub-section (2) an
assignment of a design or of a share in a design, a mortgage, licence
or the creation of any other interest in a design shall not be valid
unless the same were in writing and the agreement between the
parties
concerned is reduced to the form of an instrument
embodying all the terms and conditions governing their rights and
obligation and the application for registration of title under such
instrument is filed in the prescribed manner with the Controller
within six months from the execution of the instrument or within such
further period not exceeding six months in the aggregate as the
Controller on application made in the prescribed manner allows:
Provided that the instrument shall, on entry of its particulars in the
register under sub-section (1) or sub-section (2), have the effect from
the date of its execution
.
(4) The person registered as the proprietor of a design 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 absolutely to
assign, grant licenses as to, or otherwise deal with, the design and to
give effectual receipts for any consideration for any such assignment,
Page 11
licence or dealing:
Provided that any equities in respect of the design may be enforced in
like manner as in respect of any other moveable property.
(5) Except in the case of an application made under section 31, a
document or instrument in respect of which no entry has been made
in the register in accordance with the provisions of sub-sections (1)
and (2) shall not be admitted in evidence in any court in proof of the
title to copyright in a design or to any interest therein, unless the
court, for reasons to be recorded in writing, otherwise directs.
31. (1) The Controller may, on the application in the prescribed
manner of any person aggrieved by the non-insertion in or omission
from the register of designs of any entry, or by any entry made
in such register without sufficient cause, or by any entry wrongly
remaining on such register, or by an error or defect in any entry in
such register, make such order for making, expunging or varying such
entry as he thinks fit and rectify the register accordingly.
Rectification of
Register
(2) The Controller may in any proceeding under this section, decide
any question
that may be necessary or expedient to decide in
connection with the rectification of a register.
(
3) An appeal shall lie to the High Court from any order of the
Controller under this section; and the Controller may refer any
application under this section to the High Court for decision, and the
High Court shall dispose of any application so referred.
(4) Any order of the Court rectifying a register shall direct that notice
of the rectification be served on the Controller in the prescribed
manner who shall upon the receipt of such notice rectify the register
accordingly.
(5) Nothing in this section, shall be deemed to empower the
Controller to make any such order canceling the registration of a
design as is provided for in section 19
.
CHAPTER VII
POWER AND DUTIES OF CONTROLLER
32. Subject to any rules in this behalf, the Controller in any
proceedings before him under this Act s hall have the powers of a
civil court for the purpose of receiving evidence, administering
oaths, enforcing the attendance of witnesses, compelling the
discovery and production of under documents, issuing commissions
for the examining of witnesses and awarding costs and such award
shall be executable in any court having jurisdiction as if it were a
decree of that court.
Powers of Controller
in Proceedings under
Act.
33. Where any discretionary power is by or under this Act given to
Controller, he shall not exercise that power adversely to the
Exercise of the
discretionary power by
Page 12
applicant for registration of a design without (if so required within the
prescribed time by the applicant) giving the applicant an opportunity
of being heard.
Controller.
34. The Controller may, in any case of doubt or difficulty arising
in the administration of any of the provisions of this Act, apply to the
Central Government for directions in the matter.
Power of Controller to
take directions of the
Central Government.
35. (1) The Controller may refuse to register a design of which
the use would, in his opinion, be contrary to public order or morality.
(2) An appeal shall lie to the High Court from an order of the
Controller under this section.
Refusal to register a
design in certain cases.
36. (1) Where an appeal is declared by this Act to lie from the
Controller to the High Court, the appeal shall be made within
three months of the date of the order passed by the Controller.
Appeals to the High
Court
(2) In calculating the said period of three months, the time (if any)
occupied in granting a copy of the order appealed against shall be
excluded.
(3) The High Court may, if it thinks fit, obtain the assistance of an
expert in deciding such appeals, and the decision of the High Court
shall be final.
(4) The High Court my make rules consistent with this Act as to
the conduct and procedure of all proceedings under this Act before it.
CHAPTER VIII
E
VIDENCE, ETC.
37. Subject to any rules made under section 44, in any proceeding under this before
the Controller, the evidence shall be given by affidavit in the absence of
directions by the Controller to the before the contrary; but in any case in which
the Controller thinks it right so to do he may to take evidence viva voce in lieu of or
in addition to evidence by affidavit or may allow any party to be cross examined on
the contents of his affidavit.
Evidence before the
Controller.
38. A certificate purporting to be under the hand of the Controller as to entry,
matter or thing which he is authorised by this Act, or any rules made thereunder to
make or do, shall be prima-facie evidence of the entry having been made, and of the
contents thereof, and of the matter or thing having been done or left undone.
Certificate of Controller to
be evidence.
39. Printed or written copies or extracts, purporting to be certified by
Controller and sealed with the seal of the Patent Office , of
documents in the Patent Office , and of or from registers and other
books kept there, shall be admitted in evidence in al courts in
India, and in all proceedings, Office without further proof for
production of the originals:
Provided that a court may, if it has reason to doubt the accuracy or authenticity of
the copies tendered in evidence, require the production of the originals or such
further proof as it considers necessary.
Evidence of
documents in patent office.
40. Any application, notice or other document authorized or
Application & notices by
Page 13
required to be left, made or given at the Patent Office or to the
Controller, or to any other person under this Act, may be sent by
post.
post.
41. (1) If any person , is by reason of infancy , Lunacy or other
disability, incapable of making any statement or doing anything
required or permitted by or under this Act, the lawful guardian,
committee or manager (if any) of the person subject to the disability,
or , if there be none , any person appointed by any court possessing
jurisdiction in respect of his property , may make such statement or a
statement as nearly corresponding thereto as circumstances permit,
and do such thing in the name and on behalf of the person subject to
the disability.
Declaration by
infant, lunatic,
etc.
(2) An appointment may be made by the court for the purposes of this
section upon the petition of any person acting on behalf of the person
subject to the disability or of any person interested in the making of
the statement or the doing of the thing.
42. (1) It shall not be lawful to insert-
(i) in any contract for or in relation to the sale or lease of an
article in respect of which a design is registered; or
(ii) in a licence to manufacture or use an article in respect of which a
design is registered; or
(iii) in a licence to package the article in respect of which a design is
registered, a condition the effect of which may be-
(a) to require the purchaser, lessee, or licensee to acquire from the
vendor, lessor, or licensor or his nominees , or to prohibit him from
acquiring or to restrict I in any manner or to any extent his right to
acquire from any person or to prohibit him from acquiring except
from the vendor, lessor, or licensor or his nominees any article other
than the article in respect of which a design is registered; or
(b) to prohibit the purchaser, lessee or licensee from using or to
restrict in any manner or to any extent the right of the purchaser,
lessee or licensee, to use an article other than the article in respect of
which a design is registered which is not supplied by the vendor,
lessor or licensor or his nominee,
and any such condition shall be void.
Avoidance of
certain restrictive
conditions.
(2) A condition of the nature referred to in clause (a) or clause (b) of
sub-section (1) shall not cease to be a condition failing within that
sub-section merely by reason of the fact that the agreement
containing it has been entered into separately, whether before or after
the contract relating to the sale, lease or licence of the article in
respect of which a design is registered.
(3) In proceeding against any person for any act in contravention of
section 22, it shall be a defence to prove that at the time of such
contravention there was in force a contract relating to the registered
design and containing a condition declared unlawful by this section:
Page 14
Provided that this sub-section shall not apply if the plaintiff is not a
party to the contract and proves to the satisfaction of the court that the
restrictive condition was inserted in the contract without his
knowledge and consent, express or implied.
(4) Nothing in this section shall-
(a) affect a condition in a contract by which a person is prohibited
from selling goods other than those of particular person;
(b) validate a contract which, but for this section, would be invalid;
(c) affect a condition in a contract for the lease of, or licence to use,
an article in respect of which a design is registered, by which the
lessor or licensor reserves to himself or his nominee the right to
supply such new parts of the article, in respect of which a design is
registered, as may be required or to put or keep it in repair;
(5) The provisions of this section shall also apply to contracts made
before the commencement of this Act if, and in so far as, any
restrictive conditions declared unlawful by this section continue in
force after the expiration of one year from such commencement
CHAPTER IX
AGENCY
43. (1) All applications and communications to the Controller under
this Act may be signed by , and all attendances upon the Controller
may be made by or through a legal practitioner or by or through an
agent whose name and address has been entered in the register of
patent agents maintained under section 125 of the Patents Act,
1970.
39 of 1970
(2) The Controller may, if he sees fit, require -
(a) any such agent to be resident in India;
(b) any person not residing in India either to employ an argent
residing in India;
(c) the personal signature or presence of any applicant or other
person.
CHAPTER X
POWERS ETC. OF CENTRAL GOVERNMENT
44. (1) Any person who has applied for protection for any design in the United
Kingdom or any of other convention countries or group of countries or countries
which are members of inter-governmental organisations, or his legal representative
or assignee shall, either alone or jointly with any other person, be entitled to claim
that the registration of the said design under this Act shall be in priority to other
applicants and shall have the same date as the date of the application in the United
Receiprocal arrangement
with the United Kingdom
and other convention
countries or group of
countries of
intergovernmental
Page 15
Kingdom or any of such other convention countries or group of countries or
countries
which are members of inter-governmental organisations, as the
case may be:
Provided that-
(a) the application is made within six months from the application for
protection in the United Kingdom or any of such other convention
Countries or group of countries or countries which are members of
inter-governmental organisations, as the case may be; and
(b) nothing in this section shall entitle the proprietor of the design to
recover damages for piracy of design, design happening prior to the
actual date on which the design is registered in India.
organisations.
(2) The registration of a design shall not be invalidated by reason
only of the exhibition or use of or the publication of a description or
representation of the design in India during the period specified in
this section as that within which the application may be made;
(3) The application for registration of a design of a design under this
section must be made in the same manner as an ordinary application
under this Act.
(4) Where it is made to appear to the Central Government that the
legislature of the United Kingdom or any such other convention
country or a country which is member of any group of countries or
inter-governmental organisation as may be notified by the Central
Government in this behalf has made satisfactory provision for the
protection of designs registered in India, the Central Government
may, by notification in the Official Gazette, direct that the provisions
of this section, with such variations or additions, if any, as may be
set out in such notification, shall apply for the protection of designs
registered in the United Kingdom or that other convention country or
such country which is member of any group of countries or inter-
governmental organisation, as the case may be.
Explanation- (1) For the purposes of this section, the expression
“convention countries”, “group of countries” or “inter-governmental
organisation” means, respectively, such countries, group of countries
or inter-governmental organisation to which the Paris Convention for
Protection of Industrial Property, 1883 as revised at Stockholm in
1967 and as amended in 1979 or the Final Act, embodying the
results of the Uruguay Round of Multilateral Trade Negotiations,
provided for the establishment of World Trade Organisation applies.
Explanation- (2) Where more than one application for protection
referred to in sub-section (1) have been made for similar protections
in the United Kingdom or one or more convention countries, group
of countries or countries which are members of inter-governmental
organisations, the period of six months referred to in clause (a) of
that sub-section, shall be reckoned from the date of which the earlier
or the earliest application , as the case may be, of such applications
has been made.
Page 16
45. The Central Government shall cause to be placed before both
House of Parliament once a year a report respecting the execution of
this Act by or under the Controller.
Report of the Controller to
be placed before Parliament.
46. Notwithstanding anything contained in this Act, the Controller
shall-
(a) Not disclose any information relating to the registration of a
design or any application relating to the registration of a design
under this Act, which he considers prejudicial to the interest of the
security of India; and
(b)
take any action regarding the cancellation of registration of
such designs registered under this Act which the Central
Government may, by notification in the Official Gazette, specify in
the interest of the interest of the security of India.
Explanation: - For the purposes of this section, the expression
“security of India” means any action necessary for the security of
Indian which relates to the application of any design registered under
this Act to any article used for war or applied directly or indirectly
for the purposes of military establishment or for the purposes of war
or other emergency in international relations.
Protection of
security of India.
47. (1) The Central Government may, by notification in the Official
Gazette, make rules for carrying out the purposes of this Act.
(2) In particular, and without prejudice to the generally of the
forgoing power, such rules may provide for all or any of the
following matters, namely:-
(a) the form of application, the manner of filing it at the Patent Office
and the fee to be accompanied with it, under sub-section (2) of
section 5;
(b) the time within which the registration is to be effected under sub-
section (5) of section 5;
(c) the classification of articles for registration under sub-section (1)
of section 6;
(d) the particulars of design to be published and the manner of
their publication under section 7;
(e) the manner of making claim under sub-section (1) of section 8;
(f) the manner of making application to the Controller under sub-
section (5) of section 8;
(g) the additional matters required to be entered in the register of
design and safegurard to be made in maintaining such register in
computer floppies or diskettes under sub-section (1) of section 10.
Power of Central
Government to make rules
Page 17
(h) the manner of making application and fee to be paid for
extension of the period of copy right and the fee payable thereto,
under sub-section (2) of section 11;
(i) the manner of making application for restoration of design and the
fee to be paid with it under sub-section (1) of section 12;
(j) the manner of verification of statement contained in an
application under sub-section (2) of section 12;
(k) the additional fee to be paid for restoration of the registration of
design under sub-section (1) of section 13;
(l) the provisions subject to which the right of the registered
proprietor shall be under sub-section (1) of section 14;
(m) the number of exact representation or specimen of the design to
be furnished to the Controller under clause (a) of sub-section (1) of
section 15;
(n) the mark, words or figures with which the article is to be marked
denoting that the design is registered under clause (b) of sub-section
(1) of section 15;
(o) the rules to dispense with or modify as regards any class or
description of articles any of the requirements of section 15 as to
marking under sub-section (2) of that section;
(p) the fee to be paid for and the manner of inspection under sub-
section (1) of section 17;
(q) the fee to be paid to obtain a certified copy of any design under
sub-section (2) of section 17;
(r) the fee on payment of which the Controller shall inform under
section 18;
(s) the form for giving notice to the Controller under clause (a) of the
proviso to section 21;
(t) the fee to be paid in respect of the registration of designs, and
application therefor, and in respect of other matters relating to
designs under sub-section (1) of section 24;
(u) the fee to be paid for giving certified copy of any entry in the
register under section 26;
(v) the fee to be accompanied with request in writing for correcting
any clerical error under section 29;
(w) the form in which an application for registration as proprietor
shall be made and the manner in which the Controller shall cause an
entry to be made in the register of the assignment, transmission or
Page 18
other instruments effecting the title under sub-section (1) of section
30;
(x) the form in which an application for title shall be made and the
manner in which the Controller shall cause notice of the interest to
be entered in the register of designs with particulars of the
instrument, if any, creating such interest under sub-section (2) of
section 30;
(y) the manner of filing an application for registration and for
making application for extension of time as referred to in sub-
section (3) of section 30;
(z) the manner of making application to the Controller for
rectification of register under sub-section (1) of section 31;
(za) the manner in which the notice of rectification shall be served
on the Controller under sub-section (4) of section 31;
(zb) the rules regulating the proceedings before the Controller under
section 32;
(zc) the time which shall be granted to the applicants for being heard
by the Controller under section 33;
(zd) the fee to be accompanied with an appeal under sub-section (1)
of section 36;
(ze) any other matter which is required to be, or may be, prescribed.
(3) The power to make rules under this section shall be subject to the
conditions of the rules being made after previous publication.
(4) Every rule made 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 session aforesaid, both House 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 Act.
CHAPTER XI
REPEAL AND SAVING
48. (1) The Designs Act, 1911 is hereby repealed.
2 of 1911
Repeal and savings.
(2) Without prejudice to the provisions contained in the General
10 of 1897.
Page 19
Clauses Act, 1897 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
Designs Act, 1911, shall, 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.
2 of 1911
(3) The provisions of this Act shall apply to any application for
registration of design pending at the commencement of this Act and
to any proceedings consequent thereon and to any registration granted
in pursuance thereof.
(4) Notwithstanding anything contained in this Act, any proceeding
pending in any court at the commencement of this Act may be
continued in that court as if this Act has not been passed.
(5) Notwithstanding anything contained in sub-section (2), the date of
expiration of the copyright in the design registered before the
commencement of this Act shall, subject to the provisions of this Act,
be the date immediately after the period of five years for which it was
registered or the date immediately after the period of five years for
which the extension of the period of copyright for a second period
from the expiration of the original period has been made.

patent amendment

2009-03-23T21:01:00.000-07:00

MINISTRY OF LAW AND JUSTICE
(Legislative Department)
New Delhi, the 5th April, 2005/Chaitra 15,1927 (Saka)
The following Act of Parliament received the assent of the President on
4th April, 2005, and is hereby published for general information:—
THE PATENTS (AMENDMENT) ACT, 2005
No. 15
OF
2005
[4th April, 2005.]
An Act further to amend the Patents Act, 1970.
BE
it enacted by Parliament in the Fifty-sixth Year of the Republic of India as
follows:—
1. (1) This Act may be called the Patents (Amendment) Act, 2005.
(2) Sub-clause (ii) of clause (a), and clause (b), of section 37, sections 41,42,47,59 to
63 (both inclusive) and 74 shall come into force on such date as the Central Government may,
by notification in the Official Gazette, appoint; and the remaining provisions of this Act shall
be deemed to have come into force on the 1st day of January, 2005.
39 of 1970
2. In section 2 of the Patents Act, 1970 (hereinafter referred to as the principal Act), in
sub-section (1),—
(a) after clause (ab), the following clause shall be inserted, namely:—
'(aba) "Budapest Treaty" means the Budapest Treaty on the International
Recognition of the Deposit of Micro-organisms for the Purposes of Patent
Short title
and
commence-
ment.
Amendment
of section 2.
Page 2
Amendment
of section 3
2_____________THE GAZETTE OF INDIA EXTRAORDINARY __________ [
PART
II—
Procedure done at Budapest on 28th day of April, 1977, as amended and modified
from time to time;';
(b) in clause (d), for the words, brackets and figures "notified as such under sub
section (1) of section 133", the words and figures "referred to as a convention country
in section 133" shall be substituted;
(c) clause (g) shall be omitted;
(d) in clause (h),—
(i) in sub-clause (iii), after the words and figures "the Companies Act,
1956", the word "; or" shall be inserted;
(ii) after sub-clause (iii), the following sub-clause shall be inserted,
namely:—
"(iv) by an institution wholly or substantially financed by the
Government;";
(iii) the words "and includes the Council of Scientific and Industrial
Research and any other institution which is financed wholly or for the major part
by the said Council;" shall be omitted;
(e) for clause (i), the following clause shall be substituted, namely:—
'(i) "High Court", in relation to a State or Union territory, means the High
Court having territorial jurisdiction in that State or Union territory, as the case
maybe;';
(f) for clause (ja), the following clause shall be substituted, namely:—
(ja) "inventive step" means a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic significance or
both and that makes the invention not obvious to a person skilled in the art;';
(g) for clauses (/) and (m), the following clauses shall be substituted, namely:—
'(l) "new invention" means any invention or technology which has not
been anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application with complete
specification, i.e. the subject matter has not fallen in public domain or that it does
not form part of the state of the art;
'(la) "Opposition Board" means an Opposition Board constituted under
sub-section (3) of section 25;
(m) "patent" means a patent for any invention granted under this Act';
(h) after clause (t), the following clause shall be inserted, namely:—
(ta) "pharmaceutical substance" means any new entity involving one or
more inventive steps;'.
3. In section 3 of the principal Act, for clause (d), the following shall be substitued,
namely:—
"(d) the mere discovery of a new form of a known substance which does not
result in the enhancement of the known efficacy of that substance or the mere discovery
of any new property or new use for a known substance or of the mere use of a known
process, machine or apparatus unless such known process results in a new product or
employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance shall be considered to be the
same substance, unless they differ significantly in properties with regard to efficacy;".
1 of 1956
Page 3
SEC.l]__________ THEGAZETTE OF INDIA EXTRAORDINARY _______________3
4. Section 5 of the principal Act shall be omitted.
5. In section 7 of the principal Act,—
(a) after sub-section (1A) the following sub-section shall be inserted, namely:—
"(1B) The filing date of an application referred to in sub-section (1A) and
its complete specification processed by the patent office as designated office or
elected office shall be the international filing date accorded under the Patent
Cooperation Treaty.";
(b) in sub-section (3), for the word "owner", the word "person" shall be
substituted;
(c) for sub-section (4), the following sub-section shall be substituted,
namely:—
"(4) Every such application (not being a convention application or an
application filed under the Patent Cooperation Treaty designating India) shall be
accompanied by a provisional or a complete specification.".
6. In section 8 of the principal Act,—
(a) in sub-section (1),—
(i) for the words "within such period as the Controller may, for good and
sufficient reasons, allow", the words "within the prescribed period as the Controller
may allow" shall be substituted;
(ii) in clause (b), for the words "up to the date of the acceptance of his
complete specification filed in India", the words "up to the date of grant of patent
in India" shall be substituted;
(b) for sub-section (2), the following sub-section shall be substituted,
namely:—
"(2) At any time after an application for patent is filed in India and till the
grant of a patent or refusal to grant of a patent made thereon, the Controller may
also require the applicant to furnish details, as may be prescribed, relating to the
processing of the application in a country outside India, and in that event the
applicant shall furnish to the Controller information available to him within such
period as may be prescribed.".
7. In section 9 of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(1) Where an application for a patent (not being a convention application
or an application filed under the Patent Cooperation Treaty designating India) is
accompanied by a provisional specification, a complete specification shall be
filed within twelve months from the date of filing of the application, and if the
complete specification is not so filed, the application shall be deemed to be
abandoned.";
(b) in sub-section (2), the following proviso shall be inserted at the end,
namely:—
"Provided that the period of time specified under sub-section (1) shall be
reckoned from the date of filing of the earliest provisional specification.";
(c) for sub-section (3), the following sub-section shall be substituted,
namely.—
"(3) Where an application for a patent (not being a convention application
or an application filed under the Patent Cooperation Treaty designating India) is
accompanied by a specification purporting to be a complete specification, the
Controller may, if the applicant so requests at any time within twelve months
from the date of filing of the application, direct that such specification shall be
treated, for the purposes of this Act, as a provisional specification and proceed
with the application accordingly.";
(d) in sub-section (4), for the words "the acceptance of the complete specification",
the words "grant of patent" shall be substituted.
Omission of
section 5
Amendment
of section 7
Amendment
of section 8
Amendment
of section 9
Page 4
Amendment
of section
10
Amendment
of section
11
Amendment
of section
11A
4 ________
THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
8. In section 10 of the principal Act,—
(a) in sub-section (3), for the words "before the acceptance of the application",
the words "before the application is found in order for grant of a patent" shall be
substituted;
(b) in sub-section (4), in the proviso,—
(i) in clause (ii), for the words "the material to an authorised depository
institution as may be notified by the Central Government in the Official Gazette",
the words "the material to an international depository authority under the
Budapest Treaty" shall be substituted;
(ii) for sub-clause (A), the following sub-clause shall be substituted,
namely:—
"(A) the deposit of the material shall be made not later than the date
of filing the patent application in India and a reference thereof shall be
made in the specification within the prescribed period;";
(c) for sub-section (4A), the following sub-section shall be substituted,
namely:—
"(4A) In case of an international application designating India, the title,
description, drawings, abstract and claims filed with the application shall be
taken as the complete specification for the purposes of this Act.".
9. In section 11 of the principal Act,—
(a) after sub-section (3), the following sub-section shall be inserted, namely:—
"(3A) Where a complete specification based on a previously filed
application in India has been filed within twelve months from the date of that
application and the claim is fairly based on the matter disclosed in the previously
filed application, the priority date of that claim shall be the date of the previously
filed application in which the matter was first disclosed.";
(b) in sub-section (6), after the brackets and figure "(3),", the brackets, figure and
letter "(3A)," shall be inserted.
10. In section 11A of the principal Act,—
(a) for sub-sections (1) to (3), the following sub-sections shall be substituted,
namely:—
"(1) Save as otherwise provided, no application for patent shall ordinarily
be open to the public for such period as may be prescribed.
(2) The applicant may, in the prescribed manner, request the Controller to
publish his application at any time before the expiry of the period prescribed
under sub-section (1) and subject to the provisions of sub-section (3), the
Controller shall publish such application as soon as possible.
(3) Every application for a patent shall, on the expiry of the period specified
under sub-section (1), be published, except in cases where the application—
(a) in which secrecy direction is imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified
under sub-section (1).";
(b) in sub-section (4), for the words "of eighteen months", the words, brackets
and figure "prescribed under sub-section (1)" shall be substituted;
Page 5
SEC
.1] __________THEGAZETTE OF INDIA EXTRAORDINARY_______________ 5
(c) after sub-section (6), the following sub-section shall be inserted, namely:—
"(7) On and from the date of publication of the application for patent and
until the date of grant of a patent in respect of such application, the applicant
shall have the like privileges and rights as if a patent for the invention had been
granted on the date of publication of the application:
Provided that the applicant shall not be entitled to institute any proceedings
for infringement until the patent has been granted:
Provided further that the rights of a patentee in respect of applications
made under sub-section (2) of section 5 before the 1st day of January, 2005 shall
accrue from the date of grant of the patent:
Provided also that after a patent is granted in respect of applications made under
sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable
royalty from such enterprises which have made significant investment and were
producing and marketing the concerned product prior to the 1st day of January, 2005
and which continue to manufacture the product covered by the patent on the date of
grant of the patent and no infringement proceedings shall be instituted against such
enterprises.".
11. In section 11B of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(1) No application for a patent shall be examined unless the applicant or
any other interested person makes a request in the prescribed manner for such
examination within the prescribed period.";
(b) sub-section (2) shall be omitted;
(c) for sub-section (3), the following sub-section shall be substituted,
namely:—
"(3) In case of an application in respect of a claim for a patent filed under
sub-section (2) of section 5 before the 1st day of January, 2005 a request for its
examination shall be made in the prescribed manner and within the prescribed
period by the applicant or any other interested person.";
(d) in sub-section (4),—
(i) the words, brackets and figure "or sub-section (2)" shall be omitted;
(ii) for the proviso, the following proviso shall be substituted, namely:—
"Provided that—
(i) the applicant may, at any time after filing the application but
before the grant of a patent, withdraw the application by making a
request in the prescribed manner; and
(ii) in a case where secrecy direction has been issued under
section 35, the request for examination may be made within the
prescribed period from the date of revocation of the secrecy
direction.".
12. In section 12 of the principal Act,—
(a) in sub-section (1), for the words, brackets, figures and letter "under sub
section (1) or sub-section (2) or sub-section (3) of section 11B, the application and
specification and other documents shall be referred to by the Controller", the words,
brackets, figures and letter "under sub-section (1) or sub-section (3) of section 11B,
the application and specification and other documents related thereto shall be referred
at the earliest by the Controller" shall be substituted;
(b) in sub-section (2), for the words "a period of eighteen months from the
date of such reference", the words "such period as may be prescribed" shall be
substituted.
13. In section 13 of the principal Act, in sub-section (3), for the words "it has been
accepted", the words "the grant of a patent" shall be substituted.
Amendment
of section
11B
Amendment
of section
12.
Amendment
of section
13
Page 6
Substitution
of new
sections for
sections 14
and 15.
Consideration
of the report
of examiner
by Controller.
Power of
Controller to
refuse or
require
amended
applications,
etc., in
certain cases.
Amendment
of section
16.
Amendment
of section 17.
Amendment
of section 18.
Amendment
of section
19.
Substitution
of new
section for
section 21.
Time for
putting
application
in order for
grant.
6 ____________THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
14. For sections 14 and 15 of the principal Act, the following sections shall be
substituted, namely:—
"14. Where, in respect of an application for a patent, the report of the examiner
received by the Controller is adverse to the applicant or requires any amendment of the
application, the specification or other documents to ensure compliance with the
provisions of this Act or of the rules made thereunder, the Controller, before proceeding
to dispose of the application in accordance with the provisions hereinafter appearing,
shall communicate as expeditiously as possible the gist of the objections to the applicant
and shall, if so required by the applicant within the prescribed period, give him an
opportunity of being heard.
15. Where the Controller is satisfied that the application or any specification or
any other document filed in pursuance thereof does not comply with the requirements
of this Act or of any rules made thereunder, the Controller may refuse the application or
may require the application, specification or the other documents, as the case may be,
to be amended to his satisfaction before he proceeds with the application and refuse
the application on failure to do so.".
15. In section 16 of the principal Act,—-
(a) in sub-section (1), for the words "before the acceptance of the complete
specification", the words "before the grant of the patent" shall be substituted;
(b) for the Explanation, the following Explanation shall be substituted,
namely:—
"Explanation-For the purposes of this Act, the further application and
the complete specification accompanying it shall be deemed to have been filed
on the date on which the first mentioned application had been filed, and the
further application shall be proceeded with as a substantive application and be
examined when the request for examination is filed within the prescribed period.".
16. In section 17 of the principal Act, in sub-section (1), for the words "before acceptance
of the complete specification", the words "before the grant of the patent" shall be substituted.
17. In section 18 of the principal Act,—
(a) in sub-section (1), for the words "to accept the complete specification", the
words "the application" shall be substituted;
(b) sub-section (4) shall be omitted.
18. In section 19 of the principal Act, in sub-section (1), for the words and figures "by
the foregoing provisions of this Act or of proceedings under section 25", the words "under
this Act" shall be substituted.
19. For section 21 of the principal Act, the following section shall be substituted,
namely:—
"21. (1) An application for a patent shall be deemed to have been abandoned
unless, within such period as may be prescribed, the applicant has complied with all the
requirements imposed on him by or under this Act, whether in connection with the
complete specification or otherwise in relation to the application from the date on
which the first statement of objections to the application or complete specification or
other documents related thereto is forwarded to the applicant by the Controller.
Explanation.-Where the application for a patent or any specification or, in the
case of a convention application or an application filed under the Patent Cooperation
Page 7
SEC.l] __________ THE GAZETTE OF INDIA EXTRAORDINARY
___________ 7
Treaty designating India any document filed as part of the application has been returned
to the applicant by the Controller in the course of the proceedings, the applicant shall
not be deemed to have complied with such requirements unless and until he has re-
filed it or the applicant proves to the satisfaction of the Controller that for the reasons
beyond his control such document could not be re-filed.
(2) If at the expiration of the period as prescribed under sub-section (/),—
(a) an appeal to the High Court is pending in respect of the application for
the patent for the main invention; or
(b) in the case of an application for a patent of addition, an appeal to the
High Court is pending in respect of either that application or the application for
the main invention, the time within which the requirements of the Controller shall
be complied with shall, on an application made by the applicant before the
expiration of the period as prescribed under sub-section (1), be extended until
such date as the High Court may determine.
(3) If the time within which the appeal mentioned in sub-section (2) may be
instituted has not expired, the Controller may extend the period as prescribed under
sub-section (1), to such further period as he may determine:
Provided that if an appeal has been filed during the said further period, and the
High Court has granted any extension of time for complying with the requirements of
the Controller, then the requirements may be complied with within the time granted by
the Court.".
20. Sections 22 to 24 of the principal Act shall be omitted.
21. Chapter IVA of the principal Act shall be omitted.
22. In Chapter V of the principal Act, for the Chapter heading "
OPPOSITION TO GRANT OF
PATENT
", the Chapter heading "
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
" shall be
substituted.
23. For sections 25 and 26 of the principal Act, the following sections shall be substituted,
namely:—
"25. (1) Where an application for a patent has been published but a patent has
not been granted, any person may, in writing, represent by way of opposition to the
Controller against the grant of patent on the ground—
(a) that the applicant for the patent or the person under or through whom
he claims, wrongfully obtained the invention or any part thereof from him or from
a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent
made in India on or after the 1 st day of January, 1912; or (ii) in India or
elsewhere, in any other document: Provided that the ground specified
in sub-clause (ii) shall not be available where such publication does
not constitute an anticipation of the invention by virtue of sub-section (2)
or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification published on or
after the priority date of the applicant's claim and filed in pursuance of an
application for a patent in India, being a claim of which the priority date is earlier
than that of the applicant's claim;
Omission of
sections 22
to 24
Omission of
Chapter IVA
Substitution
of new
heading for
heading of
Chapter V
Substitution
of new
sections for
sections 25
and 26
Opposition
to the
patent
Page 8
8_____________THE GAZETTE OF INDIA EXTRAORDINARY __________[
PART
II—
(d) that the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before the priority
date of that claim.
Explanation —For the purposes of this clause, an invention relating to a
process for which a patent is claimed shall be deemed to have been publicly
known or publicly used in India before the priority date of the claim if a product
made by that process had already been imported into India before that date
except where such importation has been for the purpose of reasonable trial or
experiment only;
(e) that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive step, having
regard to the matter published as mentioned in clause (b) or having regard to
what was used in India before the priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe
the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any material
particular was false to his knowledge;
(i) that in the case of convention application, the application was not made
within twelve months from the date of the first application for protection for the
invention made in a convention country by the applicant or a person from whom
he derives title;
(j) that the complete specification does not disclose or wrongly mentions
the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete
specification is anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere,
but on no other ground and the Controller shall, if requested by such person for being heard,
hear him and dispose of such representation in such manner and within such period as may
be prescribed.
(2) At any time after the grant of patent but before the expiry of a period of one
year from the date of publication of grant of a patent, any person interested may give
notice of opposition to the Controller in the prescribed manner on any of the following
grounds, namely:—
(a) that the patentee or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person
under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a
patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not be
available where such publication does not constitute an anticipation of
the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification published on or
after the priority date of the claim of the patentee and filed in pursuance of an
application for a patent in India, being a claim of which the priority date is earlier
than that of the claim of the patentee;
(d) that the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before the priority
date of that claim.
Explanation.—For the purposes of this clause, an invention relating to a
process for which a patent is granted shall be deemed to have been publicly
Page 9
SEC
. 1]__________THE GAZETTE OF INDIA EXTRAORDINARY ______________ 9
known or publicly used in India before the priority date of the claim if a product
made by that process had already been imported into India before that date
except where such importation has been for the purpose of reasonable trial or
experiment only;
(e) that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive step, having
regard to the matter published as mentioned in clause (b) or having regard to
what was used in India before the priority date of the claim;
(f) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe
the invention or the method by which it is to be performed;
(h) that the patentee has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any material
particular was false to his knowledge;
(i) that in the case of a patent granted on convention application, the
application for patent was not made within twelve months from the date of the
first application for protection for the invention made in a convention country or
in India by the patentee or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions
the source and geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere,
but on no other ground.
(3) (a) Where any such notice of opposition is duly given under sub-section (2),
the Controller shall notify the patentee.
(b) On receipt of such notice of opposition, the Controller shall, by order in
writing, constitute a Board to be known as the Opposition Board consisting of such
officers as he may determine and refer such notice of opposition along with the
documents to that Board for examination and submission of its recommendations to
the Controller.
(c) Every Opposition Board constituted under clause (b) shall conduct the
examination in accordance with such procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition Board and after giving
the patentee and the opponent an opportunity of being heard, the Controller shall
order either to maintain or to amend or to revoke the patent.
(5) While passing an order under sub-section (4) in respect of the ground
mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall not take
into account any personal document or secret trial or secret use.
(6) In case the Controller issues an order under sub-section (4) that the patent
shall be maintained subject to amendment of the specification or any other document,
the patent shall stand amended accordingly.
26. (1) Where in any opposition proceeding under this Act the Controller finds
that—
(a) the invention, so far as claimed in any claim of the complete specification,
was obtained from the opponent in the manner set out in clause (a) of sub
section (2) of section 25 and revokes the patent on that ground, he may, on
request by such opponent made in the prescribed manner, direct that the patent
shall stand amended in the name of the opponent;
(b) a part of an invention described in the complete specification was so
obtained from the opponent, he may pass an order requiring that the specification
be amended by the exclusion of that part of the invention.
(2) Where an opponent has, before the date of the order of the Controller requiring
the amendment of a complete specification referred to in clause (b) of sub-section (1),
In cases of
"obtaining"
Controller
may treat the
patent as the
patent of
opponent.
Page 10
Omission of
section 27
Amendment of
section 28
Amendment
of section 31.
Amendment
of section 34.
Amendment
of section 35.
Amendment
of section 36.
Amendment of
section 37.
Substitution of
new section
for section 39.
Residents not
to apply for
patents
outside India
without prior
permission.
10 __________ THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
filed an application for a patent for an invention which included the whole or a part of
the invention held to have been obtained from him and such application is pending, the
Controller may treat such application and specification in so far as they relate to the
invention held to have been obtained from him, as having been filed, for the purposes
of this Act relating to the priority dates of claims of the complete specification, on the
date on which the corresponding document was or was deemed to have been filed by
the patentee in the earlier application but for all other purposes the application of the
opponent shall be proceeded with as an application for a patent under this Act.".
24. Section 27 of the principal Act shall be omitted.
25. In section 28 of the principal Act,—
(a) for sub-section (4), the following sub-section shall be substituted, namely:—
"(4) A request or claim under the foregoing provisions of this section shall
be made before the grant of patent.";
(b) sub-section (5) shall be omitted;
(c) in sub-section (6), for the words, brackets and figure "Subject to the provisions
of sub-section (5), where", the word "Where" shall be substituted.
26. In section 31 of the principal Act, for the words "not later than six months", the
words "not later than twelve months" shall be substituted.
27. In section 34 of the principal Act, the words "to accept complete specification for a
patent or" shall be omitted.
28. In section 35 of the principal Act, in sub-section (3), for the words "acceptance of
complete specification", the words "grant of patent" shall be substituted.
29. In section 36 of the principal Act, in sub-section (1), for the words "twelve months",
the words "six months" shall be substituted.
30. In section 37 of the principal Act,—
(a) in sub-section (1),—
(i) in clause (a), for the words "to accept", the words "to grant" shall be
substituted;
(ii) for the proviso, the following proviso shall be substituted, namely:—
"Provided that the application may, subject to the directions, proceed up to
the stage of grant of the patent, but the application and the
specification found to be in order for grant of the patent shall not be
published, and no patent shall be granted in pursuance of that application.";
(b) in sub-section (2), for the words "is accepted", the words "is found to be in
order for grant of the patent" shall be substituted.
31. For section 39 of the principal Act, the following section shall be substituted,
namely:—
"39. (1) No person resident in India shall, except under the authority of a written
permit sought in the manner prescribed and granted by or on behalf of the Controller,
make or cause to be made any application outside India for the grant of a patent for an
invention unless—
(a) an application for a patent for the same invention has been made in
India, not less than six weeks before the application outside India; and
(b) either no direction has been given under sub-section (1) of section 35
in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall dispose of every such application within such period as
may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic energy,
the Controller shallnotgrantpermitwithoutthe prior consentof the CentralGovernment.
Page 11
SEC.1]___________THEGAZETTE OF INDIA EXTRAORDINARY ______________11
(3) This section shall not apply in relation to an invention for which an application
for protection has first been filed in a country outside India by a person resident
outside India.".
32. In Chapter VIII of the principal Act, for the Chapter heading "
GRANT AND SEALING OF
PATENTS AND RIGHTS CONFERRED THEREBY
", the Chapter heading "
GRANT OF PATENTS AND RIGHTS
CONFERRED THEREBY
" shall be substituted.
33. For section 43 of the principal Act, the following section shall be substituted,
namely:—
"43. (1) Where an application for a patent has been found to be in order for grant
of the patent and either—
(a) the application has not been refused by the Controller by virtue of any
power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the
provisions of this Act,
the patent shall be granted as expeditiously as possible to the applicant or, in the case
of a joint application, to the applicants jointly, with the seal of the patent office and the
date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has
been granted and thereupon the application, specification and other documents related
thereto shall be open for public inspection.".
34. In section 44 of the principal Act, for the word "sealed", at both the places where it
occurs, the word "granted" shall be substituted.
35. In section 45 of the principal Act, in sub-section (3), for the words "the date of
advertisement of the acceptance of the complete specification", the words "the date of
publication of the application" shall be substituted.
36. In section 48 of the principal Act, the proviso shall be omitted.
37. In section 52 of the principal Act,—
(a) in sub-section (1),—
(i) for the opening words "Where a patent has been revoked", the words
and figures "Where the patent has been revoked under section 64" shall be
substituted;
(ii) for the word "court", wherever it occurs, the words "Appellate Board
or court" shall be substituted;
(b) in sub-section (2), for the word "court", occurring at both the places, the
words "Appellate Board or court" shall be substituted.
38. In section 53 of the principal Act,—
(a) after sub-section (1), the following Explanation shall be inserted, namely:—
"Explanation.—For the purposes of this sub-section, the term of patent
in case of International applications filed under the Patent Cooperation Treaty
designating India, shall be twenty years from the international filing date accorded
under the Patent Cooperation Treaty.";
(b) in sub-section (2), for the words "or within that period as extended under this
section", the words "or within such extended period as may be prescribed" shall be
substituted;
(c) sub-section (3) shall be omitted.
39. In section 54 of the principal Act,—
(a) in sub-section (3), for the words "complete specification", occurring at both
the places, the word "application" shall be substituted;
Substitution
of heading of
Chapter VIII.
Substitution of
new section
for section
43. Grant of
patents.
Amendment
of section 44.
Amendment
of section 45.
Amendment
of section 48
Amendment
of section 52.
Amendment
of section 53.
Amendment
of section
54.
Page 12
Amendment
of section
57.
Substitution
of new
section for
section 58
Amendment
of
specification
before
Appellate
Board or
High Court.
Amendment
of section 59
12____________ THE GAZETTE OF INDIA EXTRAORDINARY _________ [
PART
II—
(b) for sub-section (4), the following sub-section shall be substituted, namely:—"
"(4) A patent of addition shall not be granted before grant of the patent for
the main invention.".
40. In section 57 of the principal Act,—
(a) for sub-section (3), the following sub-section shall be substituted, namely:—
"(3) Any application for leave to amend an application for a patent or a
complete specification or a document related thereto under this section made
after the grant of patent and the nature of the proposed amendment may be
published.";
(b) in sub-section (4),—
(i) for the word "advertised", the word "published" shall be substituted;
(ii) for the word "advertisement", the word "publication" shall be
substituted;
(c) for sub-section (6), the following sub-section shall be substituted,
namely:—
"(6) The provisions of this section shall be without prejudice to the right
of an applicant for a patent to amend his specification or any other document
related thereto to comply with the directions of the Controller issued before the
grant of a patent.".
41. For section 58 of the principal Act, the following section shall be substituted,
namely:—
"58. (1) In any proceeding before the Appellate Board or the High Court for the
revocation of a patent, the Appellate Board or the High Court, as the case may be, may,
subject to the provisions contained in section 59, allow the patentee to amend his
complete specification in such manner and subject to such terms as to costs,
advertisement or otherwise, as the Appellate Board or the High Court may think fit, and
if in any proceedings for revocation the Appellate Board or the High Court decides that
the patent is invalid, it may allow the specification to be amended under this section
instead of revoking the patent.
(2) Where an application for an order under this section is made to the Appellate
Board or the High Court, the applicant shall give notice of the application to the
Controller, and the Controller shall be entitled to appear and be heard, and shall appear
if so directed by the Appellate Board or the High Court.
(3) Copies of all orders of the Appellate Board or the High Court allowing the
patentee to amend the specification shall be transmitted by the Appellate Board or the
High Court to the Controller who shall, on receipt thereof, cause an entry thereof and
reference thereto to be made in the register.".
42. In section 59 of the principal Act, for sub-section (2), the following sub-section
shall be substituted, namely:—
"(2) Where after the date of grant of patent any amendment of the specification
or any other documents related thereto is allowed by the Controller or by the Appellate
Board or the High Court, as the case may be,—
(a) the amendment shall for all purposes be deemed to form part of the
specification along with other documents related thereto;
(b) the fact that the specification or any other documents related thereto
has been amended shall be published as expeditiously as possible; and
Page 13
33 of 1962
SEC.l] __________ THEGAZETTE OF INDIA EXTRAORDINARY______________ 13
(c) the right of the applicant or patentee to make amendment shall not be
called in question except on the ground of fraud.".
43. In section 60 of the principal Act, in sub-section (1), for the words, brackets and
figures "prescribed period or within that period as extended under sub-section (3) of
section 53", the words, figures and brackets "period prescribed under section 53 or within
such period as may be allowed under sub-section (4) of section 142" shall be substituted.
44. In section 61 of the principal Act, in sub-section (1), for the words "advertise the
application", the words "publish the application" shall be substituted.
45. In section 62 of the principal Act,—
(a) in sub-section (1), for the word "advertisement", the word "publication" shall
be substituted;
(b) in sub-section (2), for the words "date of the advertisement", the words "date
of publication" shall be substituted.
46. In section 63 of the principal Act,—
(a) in sub-section (2), for the word "advertise", the word "publish" shall be
substituted;
(b) in sub-section (3), for the words "such advertisement", the words "such
publication" shall be substituted.
47. In section 64 of the principal Act, in sub-section (1), for the words "on the petition
of any person interested or of the Central Government or on a counter-claim in a suit for
infringement of the patent, be revoked by the High Court", the words "be revoked on a
petition of any person interested or of the Central Government by the Appellate Board or on
a counter-claim in a suit for infringement of the patent by the High Court" shall be substituted.
48. For section 65 of the principal Act, the following section shall be substituted,
namely:—
"65. (1) Where at any time after grant of a patent, the Central Government is
satisfied that a patent is for an invention relating to atomic energy for which no patent
can be granted under sub-section (1) of section 20 ofthe Atomic Energy Act, 1962, it
may direct the Controller to revoke the patent, and thereupon the Controller, after
giving notice, to the patentee and every other person whose name has been entered in
the register as having an interest in the patent, and after giving them an opportunity of
being heard, may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may allow the patentee
to amend the complete specification in such manner as he considers necessary instead
of revoking the patent.".
49. For section 68 of the principal Act, the following section shall be substituted,
namely:—
"68. An assignment of a patent or of a share in a patent, a mortgage, licence or the
creation of any other interest in a patent shall not be valid unless the same were in
writing and the agreement between the parties concerned is reduced to the form of a
document embodying all the terms and conditions governing their rights and obligations
and duly executed.".
50. In section 74 ofthe principal Act, for sub-section (2), the following sub-section
shall be substituted, namely:—
"(2) The Central Government may, by notification in the Official Gazette, specify
the name ofthe Patent Office.".
Amendment
of section 60
Amendment
of section 61
Amendment
of section 62
Amendment
of section 63
Amendment
of section 64
Substitution
of new
section for
section 65
Revocation
of patent or
amendment
of complete
specification
on directions
from
Government
in cases
relating to
atomic
energy
Substitution
of new
section for
section 68
Assignments,
etc , not to
be valid
unless in
writing and
duly
executed
Amendment
of section
74.
Page 14
Amendment
of section 78.
Amendment
of section 84.
Amendment
of section 87
Amendment
of section 90.
Insertion of
new section
92A.
Compulsory
licence for
export of
patented
pharmaceutical
products in
certain
exceptional
circumstances.
Amendment
of section
100.
14____________ THE GAZETTE OF INDIA EXTRAORDINARY __________ [
PART
II—
51. In section 78 of the principal Act,—
(a) in sub-section (4), for the word "advertised", the word "published" shall be
substituted;
(b) in sub-section (5), for the words "such advertisement", the words "such
publication" shall be substituted.
'52. In section 84 of the principal Act,—
(a) in sub-section (1), for the word "sealing", the word "grant" shall be substituted;
(b) in sub-section (6), the following Explanation shall be inserted at the end,
namely,—
'Explanation.—For the purposes of clause (iv), "reasonable period" shall be
construed as a period not ordinarily exceeding a period of six months.'.
53. In section 87 of the principal Act, in sub-section (1), for the words "shall advertise
the application in the Official Gazette", the words "shall publish the application in the official
journal" shall be substituted.
54. In section 90 of the principal Act, in sub-section (1), for clause (vii), the following
clauses shall be substituted, namely:—
"(vii) that the licence is granted with a predominant purpose of supply in the
Indian market and that the licensee may also export the patented product, if need be in
accordance with the provisions of sub-clause (iii) of clause (a) of sub-section (7) of
section 84;
(viii) that in the case of semi-conductor technology, the licence granted is to
work the invention for public non-commercial use;
(ix) that in case the licence is granted to remedy a practice determined after
judicial or administrative process to be anti-competitive, the licensee shall be permitted
to export the patented product, if need be.".
55. After section 92 of the principal Act, the following section shall be inserted,
namely:—
'92A. (1) Compulsory licence shall be available for manufacture and export of
patented pharmaceutical products to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector for the concerned product to
address public health problems, provided compulsory licence has been granted by
such country or such country has, by notification or otherwise, allowed importation of
the patented pharmaceutical products from India.
(2) The Controller shall, on receipt of an application in the prescribed manner,
grant a compulsory licence solely for manufacture and export of the concerned
pharmaceutical product to such country under such terms and conditions as may be
specified and published by him.
(3) The provisions of sub-sections (1) and (2) shall be without prejudice to the
extent to which pharmaceutical products produced under a compulsory licence can be
exported under any other provision of this Act.
Explanation.—For the purposes of this section, "pharmaceutical products"
means any patented product, or product manufactured through a patented process, of
the pharmaceutical sector needed to address public health problems and shall be
inclusive of ingredients necessary for their manufacture and diagnostic kits required
for their use.'.
56. In section 100 of the principal Act, in sub-section (3), for the words "the acceptance
of the complete specification in respect of the patent", the words "grant of the patent" shall
be substituted.
Page 15
38 of 2002
38 of 2002.
38 of 2002.
38 of 2002.
SEC
.1] __________THEGAZETTE OF INDIA EXTRAORDINARY______________ 15
57. In section 105 of the principal Act, in sub-section (4), for the words "after the date
of advertisement of acceptance of the complete specification of a patent", the words "after
the publication of grant of a patent" shall be substituted.
58. In section 107A of the principal Act,—
(a) in clause (a),—
(i) for the words "using or selling", the words "using, selling or importing"
shall be substituted;
(ii) for the words "use or sale,", the words "use, sale or import" shall be
substituted;
(b) in clause (b), for the words "who is duly authorised by the patentee to sell or
distribute the product", the words "who is duly authorised under the law to produce
and sell or distribute the product" shall be substituted.
59. In section 113 of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(1) If in any proceedings before the Appellate Board or a High Court for
the revocation of a patent under section 64 and section 104, as the case may be,
the validity of any claim of a specification is contested and that claim is found by
the Appellate Board or the High Court to be valid, the Appellate Board or the
High Court may certify that the validity of that claim was contested in those
proceedings and was upheld.";
(b) for sub-section (3), the following sub-section shall be substituted, namely:—
"(3) Nothing contained in this section shall be construed as authorising
the courts or the Appellate Board hearing appeals from decrees or orders in suits
for infringement or petitions for revocation, as the case may be, to pass orders
for costs on the scale referred to therein.".
60. In section 116 of the principal Act fas substituted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (2), clause (c) shall be omitted.
61. In section 117A of the principal Act [as inserted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (2), for the words and figures "section 20, section 25,
section 27, section 28", the words, figures and brackets "section 20, sub-section (4) of
section 25, section 28" shall be substituted.
62. In section 117D of the principal Act [as inserted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (1), for the words, "for rectification of the register",
the words and figures "for revocation of a patent before the Appellate Board under section 64
and an application for rectification of the register" shall be substituted.
63. For section 117G of the principal Act [as inserted by the Patents (Amendment) Act,
2002], the following section shall be substituted, namely:—
" 117G All cases of appeals against any order or decision of the Controller and all
cases pertaining to revocation of patent other than on a counter-claim in a suit for
infringement and rectification of register pending before any High Court, shall be
transferred to the Appellate Board from such date as may be notified by the Central
Government in the Official Gazette and the Appellate Board may proceed with the
matter either de novo or from the stage it was so transferred.".
64. In section 120 of the principal Act, for the words, "ten thousand rupees", the words
"one lakh rupees" shall be substituted.
Amendment
of section
105
Amendment
of section
107A.
Amendment
of section
113.
Amendment
of section
116.
Amendment
of section
117A.
Amendment
of section
117D.
Substitution
of new
section for
section 117G
Transfer of
pending
proceedings
to Appellate
Board
Amendment
of section
120.
Page 16
Amendment
of section
122.
Amendment
of section
123.
Amendment
of section
126.
Substitution
of new
section for
section 133.
Convention
countries.
Amendment
of section
135.
Amendment
of section
138.
Amendment
of section
142.
Substitution
of new
section for
section 143.
Restrictions
upon
publication
of
specification.
16____________THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II
—
65. In section 122 of the principal Act, in sub-section (1), for the words "twenty
thousand rupees", the words "ten lakh rupees" shall be substituted.
66. In section 123 of the principal Act, for the words "ten thousand rupees in the case
of a first offence and forty thousand rupees", the words "one lakh rupees in the case of a first
offence and five lakh rupees" shall be substituted.
67. In section 126 of the principal Act,—
(a) in sub-section (1), in clause (c), sub-clause (i) shall be omitted;
(b) in sub-section (2), for the words, brackets and figures "the Patents
(Amendment) Act, 2002", the words, brackets and figures "the Patents (Amendment)
Act, 2005" shall be substituted.
68. For section 133 of the principal Act, the following section shall be substituted,
namely:—
"133. Any country, which is a signatory or party or a group of countries, union of
countries or inter-governmental organisations which are signatories or parties to an
international, regional or bi-lateral treaty, convention or arrangement to which India is
also a signatory or party and which affords to the applicants for patents in India or to
citizens of India similar privileges as are granted to their own citizens or citizens to their
member countries in respect of the grant of patents and protection of patent rights
shall be a convention country or convention countries for the purposes of this Act.".
69. In section 135 of the principal Act, after sub-section (2), the following sub-section
shall be inserted, namely:—
"(3) In case of an application filed under the Patent Cooperation Treaty
designating India and claiming priority from a previously filed application in India, the
provisions of sub-sections (1) and (2) shall apply as if the previously filed application
were the basic application:
Provided that a request for examination under section 11B shall be made only for
one of the applications filed in India.".
70. In section 138 of the principal Act, for sub-section (1), the following sub-section
shall be substituted, namely:—
"(1) Where a convention application is made in accordance with the provisions
of this Chapter, the applicant shall furnish, when required by the Controller, in addition
to the complete specification, copies of the specifications or corresponding documents
filed or deposited by the applicant in the patent office of the convention country as
referred to in section 133 verified to the satisfaction of the Controller, within the
prescribed period from the date of communication by the Controller.".
71. In section 142 of the principal Act, in sub-section (4), for the words "the complete
specification", the words "the application" shall be substituted.
72. For section 143 of the principal Act, the following section shall substituted,
namely:—
"143. Subject to the provisions of Chapter VII, an application for a patent, and
any specification filed in pursuance thereof, shall not, except with the consent of the
applicant, be published by the Controller before the expiration of the period prescribed
under sub-section (1) of section 11A or before the same is open to public inspection in
pursuance of sub-section (3) of section 11A or section 43.".
38 of 2002.
Page 17
SEC.l] __________ THEGAZETTE OF INDIA EXTRAORDINARY______________ 17
73. For section 145 of the principal Act, the following section shall substituted,
namely:—
"145. The Controller shall publish periodically an official journal which shall
contain such information as may be required to be published by or under the provisions
of this Act or any rule made thereunder.".
74. In section 151 of the principal Act,—
(a) in sub-section (1), for the words "the High Court", occurring at both the
places, the words "the High Court or the Appellate Board" shall be substituted;
(b) in sub-section (3), for the word "courts", the words "Appellate Board or the
courts, as the case may be," shall be substituted.
75.. Section 152 of the principal Act shall be omitted.
76. In section 159 of the principal Act,— (i)
in sub-section (2),—
(a) for clauses (ia) and (ib), the following clauses shall be substituted,
namely:—
"(ia) the period which the Controller may allow for filing of statement
and undertaking for in respect of applications under sub-section (1), the
period within which the details relating to processing of applications may
be filed before the Controller and the details to be furnished by the applicant
to the Controller under sub-section (2) of section 8;
(ib) the period within which a reference to the deposit of materials
shall be made in the specification under sub-clause (A) of clause (ii) of the
proviso to sub-section (4) of section 10;
(ic) the period for which application for patent shall not be open to
the public under sub-section (1) and the manner in which the applicant
may make a request to the Controller to publish his application under sub-
section (2) of section 11 A;
(id) the manner of making the request for examination for an
application for patent and the period within which such examination shall
be made under sub-sections (1) and (3) of section 11B;
(ie) the manner in which an application for withdrawal of an
application for grant of a patent shall be made and the period within which
a request for examination from the date of revocation of secrecy directions
shall be made under the proviso to sub-section (4) of section 11B.";
(b) in clause (ii), for the word "advertised", the word "published" shall be
substituted;
(c) for clause (v), the following clauses shall be substituted, namely:—
"(v) the manner in which and the period within which the Controller
shall consider and dispose off a representation under sub-section (1) of
section 25;
(va) the period within which the Controller is required to dispose off
an application under section 39;";
Substitution
of new
section for
section 145.
Publication
of official
journal.
Amendment
of section
151.
Omission
of section
152.
Amendment
of section
159.
Page 18
Omission of
section 163
Transitional
provision.
Repeal and
saving.
18____________THE GAZETTE OF INDIA EXTRAORDINARY [
PART
II—
SEC
. 1]
(ii) in sub-section (3), the following proviso shall be added at the end,
namely:—
"Provided that the Central Government may, if it is satisfied that the
circumstances exist which render it practically not possible to comply with such
condition of previous publication, dispense with such compliance.".
77. Section 163 of the principal Act shall be omitted.
78. (1) Notwithstanding the omission of Chapter IVA of the principal Act by section 21
of this Act, every application for the grant of exclusive marketing rights filed under that
Chapter before the 1st day of January, 2005, in respect of a claim for a patent covered under
sub-section (2) of section 5 of the principal Act, such application shall be deemed to be
treated as a request for examination for grant of patent under sub-section (3) of section 11B
of the principal Act, as amended by this Act.
(2) Every exclusive right to sell or distribute any article or substance in India granted
before the 1st day of January, 2005 shall continue to be effective with the same terms and
conditions on which it was granted.
(3) Without prejudice to any of the provisions of the principal Act, the applications in
respect of which exclusive rights have been granted before the 1 st day of January, 2005 shall
be examined for the grant of patent immediately on the commencement of this Act.
(4) All suits relating to infringement of the exclusive right granted before 1st day of
January, 2005 shall be dealt with in the same manner as if they were suits concerning
infringement of patents under Chapter XVIII of the principal Act.
(5) The examination and investigation required as carried out for the grant of exclusive
right shall not be deemed in any way to warrant the validity of any grant of exclusive right to
sell or distribute, and no liability shall be incurred by the Central Government or any officer
thereof by reason of, or in connection with, any such examination or investigation or any
report or other proceedings consequent thereon.
79. (1) The Patents (Amendment) Ordinance, 2004 is hereby repealed.
(2) Notwithstanding such repeal, anything done or any action taken under the principal
Act, as amended by the said Ordinance shall be deemed to have been done or taken under the
corresponding provisions of the principal Act, as amended by this Act.
T.K.VISWANATHAN,
Secy, to the Govt. of India.
Ord. 7 of
2004.

copyright act

2009-03-08T22:09:00.001-07:00

INDIAN COPYRIGHT ACT, 1957
INDIAN COPYRIGHT ACT, 1957
CHAPTER I
Preliminary
[4th June, 1957] An Act to amend and consolidate the law relating to copyright.
Be it enacted by Parliament in the Eighth Year of the Republic of India as follows:
1. Short title, extent and commencement. -(1) This Act may be called the Copyright Act, 1957.
(2) It extends to the whole of India.
(3) It shall come into force on such date2 as the Central Government may, by notification in the
Official Gazette, appoint.
2. Interpretation. -In this Act, unless the context otherwise requires,-
(a) "adaptation" means,-
(i) in relation to a dramatic work, the conversion of the work into a non-dramatic work;
(ii) in relation to a literary work or an artistic work, the conversion of the work into a dramatic work by
way of performance in public or otherwise;
(iii) in relation to a literary or dramatic work, any abridgement of the work or any version of the work in
which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for
reproduction in a book, or in a newspaper, magazine or similar periodical;3
(iv) in relation to a musical work, any arrangement or transcription of the work; 4 and
(v) 5 in relation to any work, any use of such work involving its re-arrangement or alteration;
(b) "work of architecture" means any building or structure having an artistic character or design, or
any model for such building or structure; 6
(c) "artistic work" means-
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;
(ii) work of architecture;7 and
(iii) any other work of artistic craftsmanship;
(d) "author' means,-
(i) in relation to a literary or dramatic work, the author of the work;
(ii) in relation to a musical work, the composer;
(iii) in relation to an artistic work other than a photograph, the artist;
(iv) in relation to a photograph, the person taking the photograph;
(v) in relation to a cinematograph8 or sound recording the producer; and
(vi) in relation to 9 [any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created;]
[(dd) 10 "broadcast" means communication to the public-
(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or
visual images; or
(ii) by wire, and includes a re-broadcast;]
(e) "calendar year' means the year commencing on the 1st day of January;
(f) 11 "cinematograph film" means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means and includes a sound recording
accompanying such visual recording and "cinematograph" shall be construed as including any work
produced by any process analogous to cinematography including video films;
(ff) 12 "communication to the public" means making any work available for being seen or heard or
otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing
copies of such work regardless of whether any member of the public actually sees, hears or
otherwise enjoys the work so made available.
Explanation.- For the purposes of this clause, communication through satellite or cable or any other
means of simultaneous communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to the public;
(ffa) 13 "composer', in relation to a musical work, means the person who composes the music
regardless of whether he records it in any form of graphical notation;
(ffb) 14 "computer" includes any electronic or similar device having information processing
capabilities;
(ffc) 15 "computer programme" means a set of instructions expressed in words, codes, schemes or in
any other form, including a machine readable medium, capable of causing a computer to perform a
particular task or achieve a particular result;
(ffd) 16 "copyright society" means a society registered under sub-section (3) of section 33
(g) "delivery", in relation to a lecture, includes delivery by means of any mechanical instrument or
17[broadcast] by;
(h) "dramatic work" includes any piece for recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting form of which is fixed in writing or otherwise but does not
include a cinematograph film;
[(hh) 18 "duplicating equipment" means any mechanical contrivance or device used or intended to be
used for making copies of any work;]
(i) "engravings" include etchings, lithographs, wood-cuts, prints and other similar works, not being
photographs;
(j) "exclusive licence" means a licence which confers on the licensee or on the licensee and persons
authorised by him, to the exclusion of all other persons (including the owner of the copyright), any
right comprised in the copyright in a work, and "exclusive licensee" shall be construed accordingly;
(k) "Government work" means a work which is made or published by or under the direction or control
of-
(i) the Government or any department of the Government;
(ii) any Legislature in India;
(iii) any court, tribunal or other judicial authority in India;
[(l) 19 "Indian work" means a literary, dramatic or musical work,-
(i) the author of which is a citizen of India; or
(ii) which is first published in India; or
(iii) the author of which, in the case of an unpublished work, is, at the time of the making of the work,
a citizen of India;]
(m) 20 "infringing copy" means,-
(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in
the form of a cinematographic film;
(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means;
(iii) in relation to a sound recording, any other recording embodying the same sound recording, made
by any means;
(iv) in relation to a programme or performance in which such a broadcast reproduction right or a
performer's right subsists under the provisions of this Act, the sound recording or a cinematographic
film of such programme or performance, if such reproduction, copy or sound recording is made or
imported in contravention of the provisions of this Act;
(n) "lecture" includes address, speech and sermon;
(o) 21 "literary work" includes computer programmes, tables and compilations including computer
35A "literary data bases ;
(p) 22 "musical work" means a work consisting of music and includes any graphical notation of such
work but does not include any words or any action intended to be sung, spoken or performed with the
music;
(q) 23 "performance", in relation to performer's right, means any visual or acoustic presentation made
live by one or more performers;
(qq) 24 "performer' includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake
charmer, a person delivering a lecture or any other person who makes a performance;
25 *****
(s) "photograph" includes photo-lithograph and any work produced by any process analogous to
photography but does not include any part of a cinematograph film;
(t) "plate" includes any stereotype or other plate, stone, block, mould, matrix, transfer, negative, 26
[duplicating equipment] or other device used or intended to be used for printing or reproducing copies
of any work, and any matrix or other appliance by which 27 Sound recording for the acoustic
presentation of the work are or are intended to be made;
(u) "prescribed" means prescribed by rules made under this Act;
(uu) 28"producer', in relation to a cinematograph film or sound recording, means a person who takes
the initiative and responsibility for making the work;
29 *****
30 >*****
(x) 31 "reprography" means the making of copies of a work, by photo-copying or similar means;
(xx) 32 "sound recording" means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the sounds are
produced;
(y) "work" means any of the following works, namely:-
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a 33[sound recording];
(z) "work of joint authorship" means a work produced by the collaboration of two or more authors in
which the contribution of one author is not distinct from the contribution of the other author or authors;
(za) "work of sculpture" includes casts and models.
3. Meaning of publication. 34 For the purposes of this Act, "publication" means making a work
available to the public by issue of copies or by communicating the work to the public.
4. When work not deemed to be published or performed in public. - Except in relation to
infringement of copyright, a work shall not be deemed to be published or performed in public, if
published, or performed in public, without the licence of the owner of the copyright.
5. When work deemed to be first published in India. - For the purposes of this Act, a work
published in lndia shall be deemed to be first published in India, notwithstanding that it has been
published simultaneously in some other country, unless such other country provides a shorter term of
copyright for such work; and a work shall be deemed to be published simultaneously in India and in
another country if the time between the publication in India and the publication in such other country
does not exceed thirty days or such other period as the Central Government may, in relation to any
specified country, determine.
6. Certain disputes to be decided by Copyright Board. 35 If any question arises,-
(a) whether a work has been published or as to the date on which a work was published for the
purposes of Chapter V, or
(b) whether the term of copyright for any work is shorter in any other country than that provided in
respect of that work under this Act, it shall be referred to the Copyright Board constituted under
section 11 whose decision thereon shall be final:
Provided that if in the opinion of the Copyright Board, the issue of copies or communication to the
public referred to in section 3 was of an insignificant nature it shall not be deemed to be publication
for the purposes of that section.
7. Nationality of author where the making of unpublished work is extended over considerable
period. -Where, in the case of an unpublished work, the making of the work is extended over a
considerable period, the author of the work shall, for the purposes of this Act, be deemed to be a
citizen of, or domiciled in, that country of which he was a citizen or wherein he was domiciled during
any substantial part of that period.
8. Domicile of corporations. - For the purposes of this Act, a body corporate shall be deemed to be
domiciled in India if it is incorporated under any law in force in India.
1. The Act has been extended to Goa, Daman and Diu by Reg. 12 of 1962, s. 3 and Sch.; to Dadra
and Nagar Haveli by Reg. 6 of 1963, s. 2 and Sch. 1; to Pondicherry by Reg. 7 of 1963, S. 3 and
Sch. 1; and brought into force in the State of Sikkim (w.e.f. 27-4-1979): vide Notification No. S.O.
226(E), dated 27-4-1979, Gazette of India, Extraordinary, Part II, Section 3(ii), page 430
2. 21st January, 1968, vide Notification No. S.R.O. 269, dated 21-1-1958, Gazette of India,
Extraordinary, Part II, Section 3, page 167
3. Certain words omitted by Act 38 of 1994, s. 2.
4. Ins. by Act 38 of 1994, s. 2.
5. Ins. by Act 38 of 1994, s. 2.
6. Subs. by Act 38 of 1994, s. 2, for `architectural work of art'.
7. Subs. by Act 38 of 1994, s. 2 for "architectural work of art',
8. Ins. by Act 38 of 1994. s. 2.
9. Ins. by Act 38 of 1994, s. 2.
10. Subs. by Act 23 of 1983, s. 3 (w.e.f. 9-8-1984)
11. Subs. by Act 38 of 1994, s. 2
12. Subs. by Act 38 of 1994, s. 2.
13. Subs. by Act 38 of 1994, s. 2.
14. Ins. by Act 38 of 1994, s. 2.
15. Ins. by Act 38 of 1994, s. 2.
16. Subs. by Act 38 of 1994, s. 2.
17. Subs. by Act 23 of 1983, s. 2, for "radio-diffusion" (w.9.f. 9-8-1984)
18. Subs. by Act 66 of 1984, s. 2 (w.e.f. 8-10-1984)
19. Subs. by s. 3, ibid for cl. (1) (w.e.f. 9.8.1984).
20. Subs. by Act 38 of 1994, s. 2.
21. Subs. by Act 38 of 1994, s. 2.
22. Subs. by Act 38 of 1994, s. 2
23. Subs. by Act 38 of 1994, s. 2
24. Subs. by Act 38 of 1994, s. 2.
25. Clause (r) omitted by Act 38 of 1994, s. 2.
26. Ins. by Act 68 of 1984, s. 2 (w.e.f. 8-10-1984).
27. Subs. by Act 38 of 1994, s. 2 for "records'
28. Ins. by Act 38 of 1994, s. 2.
29. Clause (v) omitted by Act 23 of 1983, s. 3 (w.e.f. 9.8.1984)
30. Clause (w) omitted by Act 38 of 1994, s. 2.
31. Subs. by Act 38 of 1994, s. 2.
32. Ins. by Act 38 of 1994, s. 2.
33. Subs. by Act 38 of 1994, s. 2. for "record".
34. Subs. by Act 38 of 1994, s. 3.
35. Subs. by Act 38 of 1994, s. 6
[35A. . Subs. by Act 49 of 1999, Section 2, for databasis (wef 15.1.2000)]
INDIAN COPYRIGHT ACT, 1957
CHAPTER II
Copyright Office and Copyright Board
9. Copyright Office. - (1) There shall be established for the purposes of this Act an office to be
called the Copyright Office.
(2) The Copyright Office shall be under the immediate control of the Registrar of Copyrights who
shall act under the superintendence and direction of the Central Government.
(3) There shall be a seal for the Copyright Office.
10. Registrar and Deputy Registrars of Copyrights . - (1) The Central Government shall appoint a
Registrar of Copyrights and may appoint one or more Deputy Registrars of Copyrights.
(2) A Deputy Registrar of Copyrights shall discharge under the superintendence and direction of the
Registrar of Copyrights such functions of the Registrar under this Act as the Registrar may, from time
to time, assign to him; and any reference in this Act to the Registrar of Copyrights shall include a
reference to a Deputy Registrar of Copyrights when so discharging any such functions.
11. Copyright Board. - (1) As soon as may be after the commencement of this Act, the Central
Government shall constitute a Board to be called the Copyright Board which shall consist of a
Chairman and not less than two or more than 36 [fourteen] other members.
(2) The Chairman and other members of the Copyright Board shall hold office for such period and on
such terms and conditions as may be prescribed.
(3) The Chairman of the Copyright Board shall be a person who is, or has been, a Judge 37 * * of a
High Court or is qualified for appointment as a Judge of a High Court.
(4) The Registrar of Copyrights shall be the Secretary of the Copyright Board and shall perform such
functions as may be prescribed.
12. Powers and procedure of Copyright Board. - (1) The Copyright Board shall, subject to any
rules that may be made under this Act, have power to regulate its own procedure, including the fixing
of places and times of its sittings:
Provided that the Copyright Board shall ordinarily hear any proceeding instituted before it under this
Act within the zone in which, at the time of the institution of the proceeding, the person instituting the
proceeding actually and voluntarily resides or carries on business or personally works for gain.
Explanation.- In this sub-section "zone" means a zone specified in section 15 of the States
Reorganisation Act, 1956.
(2) The Copyright Board may exercise and discharge its powers and functions through Benches
constituted by the Chairman of the Copyright Board from amongst its members, each Bench
consisting of not less than three members.
38 "Provided that, if the Chairman is of opinion that any matter of importance is required to be heard
by a larger bench, he may refer the matter to a special bench consisting of five members.";
(3) If there is a difference of opinion among the members of the Copyright Board or any Bench
thereof in respect of any matter coming before it for decision under this Act, the opinion of the
majority shall prevail:
39 Provided that where there is no such majority, the opinion of the Chairman shall prevail.
(4) The 40 [Chairman] may authorise any of its members to exercise any of the powers conferred on it
by section 74 and any order made or act done in exercise of those powers by the member so
authorised shall be deemed to be the order or act, as the case may be, of the Board.
(5) No member of the Copyright Board shall take part in any proceedings before the Board in respect
of any matter in which he has a personal interest.
(6) No act done or proceeding taken by the Copyright Board under this Act shall be questioned on
the ground merely of the existence of any vacancy in, or defect in the constitution of, the Board.
(7) The Copyright Board shall be deemed to be a civil court for the purposes of 41 [sections 345 and
346 of the Code of Criminal Procedure, 1973], and all proceedings before the Board shall be deemed
to be judicial proceedings within the meaning of sections 193 and 228 of the Indian Penal Code.
36. Subs. By Act 38 of 1994, s. 11 for "eight".
37. Certain words omitted by Act 38 of 1994, s. 11
38. Ins. by Act 38 of 1994, s. 12.
39. Subs. By Act 38 of 1994, s. 12.
40. Subs. By Act 38 of 1994, 5. 12, for `Copyright Board'
41. Subs. By Act 23 of 1983, s. 6, for certain words (w.e.f. 9-8-1984).
INDIAN COPYRIGHT ACT, 1957
CHAPTER III
Copyright
13. Works in which copyright subsists.- (1) Subject to the provisions of this section and the other
provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is
to say,-
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) 42[sound recordings;]
(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the
provisions of section 40 or section 41 apply, unless,-
(i) in the case of a published work, the work is first published in India, or where the work is first
published outside India, the author is at the date of such publication, or in a case where the author
was dead at that date, was at the time of his death, a citizen of India;
(ii) in the case of an unpublished work other than a 43 [work of architecture] the author is at the date
of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of 44 [work of architecture] the work is located in India.
Explanation.- in the case of a work of joint authorship, the conditions conferring copyright specified in
this sub-section shall be satisfied by all the authors of the work.
(3) Copyright shall not subsist-
(a) in any cinematograph film a substantial part of the film is an infringement of the copyright in any
other work;
(b) in any 45 [sound recording] made in respect of a literary, dramatic or musical work, if in making the
46 [sound recording], copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a 47 [sound recording] shall not affect the separate
copyright in any work in respect of which or a substantial part of which, the film, or as the case may
be, the 48 [sound recording] is made.
(5) In the case of a 49 [work of architecture] copyright shall subsist only in the artistic character and
design and shall not extent to processes or methods of construction.
14.50 Meaning of copyright.-For the purposes of this Act, "copyright" means the exclusive right
subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect
of a work or any substantial part thereof, namely:-
(a) in the case of a literary, dramatic or musical work, not being a computer programme, -
(i) to reproduce the work in any material form including the storing of it in any medium by electronic
means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation
to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme,-
(i) to do any of the acts specified in clause (a);
51A “(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme:
Provided that such commercial rental does not apply in respect of computer programmes where
the programme itself is not the essential object of the rental.”
(c) in the case of an artistic work,-
(i) to reproduce the work in any material form including depiction in three dimensions of a two
dimensional work or in two dimensions of a three dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in
sub-clauses (i) to (iv);
(d) In the case of cinematograph film, -
(i) to make a copy of the film, including a photograph of any image forming part thereof;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of whether such
copy has been sold or given on hire on earlier occasions;
(iii) to communicate the film to the public;
(e) In the case of sound recording, -
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording regardless of
whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.
Explanation : For the purposes of this section, a copy which has been sold once shall be deemed to
be a copy already in circulation.
15. Special provision regarding copyright in designs registered or capable of being registered
under the Designs Act,1911.-(1) Copyright shall not subsist under this Act in any design which is
registered under the 51*** Designs Act, 1911.
(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911, but
which has not been so registered, shall cease as soon as any article to which the design has been
applied has been reproduced more than fifty times by an industrial process by the owner of the
copyright or, with his license, by any other person.
16. No copyright except as provided in this Act.-No person shall be entitled to copyright or any
similar right in any work, whether published or unpublished, otherwise than under and in accordance
with the provisions of this Act or any other law for the time being in force, but nothing in this section
shall be constructed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.
42. Subs. by Act 38 of 1994, s. 12, for "records"
43. Subs. by Act 38 of 1994, s. 12, for `architecture work of arr'.
44. Subs. by Act 38 of 1994, s. 12, for "an architectural woek of art'.
45. Subs. by Act 38 of 1994, s. 12, for 'record'.
46. Subs. by Act 38 of 1994, s. 12, for 'rerord'.
47. Subs. by Act 38 of 1994, s. 12, for `record'.
48. Subs. by Act 38 of 1994, s. 12, for "record'.
49. Subs. by Act 38 of 1994, s. 2, for "architecture work act'.
50. Subs. by Act 38 of 1994, s. 14.
51. The words "Indian Patents and" omitted by Act 23 of 1983, s.7(w.e.f. 9-8-1984)
[51A. Subs by Act 49 of 1999, Section 3, for sub clause (ii) (wef 15.1.2000)]
INDIAN COPYRIGHT ACT, 1957
CHAPTER IV
Ownership of Copyright and the Rights of the Owner
17. First owner of copyright.-Subject to the provisions of this Act, the author of a work shall be the
first owner of the copyright therein
Provided that-
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar
periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first
owner of the copyright in the work in so far as the copyright relates to the publication of the work in
any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of
its being so published, but in all other respects the author shall be the first owner of the copyright in
the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait
drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of
any person, such person shall, in the absence of any agreement to the contrary, be the first owner of
the copyright therein;
(c) in the case of a work made in the course of the author s employment under a contract of service
or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the
absence of any agreement to the contrary, be the first owner of the copyright therein;
[(cc) 52 in the case of any address or speech delivered in public, the person who has delivered such
address or speech or if such person has delivered such address or speech on behalf of any other
person, such other person shall be the first owner of the copyright therein notwithstanding that the
person who delivers such address or speech, or, as the case may be, the person on whose behalf
such address or speech is delivered, is employed by any other person who arranges such address or
speech or on whose behalf or premises such address or speech is delivered;]
(d) in the case of a Government work, Government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein;
[(dd) 53 in the case of a work made or first published by or under the direction or control of any public
undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the
first owner of the copyright therein.
Explanation.- For the purposes of this clause and section 28A, "public undertaking" means-
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in section 617 of the Companies Act, 1956; or
(iii) a body corporate established by or under any Central, Provincial or State Act;]
(e) in the case of a work to which the provisions of section 41 apply, the international organisation
concerned shall be the first owner of the copyright therein.
18. Assignment of copyright. -(1) The owner of the copyright in an existing work or the prospective
owner of the copyright in a future work may assign to any person the copyright either wholly or
partially and either generally or subject to limitations and either for the whole term of the copyright or
any part thereof:
Provided that in the case of the assignment of copyright in any future work, the assignment shall take
effect only when the work comes into existence.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the
assignee as respects the rights so assigned, and the assignor as respects the rights not assigned,
shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act
shall have effect accordingly.
(3) In this section, the expression "assignee" as respects the assignment of the copyright in any
future work includes the legal representatives of the assignee, if the assignee dies before the work
comes into existence.
19.Mode of assignment.- [(1)]54 No assignment of the copyright in any work shall be valid unless it
is in writing signed by the assignor or by his duly authorised agent.
(2) 55 The assignment of copyright in any work shall identify such work, and shall specify the rights
assigned and the duration and territorial extent of such assignment.
(3) 56 The assignment of copyright in any work shall also specify the amount of royalty payable, if any,
to the author or his legal heirs during the currency of the assignment and the assignment shall be
subject to revision, extension or termination on terms mutually agreed upon by the parties.
(4)57 Where the assignee does not exercise the rights assigned to him under any of the other subsections
of this section within a period of one year from the date of assignment, the assignment in
respect of such rights shall be deemed to have lapsed after the expiry of the said period unless
otherwise specified in the assignment.
(5) 58 If the period of assignment is not stated, it shall be deemed to be five years from the date of
assignment.
(6) 59 If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend
within India.
(7) 60 Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section
(6) shall be applicable to assignments made before the coming into force of the Copyright
(Amendment) Act, 1994.
19A61 Disputes with respect to assignment of copyright.-(1) If an assignee fails to make sufficient
exercise of the rights assigned to him, and such failure is not attributable to any act or omission of the
assignor, then, the Copyright Board may, on receipt of a complaint from the assignor and after
holding such inquiry as it may deem necessary, revoke such assignment.
(2) If any dispute arises with respect to the assignment of any copyright the Copyright Board may, on
receipt of a complaint from the aggrieved party and after holding such inquiry as it considers
necessary, pass such order as it may deem fit including an order for the recovery of any royalty
payable:
Provided that the Copyright Board shall not pass any order under this sub-section to revoke the
assignment unless it is satisfied that the terms of assignment are harsh to the assignor in case the
assignor is also the author :
Provided further that no order of revocation of assignment under this sub-section, be made within a
period of five years from the date of such assignment.
20. Transmission of copyright in manuscript by testamentary disposition.-Where under a
bequest a person is entitled to the manuscript of a literary, dramatic or musical work, or to an artistic
work, and the work was not published before the death of the testator, the bequest shall, unless the
contrary intention is indicated in the testator's will or any codicil thereto, be construed as including the
copyright in the work in so far as the testator was the owner of the copyright immediately before his
death.
Explanation.- In this section, the expression "manuscript" means the original document embodying
the work, whether written by hand or not.
21. Right of author to relinquish copyright.-(1) The author of a work may relinquish all or any of
the rights comprised in the copyright in the work by giving notice in the prescribed form to the
Registrar of Copyrights and thereupon such rights shall, subject to the provisions of sub-section (3),
cease to exist from the date of the notice.
(2) On receipt of a notice under sub-section (1), the Registrar of Copyrights shall cause it to be
published in the Official Gazette and in such other manner as he may deem fit.
(3) The relinquishment of all or any of the rights comprised in the copyright in a work shall not affect
any rights subsisting in favour of any person on the date of the notice referred to in sub-section (1).
52. Ins. by s. 8, ibid. (w.e.f. 9-8-1984)
53. Ins. by Act 23 of 1983, s. 8 (w.e.f. 9-8-1984)
54. S. 19 re-numbered as sub-section (1) thereof by s. 9, ibid., (W.G.f. 9-8-1984)
55. (Subs. by Act 38 of 1994, s. 19.)
56. (Subs. by Act 38 of 1994, s. 19)
57. (Subs. by Act 38 of 1994, s. 19)
58. (Subs. by Act 38 of 1994, s. 19.)
59. (Subs. by Act 38 of 1994, s, 19.)
60. (Subs. by Act 38 of 1994, s. 19.)
61. Subs. by Act 38 of 1994, s. 19
INDIAN COPYRIGHT ACT, 1957
CHAPTER V
Term of Copyright
22. Term of copyright in published literary, dramatic, musical and artistic works.-Except as
otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or artistic
work (other than a photograph) published within the lifetime of the author until 62[sixty] years from the
beginning of the calendar year next following the year in which the author dies.
Explanation.- In this section the reference to the author shall, in the case of a work of joint authorship,
be construed as a reference to the author who dies last.
23. Term of copyright in anonymous and pseudonymous works.-(1) In the case of a literary,
dramatic, musical or artistic work (other than a photograph), which is published anonymously or
pseudonymously, copyright shall subsist until 63[sixty] years from the beginning of the calendar year
next following the year in which the work is first published :
Provided that where the identity of the author is disclosed before the expiry of the said period,
copyright shall subsist until 64[sixty] years from the beginning of the calendar year next following the
year in which the author dies.
(2) In sub-section (1), references to the author shall, in the case of an anonymous work of joint
authorship, be construed,-
(a) where the identity of one of the authors is disclosed, as references to that author;
(b) where the identity of more authors than one is disclosed, as references to the author who dies last
from amongst such authors.
(3) In sub-section (1) references to the author shall, in the case of a pseudonymous work of joint
authorship, be construed,-
(a) where the names of one or more (but not all) of the authors are pseudonymous and his or their
identity is not disclosed, as references to the author whose name is not a pseudonym, or, if the
names of two or more of the authors are not pseudonyms, as references to such of those authors
who dies last;
(b) where the names of one or more (but not all) of the authors are pseudonyms and the identity of
one or more of them is disclosed, as references to the author who dies last from amongst the authors
whose names are not pseudonyms and the authors whose names are pseudonyms and are
disclosed; and
(c) where the names of all the authors are pseudonyms and the identity of one of them is disclosed,
as references to the author whose identity is disclosed or if the identity of two or more of such
authors is disclosed, as references to such of those authors who dies last.
Explanation.- For the purposes of this section, the identity of an author shall be deemed to have been
disclosed, if either identity of the author is disclosed publicly by both the author and the publisher or
is otherwise established to the satisfaction of the Copyright Board by that author.
24. Term of copyright in the posthumous work.-(1) In the case of a literary, dramatic or musical
work or an engraving, in which copyright subsists at the date of the death of the author or, in the case
of any such work of joint authorship, at or immediately before the date of the death of the author who
dies last, but which, or any adaptation of which, has not been published before that date, copyright
shall subsist until 65[sixty] years from the beginning of the calendar year next following the year in
which the work is first published or, where an adaptation of the work is published in any earlier year,
from the beginning of the calendar year next following that year.
(2) For the purposes of this section a literary, dramatic or musical work or an adaptation of any such
work shall be deemed to have been published, if it has been performed in public or if any records
made in respect of the work have been sold to the public or have been offered for sale to the public.
25. Term of copyright in photographs.-In the case of a photograph, copyright shall subsist until
66[sixty] years from the beginning of the calendar year next following the year in which the photograph
is published.
26. Term of copyright in cinematograph films.-In the case of a cinematograph film, copyright shall
subsist until 67[sixty] years from the beginning of the calendar year next following the year in which
the film is published.
27. Term of copyright in records.-In the case of a 68[sound recording], copyright shall subsist until
69[sixtyl years from the beginning of the calendar year next following the year in which the 70 [sound
recording] is published.
28. Term of copyright in Government work.- In the case of Government work, where Government
is the first owner of the copyright therein, copyright shall subsist until 71[Sixty] years from the
beginning of the calendar year next following the year in which the work is first published.
72[28A. Term of copyright in works of public undertakings.- In the case of a work, where a public
undertaking is the first owner of the copyright therein, copyright shall until 73[sixty] years from the
beginning of the calendar year next following the year in which the work is first published.
29. Term of copyright in works of international organisations.- In the case of a work of an
international organisation to which the provisions of section 41 apply, copyright shall subsist until
74[sixty] years from the beginning of the calendar year next following the year in which the work is first
published.
62. Subs. by Act 13 of 1992, s. 2 for'fifty'.
63. Subs. by Act 13 of 1992, s. 2 for'fifty".
64. Subs. by Act 13 of 1992, s. 2 for `fifty".
65. Subs. by Act 13 of 1992, S. 2 for `fifty'
66. Subs. by Act 13 of 1992, s. 2 for'fifty'.
67. Subs. by Act 13 of 1992, s. 2 for `fifty'.
68. Subs. by Act 38 of 1994, s. 2 for "record".
69. Subs. by Act 13 of 1992, 2 for `fifty'.
70. Subs. by Act 38 of 1994, s. 2 for "record"
71. Subs. by Act 13 of 1992, s. 2 for "fiW"
72. Ins. by Act 23 of 1983, s. 11 (w.e.f. 9-8-1994)
73. Subs. by Act 13 of 1992, s. 2 for "lifty"
74. Subs. by Act 13 of 1992, s. for "fifty"
INDIAN COPYRIGHT ACT, 1957
CHAPTER VI
LICENCES
30.Licences by owners of copyright.- The owner of the copyright in any existing work or the
prospective owner of the copyright in any future work may grant any interest in the right by licence in
writing signed by him or by his duly authorised agent:
Provided that in the case of a licence relating to copyright in any future work, the licence shall take
effect only when the work comes into existence.
Explanation.- Where a person to whom a licence relating to copyright in any future work is granted
under this section dies before the work comes into existence, his legal representatives shall, in the
absence of any provision to the contrary in the licence, be entitled to the benefit of the licence.
75 30A. Application of sections 19and 19A.-The provisions of sections 19 and 19A shall, with any
necessary adaptations and modifications, apply in relation to a licence under section 30 as they
apply in relation to assignment of copyright in a work.
31. Compulsory licence in works withheld from public.-(1) If at any time during the term of
copyright in any Indian work which has been published or performed in public, a complaint is made
to the Copyright Board that the owner of copyright in the work- (a) has refused to republish or allow
the republication of the work or has refused to allow the performance in public of the work, and by
reason of such refusal the work is withheld from the public; or
(b) has refused to allow communication to the public by 76[broadcast], of such work or in the case of
77[sound recording] the work recorded in such [sound recording], on terms which the complainant
considers reasonable; the Copyright Board, after giving to the owner of the copyright in the work a
reasonable opportunity of being heard and after holding such inquiry as it may deem necessary,
may, if it is satisfied that the grounds for such refusal are not reasonable, direct the Registrar of
Copyrights to grant to the complainant a licence to republish the work, perform the work in public or
communicate the work to the public by [broadcast], as the case may be, subject to payment to the
owner of the copyright of such compensation and subject to such other terms and conditions as the
Copyright Board may determine; and thereupon the Registrar of Copyrights shall grant the licence to
the complainant in accordance with the directions of the Copyright Board, on payment of such fee as
may be prescribed.
Explanation.- In this sub-section, the expression "Indian work' includes-
(i) an artistic work, the author of which is a citizen of India; and
(ii) a cinematograph film or a record made or manufactured in India.
(2) Where two or more persons have made a complaint under sub-section (1), the licence shall be
granted to the complainant who in the opinion of the Copyright Board would best serve the interests
of the general public.
31A.Compulsory licence in unpublished Indian works.-(1) Where, in the case of an Indian work
referred to in sub-clause (iii) of clause (a) of section 2, the author is dead or unknown or cannot be
traced, or the owner of the copyright in such work cannot be found, any person may apply to the
Copyright Board for a licence to publish such work or a translation thereof in any language.
(2) Before making an application under sub-section (1), the applicant shall publish his proposal in
one issue of a daily newspaper in the English language having circulation in the major part of the
country and where the application is for the publication of a translation in any language, also in one
issue of any daily newspaper in that language.
(3) Every such application shall be made in such form as may be prescribed and shall be
accompanied with a copy of the advertisement issued under sub-section (2) and such fee as may be
prescribed.
(4) Where an application is made to the Copyright Board under this section, it may, after holding
such inquiry as may be prescribed, direct the Registrar of Copyrights to grant to the applicant a
licence to publish the work or a translation thereof in the language mentioned in the application
subject to the payment of such royalty and subject to such other terms and conditions as the
Copyright Board may determine, and thereupon the Registrar of Copyrights shall grant the licence to
the applicant in accordance with the direction of the Copyright Board.
(5) Where a licence is granted under this section, the Registrar of Copyrights may, by order, direct
the applicant to deposit the amount of the royalty determined by the Copyright Board in the public
account of India or in any other account specified by the Copyright Board so as to enable the owner
of the copyright or, as the case may be, his heirs, executors or the legal representatives to claim
such royalty at any time.
(6) Without prejudice to the foregoing provisions of this section, in the case of a work referred to in
sub-section (1), if the original author is dead, the Central Government may, if it considers that the
publication of the work is desirable in the national interest, require the heirs, executors or legal
representatives of the author to publish such work within such period as may be specified by it.
(7) Where any work is not published within the period specified by the Central Government under
sub-section (6), the Copyright Board may, on an application made by any person for permission to
publish the work and after hearing the parties concerned, permit such publication on payment of
such royalty as the Copyright Board may, in the circumstances of such case, determine in the
prescribed manner.]
32.Licence to produce and publish translations.- (1) Any person may apply to the Copyright
Board for a licence to produce and publish a translation of a literary or dramatic work in any
language 2[after a period of seven years from the first publication of the work].
(1A)80 Notwithstanding anything contained in sub-section (1), any person may apply to the Copyright
Board for a licence to produce and publish a translation, in printed or analogous forms of
reproduction, of a literary or dramatic work, other than an Indian work, in any language in general
use in India after a period of three years from the publication of such work, if such translation is
required for the purposes of teaching, scholarship or research:
Provided that where such translation is in a language not in general use in any developed country,
such application may be made after a period of one year from such publications.]
(2) Every 81[application under this section] shall be made in such form as may be prescribed and
shall state the proposed retail price of a copy of the translation of the work.
(3) Every applicant for a licence under this section shall, along with his application, deposit with the
Registrar of Copyrights such fee as may be prescribed.
(4) Where an application is made to the Copyright Board under this section, it may, after holding
such inquiry as may be prescribed, grant to the applicant a licence, not being an exclusive licence, to
produce and publish a translation of the work in the language mentioned in 82[the application-
(i) subject to the condition that the applicant shall pay to the owner of the copyright in the work
royalties in respect of copies of the translation of the work sold to the public, calculated at such rate
as the Copyright Board may, in the circumstances of each case, determine in the prescribed
manner; and
(ii) where such licence is granted on an application under sub-section (1A), subject also to the
condition that the licence shall not extend to the export of copies of the translation of the work
outside India and every copy of such translation shall contain a notice in the language of such
translation that the copy is available for distribution only in India:
Provided that nothing in clause (ii) shall apply to the export by Government or any authority under
the Government of copies of such translation in a language other than English, French or Spanish to
any country if-
(1) such copies are sent to citizens of India residing outside India or to any association of such
citizens outside India; or
(2) such copies are meant to be used for purposes of teaching, scholarship or research and not for
any commercial purpose; and
(3) in either case, the permission for such export has been given by the Government of that country]
83[Provided further that no licence under this section] shall be granted, unless-
(a) a translation of the work in the language mentioned in the application has not been published by
the owner of the copyright in the work or any person authorised by him, 82[within seven years or
three years or one year, as the case may be, of the first publication of the work], or if a translation
has been so published, it has been out of print;
(b) the applicant has proved to the satisfaction of the Copyright Board that he had requested and
had been denied authorisation by the owner of the copyright to produce and publish such translation,
or that 84[he was, after due diligence on his part, unable to find] the owner of the copyright;
(c) where the applicant was unable to find the owner of the copyright, he had sent a copy of his
request for 85[such authorisation by registered air mail post to the publisher whose name appears
from the work, and in the case of an application for a licence under sub-section (1)], not less than
two months before 85[such application];
[(cc)84 a period of six months in the case of an application under sub-section (1A) (not being an
application under the proviso thereto), or nine months in the case of an application under the proviso
to that sub-section, has elapsed from the date of making the request under clause (b) of this proviso,
or where a copy of the request has been sent under clause (c) of this proviso, from the date of
sending of such copy, and the translation of the work in the language mentioned in the application
has not been published by the owner of the copyright in the work or any person authorised by him
within the said period of six months or nine months, as the case may be;
(ccc) in the case of any application made under sub-section (1A),-
(i) the name of the author and the title of the particular edition of the work proposed to be translated
are printed on all the copies of the translation;
(ii) if the work is composed mainly of illustrations, the provisions of section 32A are also complied
with;]
(d) the Copyright Board is satisfied that the applicant is competent to produce and publish a correct
translation of the work and possesses the means to pay to the owner of the copyright the royalties
payable to him under this section;
(e) the author has not withdrawn from circulation copies of the work; and
(f) an opportunity of being heard is given, wherever practicable, to the owner of the copyright in the
work.
[(5)84 Any broadcasting authority may apply to the Copyright Board for a licence to produce and
publish the translation of-
(a) a work referred to in sub-section (1A) and published in printed or analogous forms of
reproduction; or
(b) any text incorporated in audio-visual fixations prepared had published solely for the purpose of
systematic instructional activities, for broadcasting such translation for the purposes of teaching or
for the dissemination of the results of specialised, technical or scientific research to the experts in
any particular field.
(6) The provisions of sub-sections (2) to (4) in so far as they are relatable to an application under
sub-section (1A), shall, with the necessary modifications, apply to the grant of a licence under subsection
(5) and such licence shall not also be granted unless-
(a) the translation is made from a work lawfully acquired;
(b) the broadcast is made through the medium of sound and visual recordings;
(c) such recording has been lawfully and exclusively made for the purpose of broadcasting in India
by the applicant or by any other broadcasting agency; and
(d) the translation and the broadcasting of such translation are not used for any commercial
purposes.Explanation.- For the purposes of this section,-
(a) "developed country" means a country which is not a developing country;
(b) "developing country" means a country which is for the time being regarded as such in conformity
with the practice of the General Assembly of the United Nations;
(c) "purposes of research" does not include purposes of industrial research, or purposes of research
by bodies corporate (not being bodies corporate owned or controlled by Government) or other
associations or body of persons for commercial purposes;
(d) "purposes of teaching, research or scholarship" includes-
(i) purposes of instructional activity at all levels in educational institutions, including Schools,
Colleges, Universities and tutorial institutions; and
(ii) purposes of all other types of organised educational activity.]
[32A.Licence to reproduce and publish works for certain purposes.-86(1) Where, after the
expiration of the relevant period from the date of the first publication of an edition of a literary,
scientific or artistic work,-
(a) the copies of such edition are not made available in India; or
(b) such copies have not been put on sale in India for a period of six months to the general public, or
in connection with systematic instructional activities at a price reasonably related to that normally
charged in India for comparable works by the owner of the right of reproduction or by any person
authorised by him in this behalf, any person may apply to the Copyright Board for a licence to
reproduce and publish such work in printed or analogous forms of reproduction at the price at which
such edition is sold or a lower price for the purposes of systematic instructional activities.
(2) Every such application shall be made in such form as may be prescribed and shall state the
proposed retail price of a copy of the work to be reproduced.
(3) Every applicant for a licence under this section shall, along with his application, deposit with the
Registrar of Copyrights such fee as may be prescribed.
(4) Where an application is made to the Copyright Board under this section, it may, after holding
such inquiry as may be prescribed, grant to the applicant a licence, not being an exclusive licence, to
produce and publish a reproduction of the work mentioned in the application subject to the
conditions that,-
(i) the applicant shall pay to the owner of the copyright in the work royalties in respect of copies of
the reproduction of the work sold to the public, calculated at such rate as the Copyright Board may,
in the circumstances of each case, determine in the prescribed manner;
(ii) a licence granted under this section shall not extend to the export of copies of the reproduction of
the work outside India and every copy of such reproduction shall contain a notice that the copy is
available for distribution only in lndia :
Provided that no such licence shall be granted unless-
(a) the applicant has proved to the satisfaction of the Copyright Board that he had requested and
had been denied authorisation by the owner of the copyright in the work to reproduce and publish
such work or that he was, after due diligence on his part, unable to find such owner;
(b) where the applicant was unable to find the owner of the copyright, he had sent a copy of his
request for such authorisation by registered airmail post to the publisher whose name appears from
the work not less than three months before the application for the licence;
(c) the Copyright Board is satisfied that the applicant is competent to reproduce and publish an
accurate reproduction of the work and possesses the means to pay to the owner of the copyright the
royalties payable to him under this section;
(d) the applicant undertakes to reproduce and publish the work at such price as may be fixed by the
Copyright Board, being a price reasonably related to the price normally charged in India for works of
the same standard on the same or similar subjects;
(e) a period of six months in the case of application for the reproduction and publication of any work
of natural science, physical science, mathematics or technology, or a period of three months in the
case of an application for the reproduction and publication of any other work, has elapsed from the
date of making the request under clause (a), or where a copy of the request has been sent under
clause (b), from the date of sending of a copy, and a reproduction of the work has not been
published by the owner of the copyright in the work or any person authorised by him within the said
period of six months or, three months, as the case may be;
(f) the name of the author and the title of the particular edition of the work proposed to be
reproduced are printed on all the copies of the reproduction;
(g) the author has not withdrawn from circulation copies of the work; and
(h) an opportunity of being heard is given, wherever practicable, to the owner of the copyright in the
work.
(5) No licence to reproduce and publish the translation of a work shall be granted under this section
unless such translation has been published by the owner of the right of translation or any person
authorised by him and the translation is not in a language in general use in India.
(6) The provisions of this section shall also apply to the reproduction and publication, or translation
into a language in general use in India, of any text incorporated in audio-visual fixations prepared
and published solely for the purpose of systematic instructional activities.
Explanation.- For the purposes of this section, "relevant period", in relation to any work, means a
period of-
(a) seven years from the date of the first publication of that work, where the application is for the
reproduction and publication of any work of, or relating to, fiction, poetry, drama, music or art;
(b) three years from the date of the first publication of that work, where the application is for the
reproduction and publication of any work of, or relating to, natural science, physical science,
mathematics or technology; and
(c) five years from the date of the first publication of that work, in any other case.
32B. Termination of licences issued under this chapter.-(1) If, at any time after the granting of a
licence to produce and publish the translation of a work in any language under sub-section (1A) of
section 32 (hereafter in this sub-section referred to as the licensed work), the owner of the copyright
in the work or any person authorised by him publishes a translation of such work in the same
language and which is substantially the same in content at a price reasonably related to the price
normally charged in India for the translation of works of the same standard on the same or similar
subject, the licence so granted shall be terminated:
Provided that no such termination shall take effect until after the expiry of a period of three months
from the date of service of a notice in the prescribed manner on the person holding such licence by
the owner of the right of translation intimating the publication of the translation as aforesaid:
Provided further that copies of the licensed work produced and published by the person holding such
licence before the termination of the licence takes effect may continue to be sold or distributed until
the copies already produced and published are exhausted.
(2) If, at any time after the granting of a licence to produce and publish the reproduction or
translation of any work under section 32A, the owner of the right of reproduction or any person
authorised by him sells or distributes copies of such work or a translation thereof, as the case may
be, in the same language and which is substantially the same in content at a price reasonably
related to the price normally charged in India for work of the same standard on the same or similar
subject, the licence so granted shall be terminated:
Provided that no such termination shall take effect until after the expiry of a period of three months
from the date of service of a notice in the prescribed manner on the person holding the licence by
the owner of the right of reproduction intimating the sale or distribution of the copies of the editions of
work as aforesaid:
Provided further that any copies already reproduced by the licensee before such termination takes
effect may continue to be sold or distributed until the copies already produced are exhausted.]
75. Ins. by Act 38 of 1994, s. 30. )
76. Subs. by Act 23 of 1983, s. 2 for "radio-diffusion" (w.e.f. 9-8-1984)
77. Subs. by Act 38 of 1994, s. 2 for "record"
78. Lins. by Act 23 of 1983, s. 12 (w.e.f. 9-8-1984).
79. Subs. by Act 38 of 1994, s. 12 (w.e.f. 9-8-1984).
80. Ins. by S. 13, ibid. (w.e.f. 9-8-1984).
81. Subs. by Act 23 of 1983, for "such application" (w.e.f. 9-8-1984).
82. Subs. by s. 13, ibid., for certain words (w.e.f. 9-8-1984).
83. Subs. by s. 13, ibid., for "Provided that no such licence" (w.e.f. 9-8-1984).
84. Ins. by s.13, ibid (w.e.f. 9-8-94).
85. Subs. by Act 23 of 1983, s. 13 for certain words (w.e.f. 9-8-94).
86. Ins. by Act 23 of 1983, s. 14 (w.e.f. 9-8-1984).
INDIAN COPYRIGHT ACT, 1957
CHAPTER VII
Copyright Societies
33. 1 Registration of Copyright Society.- (1) No person or association of persons shall, after
coming into force of the Copyright (Amendment) Act, 1994 commence or, carry on the business of
issuing or granting licences in respect of any work in which copyright subsists on respect or in
respect of any other rights conferred by this Act except under or in accordance with the registration
granted under sub-section (3):
Provided that owner of copyright shall, in his individual capacity, continue to have the right to grant
licences in respect of his own works consistent with his obligations as a member of the registered
copyright society:
Provided further that the performing rights society functioning in accordance with the provisions of
section 33 on the date immediately before the coming into force of the Copyright (Amendment) Act,
1994 shall be deemed to be a copyright society for the purposes of this Chapter and every such
society shall get itself registered within a period of one year from the date of commencement of the
Copyright (Amendment) Act, 1994.
(2) Any association of persons who fulfils such conditions as may be prescribed may apply for
permission to do the business specified in sub-section (1) to the Registrar of Copyrights who shall
submit the application to the Central Government.
(3) The Central Government may, having regard to the interests of the authors and other owners of
rights under this Act, the interest and convenience of the public and in particular of the groups of
persons who are most likely to seek licences in respect of the relevant rights and the ability and
professional competence of the applicants, register such association of persons as a copyright
society subject to such conditions as may be prescribed:
Provided that the Central Government shall not ordinarily register more than one copyright society to
do business in respect of the same class of works.
(4) The Central Government may, if it is satisfied that a copyright society is being managed in a
manner detrimental to the interests of the owners of rights concerned, cancel the registration of such
society after such inquiry as may be prescribed.
(5) If the Central Government is of the opinion that in the interest of the owners of rights concerned, it
is necessary so to do, it may, by order, suspend the registration of such society pending inquiry for
such period not exceeding one year as may be specified in such order under sub-section (4) and that
Government shall appoint an administrator to discharge the functions of the copyright society.
34.87 Administration of rights of owner by copyright society.-(1) Subject to such conditions as
may be prescribed,-
(a) a copyright society may accept from an owner of rights exclusive authorisation to administer any
right in any work by issue of licences or collection of licence fees or both; and
(b) an owner of rights shall have the right to withdraw such authorisation without prejudice to the
rights of the copyright society under any contract.
(2) It shall be competent for a copyright society to enter into agreement with any foreign society or
organisation administering rights corresponding to rights under this Act, to entrust to such foreign
society or organisation the administration in any foreign country of rights administered by the said
copyright society in India, or for administering in India the rights administered in a foreign country by
such foreign society or organisation:
Provided that no such society or organisation shall permit any discrimination in regard to the terms of
licence or the distribution of fees collected between rights in Indian and other works.
(3) Subject to such conditions as may be prescribed, a copyright society may-
(i) issue licences under section 30 in respect of any rights under this Act;
(ii) collect fees in pursuance of such licences;
(iii) distribute such fees among owners of rights after making deductions for its own expenses;
(iv) perform any other functions consistent which the provisions of section 35.
34A. 88Payment of remuneration by copyright society.- (1) If the Central Government is of the
opinion that a copyright society for a class of work is generally administering the rights of the owners
of rights in such work throughout India, it shall appoint that society for the purpose of this section.
(2) The copyright society shall, subject to such rules as may be made in this behalf, frame a scheme
for determining the quantum of remuneration payable to individual copyright owners having regard to
the number of copies of the work in circulation:
Provided that such scheme shall restrict payment to the owners of rights whose works have attained
a level of circulation which the copyright society considers reasonable.
35. Control over the copyright society by the owner of rights.- 89 (1) Every copyright society shall
be subject to the collective control of the owners of rights under this Act whose rights it administers
(not being owners of rights under this Act administered by a foreign society or organisation referred
to in sub-section (2) of section (34) and shall, in such manner as may be prescribed,- (a) obtain the
approval of such owners of rights for its procedures of collection and distribution of fees;
(b) obtain their approval for the utilisation of any amounts collected as fees for any purpose other
than distribution to the owner of rights; and
(c) provide to such owners regular, full and detailed information concerning all its activities, in relation
to the administration of their rights.
(2) All fees distributed among the owners of rights shall, as far as may be, be distributed in proportion
to the actual use of their works.
36.Submission of returns and reports.-90 (1) Every copyright society shall submit to the Registrar
of Copyrights such returns as may be prescribed.
(2) Any officer duly authorised by the Central Government in this behalf may call for any report and
also call for any records of any copyright society for the purpose of satisfying himself that the fees
collected by the society in respect of rights administered by it are being utilised or distributed in
accordance with the provisions of this Act.
36A.Rights and liabilities of performing rights societies.-91 Nothing in this Chapter shall affect
any rights or liabilities in any work in connection with a performing rights society which had accrued
or were incurred on or before the day prior to the commencement of the Copyright (Amendment) Act,
1994, or any legal proceedings in respect of any such rights or liabilities pending on that day."
1. The Act has been extended to Goa, Daman and Diu by Reg. 12 of 1962, s. 3 and Sch.; to Dadra
and Nagar Haveli by Reg. 6 of 1963, s. 2 and Sch. 1; to Pondicherry by Reg. 7 of 1963, S. 3 and
Sch. 1; and brought into force in the State of Sikkim (w.e.f. 27-4-1979): vide Notification No. S.O.
226(E), dated 27-4-1979, Gazette of India, Extraordinary, Part II, Section 3(ii), page 430
86a. Subs. by Act 38 of 1994, s. 33
87. Subs. by Act 38 of 1994, s. 34
88. Ins. by Act 38 of 1994, s. 34A
89. Subs. by Act 38 of 1994, s. 35
90. Subs. by Act 38 of 1994, s. 36
91. Ins. of Act 38 of 1994, s. 36A
INDIAN COPYRIGHT ACT, 1957
CHAPTER VIII
Rights of Broadcasting 92 Organisation and of Performers
37.93Broadcast reproduction right.-(1) Every broadcasting organisation shall have a special right to
be known as "broadcast reproduction right" in respect of its broadcasts.
(2) The broadcast reproduction right shall subsist until twenty-five years from the beginning of the
calendar year next following the year in which the broadcast is made.
(3) During the continuance of a broadcast reproduction right in relation to any broadcast, any person
who, without the licence of the owner of the right does any of the following acts of the broadcast or
any substantial part thereof,-
(a) re-broadcasts the broadcast; or
(b) causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) makes any sound recording or visual recording of the broadcast; or
(d) makes any reproduction of such sound recording or visual recording where such initial recording
was done without licence or, where it was licensed, for any purpose not envisaged by such licence;
or
(e) sells or hires to the public or offers for such sale or hire, any such sound recording or visual
recording referred to in clause (c) or clause (d) shall, subject to the provisions of section 39, be
deemed to have infringed the broadcast reproduction right.
38.94 Performer’s right- (1) Where any performer appears or engages in any performance, he shall
have a special right to be known as the "performer's right" in relation to such performance.
(2) The performer's right shall subsist until 96A fifty years from the beginning of the calendar year next
following the year in which the performance is made.
(3) During the continuance of a performer's right in relation to any performance, any person who,
without the consent of the performer, does any of the following acts in respect of the performance or
any substantial part thereof, namely :-
(a) makes a sound recording or visual recording of the performance; or
(b) reproduces a sound recording or visual recording of the performance, which sound recording or
visual recording was-
(i) made without the performer's consent; or
(ii) made for purposes different from those for which the performer gave his consent; or
(iii) made for purposes different from those referred to in section 39 from a sound recording or visual
recording which was made in accordance with section 39; or
(c) broadcasts the performance except where the broadcast is made from a sound recording or visual
recording other than one made in accordance with section 39, or is a re-broadcast by the same
broadcasting organisation of an earlier broadcast which did not infringe the performer's right; or
(d) communicates the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or a visual recording or a broadcast,
shall, subject to the provision of section 39, be deemed to have infringed the performer's right.
(4) Once a performer has consented to the incorporation of his performance in a cinematograph film,
the provisions of sub-sections (1), (2) and (3) shall have no further application to such performance.
39.95 Acts not infringing broadcast reproduction right or performer’s right. – No broadcast
reproduction right or performer's right shall be deemed to be infringed by-
(a) the making of any sound recording or visual recording for the private use of the person making
such recording, or solely for purposes of bona fide teaching or research; or
(b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research; or
(c) such order acts, with any necessary adaptations and modifications, which do not constitute
infringement of copyright under section 52.
39A.96 Other provisions applying to broadcast reproduction right and performer’s right.-
Sections 18, 19, 30, 53, 55, 58, 64, 65 and 66 shall, with any necessary adaptations and
modifications, apply in relation to the broadcast reproduction right in any broadcast and the
performers' right in any performance as they apply in relation to copyright in a work :
Provided that where copyright or performer's right subsists in respect of any work or performance that
has been broadcast, no licence to reproduce such broadcast shall take effect without the consent of
the owner of rights or performer, as the case maybe, or both of them.
92. Subs. by Act.38 of 1994, cl. 12 for 'Authorities'
93. Subs. by Act 38 of 1994, s. 37
94. Subs. by Act 38 of 1994, s. 38
95. Subs. by Act 38 of 1994, s. 39
96. Subs. by Act 38 of 1994, s. 39A.
[96A. Subs. By Act 49 of 1999, Section 4, for twenty five years (wef 15.1.2000)]
INDIAN COPYRIGHT ACT, 1957
CHAPTER IX
International Copyright
40. Power to extend copyright to foreign works.-- The Central Government may, by 97 order
published in the Official Gazette, direct that all or any provisions of this Act shall apply-
(a) to work first published in any class territory outside India to which the order relates in like manner
as if they were first published within India;
(b) to unpublished works, or any class thereof, the authors whereof were at the time of the making of
the work, subjects or citizens of a foreign country to which the order relates, in like manner as if the
authors were citizens of India;
(c) in respect of domicile in any territory outside India to which the order relates in like manner as if
such domicile were in India;
(d) to any work of which the author was at the date of the first publication thereof, or, in a case where
the author was dead at that date, was at the time of his death, a subject or citizen of a foreign country
to which the order relates in like manner as if the author was a citizen of lndia at that date or time;
and thereupon, subject to the provisions of this Chapter and of the order, this Act shall apply
accordingly:
Provided that-
(i) before making an order under this section in respect of any foreign country (other than a country
with which India has entered into a treaty or which is a party to a convention relating to copyright to
which India is also a party), the Central Government shall be satisfied that that foreign country has
made, or has undertaken to make, such provisions if any, as it appears to the Central Government
expedient to require for the protection in that country of works entitled to copyright under the
provisions of this Act;
(ii) the order may provide that the provisions of this Act shall apply either generally or in relation to
such classes of works or such classes of cases as may be specified in the order;
(iii) the order may provide that the term of copyright in India shall not exceed that conferred by the
law of the country to which the order relates;
(iv) the order may provide that the enjoyment of the rights conferred by this Act shall be subject to the
accomplishment of such conditions and formalities, if any, as may be prescribed by the order;
(v) in applying the provisions of this Act as to ownership of copyright, the order may make such
exceptions and modifications as appear necessary, having regard to the law of the foreign country;
(vi) the order may provide that this Act or any part thereof shall not apply to works made before the
commencement of the order or that this Act or any part thereof small not apply to works first
published before the commencement of the order.
98A "40A. (1) If the Central Government is satisfied that a foreign country (other than a country with
which India has entered into a treaty or which is a party to a convention relating to rights of
broadcasting organisations and performers to which India is also a party) has made or has
undertaken to make such provisions, if any, as it appears to the Central Government expedient to
require, for the protection in that foreign country, of the rights of broadcasting organisations and
performers as is available under this Act, it may, by order published in the Official Gazette, direct that
the provisions of Chapter VIII shall apply -
(a) to broadcasting organisations whose headquarters is situated in a country to which the order
relates or, the broadcast was transmitted from a transmitter situated in a country to which the order
relates as if the headquarters of such organisation were situated in India or such broadcast were
made from India;
(b) to performances that took place outside India to which the order relates in like manner as if they
took place in India;
(c) to performances that are incorporated in a sound recording published in a country to which the
order relates as if it was published in India;
(d) to performances not fixed on a sound recording broadcast by a broadcasting organisation the
headquarters of which is located in a country to which the order relates or where the broadcast is
transmitted from a transmitter which is situated in a country to which the order relates as if the
headquarters of such organisation were situated in India or such broadcast were made from India.
(2) Every order made under sub-section (1) may provide that -
(i) the provisions of Chapter VIII shall apply either generally or in relation to such class or classes of
broadcasts or performances or such other class or classes of cases as may be specified in the order;
(ii) the term of the rights of broadcasting organisations and performers in India shall not exceed such
term as is conferred by the law of the country to which the order relates;
(iii) the enjoyment of the rights conferred by Chapter VIII shall be subject to the accomplishment of
such conditions and formalities, if any, as may be specified in that order;
(iv) Chapter VIII or any part thereof shall not apply to broadcast and performances made before the
commencement of the order or that Chapter VIII or any part thereof shall not apply to broadcasts and
performances broadcast or performed before the commencement of the order;
(v) in case of ownership of rights of broadcasting organisations and performers, the provisions of
Chapter VIII shall apply with such exceptions and modifications as the Central Government may,
having regard to the law of the foreign country, consider necessary."
41. Provisions as to works of certain international organisations. -(1) Where-
(a) any work is made or first published by or under the direction or control of any organisation to
which this section applies, and
(b) there would, apart from this section, be no copyright in the work in India at the time of the making
or, as the case may be, of the first publication thereof, and
(c) either-
(i) the work is published as aforesaid in pursuance of an agreement in that behalf with the author,
being an agreement which does not reserve to the author the copyright, if any, in the work, or
(ii) under section 17 any copyright in the work would belong to the organisation; there shall, by virtue
of this section, be copyright in the work throughout India.
(2) Any organisation to which this section applies which at the material time had not the legal
capacity of a body corporate shall have and be deemed at all material times to have had the legal
capacity of a body corporate for the purpose of holding, dealing with, and enforcing copyright and in
connection with all legal proceedings relating to copyright.
(3) The organisation to which this section applies are such organisations as the Central Government
may, by 98order published in the Official Gazette, declare to be organisations of which one or more
sovereign powers or the Government or Governments thereof are members to which it is expedient
that this section shall apply.
42. Power to restrict rights in works of foreign authors first published in India. -If it appears to
the Central Government that a foreign country does not give or has not undertaken to give adequate
protection to the works of Indian authors, the Central Government may, by order published in the
Official Gazette, direct that such of the provisions of this Act as confer copyright on works first
published in India shall not apply to works, published after the date specified in the order, the authors
whereof are subjects or citizens of such foreign country and are not domiciled in India, and thereupon
those provisions shall not apply to such works.
98B "42A. If it appears to the Central Government that a foreign country does not give or has not
undertaken to give adequate protection to rights of broadcasting organisations or performers, the
Central Government may, by order published in the Official Gazette, direct that such of the provisions
of this Act as confer right to broadcasting organisations or performers, as the case may be, shall not
apply to broadcasting organisations or performers whereof are based on incorporated in such foreign
country or are subjects or citizens of such foreign country and are not incorporated or domiciled in
India, and thereupon those provisions shall not apply to such broadcasting organisations or
performers."
43. Orders under this Chapter to be laid before Parliament.- Every order made by the Central
Government under this Chapter shall, as soon as may be after it is made, be laid before both Houses
of Parliament and shall be subject to such modifications as Parliament may make during the session
in which it is so laid or the session immediately following.
97. For International Copyright Order, 1991, see Gazette of India, Extraordinary, Pt. II, Sec. 3, No.
561
98. For Copyright (International Organisations) Order, 1991, see Gazette of India, Pt. II, Sec. 3, No.
561
[98A. Ins. By Act 49 of 1999, Section 5 (wef 15.1.2000)]
[98B. Ins. By Act 49 of 1999, Section 6(wef 15.1.2000)]
INDIAN COPYRIGHT ACT, 1957
CHAPTER X
Registration of Copyright
44. Register of Copyrights. -There shall be kept at the Copyright Office a register in the prescribed
form to be called the Register of Copyrights in which may be entered the names or titles of works and
the names and addresses of authors, publishers and owners of copyright and such other particulars
as may be prescribed.
45. Entries in register of Copyrights. -(1) The author or publisher of, or the owner of or other
person interested in the copyright in, any work may make an application in the prescribed form
accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work
in the Register of Copyrights :
99 [Provided that in respect of an artistic work which is used or is capable of being used in relation to
any goods, the application shall include a statement to that effect and shall be accompanied by a
certificate from the Registrar of Trade Marks referred to in section 4 of the Trade and Merchandise
Marks Act, 1958, to the effect that no trade mark identical with or deceptively similar to such artistic
work has been registered under that Act in the name of, or that no application has been made under
that Act for such registration by, any person other than the applicant.]
(2) On receipt of an application in respect of any work under sub-section (1), the Registrar of
Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the
Register of Copyrights.
46. Indexes. -There shall be also kept at the Copyright Office such indexes of the Register of
Copyrights as may be prescribed.
47. Forms and inspection of register. -The Register of Copyrights and indexes thereof kept under
this Act shall at all reasonable times be open to inspection, and any person shall be entitled to take
copies of, or make extracts from, such register or indexes on payment of such fee and subject to such
conditions as may be prescribed.
48. Register of Copyrights to be prima facie evidence of partriculars entered therein. -The
Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents
purporting to be copies of any entries therein, or extracts therefrom certified by the Registrar of
Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all
courts without further proof or production of the original.
49. Correction of entries in the Register of Copyrights. -The Registrar of Copyrights may, in the
prescribed cases and subject to the prescribed conditions, amend or alter the Register of Copyrights
by-
(a) correcting any error in any name, address or particulars; or
(b) correcting any other error which may have arisen therein by accidental slip or omission.
50. Rectification of Register by Copyright Board. -The Copyright Board, on application of the
Registrar of Copyrights or of any person aggrieved, shall order the rectification of the Register of
Copyrights by-
(a) the making of any entry wrongly omitted to be made in the register, or
(b) the expunging of any entry wrongly made in, or remaining on, the register, or
(c) the correction of any error or defect in the register.
[50A. Entries in the Register of Copyrights,etc, to be published. 100 Every entry made in the
Register of Copyrights or the particulars of any work entered under section 45, the correction of every
entry made in such register under section 49, and every rectification ordered under section 50, shall
be published by the Registrar of Copyrights in the Official Gazette or in such other manner as he may
deem fit.]
99. Added by Act 23 of 1983, s. 16 (w.e..f. 9-8-1984).
100. Ins. by Act 23 of 1983, s. 17 (w.e.f. 9-8-1984).
INDIAN COPYRIGHT ACT, 1957
CHAPTER XI
Infringement of Copyright
51. When copyright infringed. -Copyright in a work shall be deemed to be infringed-
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of
Copyrights under this Act or in contravention of the conditions of a licence so granted or of any
condition imposed by a competent authority under this Act-
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the
copyright, or
(ii)101 permits for profit any place to be used for the communication of the work to the public where
such communication constitutes an infringement of the copyright in the work, unless he was not
aware and had no reasonable ground for believing that such communication to the public would be
an infringement of copyright; or
(b) when any person-
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire,
or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner
of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports 102***** into India, any infringing copies of the work
103Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the
private and domestic use of the importer.
Explanation.- For the purposes of this section, the reproduction of a literary, dramatic, musical or
artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy".
52. Certain acts not to be infringement of copyright. -(1) The following acts shall not constitute
an infringement of copyright, namely:
(a) a fair dealing with a literary, dramatic, musical or artistic work 104[not being a computer
programme] for the purposes of-
(i) 105private use, including research;
(ii) criticism or review, whether of that work or of any other work; "
(aa)106 the making of copies or adaptation of a computer programme by the lawful possessor of a
copy of such computer programme, from such copy-
(i) in order to utilise the computer programme for the purposes for which it was supplied; or
(ii) to make back-up copies purely as a temporary protection against loss, destruction or damage in
order only to utilise the computer programme for the purpose for which it was supplied;"
121A "(ab) the doing of any act necessary to obtain information essential for operating inter-operability
of an independently created computer programme with other programmes by a lawful possessor of a
computer programme provided that such information is not otherwise readily available;
(ac) the observation, study or test of functioning of the computer programme in order to determine
the ideas and principles which underline any elements of the programme while performing such acts
necessary for the functions for which the computer programme was supplied;
(ad) the making of copies or adaptation of the computer programme from a personally legally
obtained copy for non-commercial personal use; ;
(b) a fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting current
events-
(i) in a newspaper, magazine or similar periodical, or
(ii) by 107[broadcast] or in a cinematograph film or by means of photographs.
108[Explanation.- The publication of a compilation of addresses or speeches delivered in public is not
a fair dealing of such work within the meaning of this clause;]
(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial
proceeding or for the purpose of a report of a judicial proceeding;
(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work
prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by the
Secretariat of either House of the Legislature, exclusively for the use of the members of that
Legislature;
(e) the reproduction of any literary, dramatic or musical work in a certified copy made or supplied in
accordance with any law for the time being in force;
(f) the reading or recitation in public of any reasonable extract from a published literary or dramatic
work;
(g) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for
the use of educational institutions, and so described in the title and in any advertisement issued by or
on behalf of the publisher, of short passages from published literary or dramatic works, not
themselves published for the use of educational institutions, in which copyright subsists :
Provided that not more than two such passages from works by the same author are published by the
same publisher during any period of five years.
Explanation.- In the case of a work of joint authorship, references in this clause to passages from
works shall include references to passages from works by any one or more of the authors of those
passages or by any one or more of those authors in collaboration with any other person;
(h) the reproduction of a literary, dramatic, musical or artistic work-
(i) by a teacher or a pupil in the course of instruction; or
(ii) as part of the questions to be answered in an examination; or
(iii) in answers to such questions;
(i) the performance, in the course of the activities of an educational institution, of a literary, dramatic
or musical work by the staff and students of the institution, or of a cinematograph film or a 109[sound
recordings] if the audience is limited to such staff and students, the parents and guardians of the
students and persons directly connected with the activities of the institution 110[or the communication
to such an audience of a cinematograph film or sound recording].
(j) 111 the making of sound recordings in respect of any literary, dramatic or musical work, if-
(i) sound recordings of that work have been made by or with the licence or consent of the owner of
the right in the work;
(ii) the person making the sound recordings has given a notice of his intention to make the sound
recordings, has provided copies of all covers or labels with which the sound recordings are to be
sold, and has paid in the prescribed manner to the owner of rights in the work royalities in respect of
all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf:
Provided that-
(i) no alterations shall be made which have not been made previously by or with the consent of the
owner of rights, or which are not reasonably necessary for the adaptation of the work for the purpose
of making the sound recordings;
(ii) the sound recordings shall not be issued in any form of packaging or with any label which is likely
to mislead or confuse the public as to their identity;
(iii) no such sound recording shall be made until the expiration of two calendar years after the end of
the year in which the first sound recording of the work was made; and
(iv) the person making such sound recordings shall allow the owner of rights or his duly authorised
agent or representative to inspect all records and books of account relating to such sound recording:
Provided further that if on a complaint brought before the Copyright Board to the effect that the owner
of rights has not been paid in full for any sound recordings purporting to be made in pursuance of this
clause, the Copyright Board is, prima facie, satisfied that the complaint is genuine, it may pass an
order ex parte directing the person making the sound recording to cease from making further copies
and, after holding such inquiry as it considers necessary, make such further order as it may deem fit,
including an order for payment of royalty;
(k) 112 the causing of a recording to be heard in public by utilising it,-
(i) in an enclosed room or hall meant for the common use of residents in any residential premises
(not being a hotel or similar commercial establishment) as part of the amenities provided exclusively
or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for
profit;
(iii) as part of the activities of a club, society or other organisation which is not established or
conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the
performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic,
political, social or religious topics, unless the author of such article has expressly reserved to himself
the right of such reproduction;
(n) the publication in a newspaper, magazine or other periodical of a report of a lecture delivered in
public;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map,
chart or plan) by or under the direction of the person in charge of a public library for the use of the
library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an
unpublished literary, dramatic or musical work kept in a library, museum or other institution to which
the public has access :
Provided that where the identity of the author of any such work or, in the case of a work of joint
authorship, of any of the authors is known to the library, museum or other institution, as the case may
be, the provisions of this clause shall apply only if such reproduction is made at a time more than
121B sixty years from the date of the death of the author or, in the case of a work of joint authorship,
from the death of the author whose identity is known or, if the identity of more authors than one is
known from the death of such of those authors who dies last;
(q) the reproduction or publication of-
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together
with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the
Government if such report has been laid on the Table of the Legislature, unless the reproduction or
publication of such report is prohibited by the Government;
(iv) any judgement or order of a court, tribunal or other judicial authority, unless the reproduction or
publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority,
as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and
of any rules or orders made thereunder-
(i) if no translation of such Act or rules or orders in that language has previously been produced or
published by the Government; or
(ii) where a translation of such Act or rules or orders in that language has been produced or
published by the Government, if the translation is not available for sale to the public:
Provided that such translation contains a statement at a prominent place to the effect that the
translation has not been authorised or accepted as authentic by the Government;
(s) 113 the making or publishing of a painting, drawing, engraving or photograph of a work of
architecture or the display of a work of architecture;
(t) the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other
artistic work failing under sub-clause (iii) of clause (c) of section 2, if such work is permanently situate
in a public place or any premises to which the public has access;
(u) the inclusion in a cinematograph film of-
(i) any artistic work permanently situate in a public place or any premises to which the public has
access; or
(ii) any other artistic work, if such inclusion is only by way of background or is otherwise incidental to
the principal matters represented in the film;
(v) the use by the author of an artistic work, where the author of such work is not the owner of the
copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of
the work :
Provided that he does not thereby repeat or imitate the main design of the work;
114******
(x) the reconstruction of a building or structure in accordance with the architectural drawings or plans
by reference to which the building or structure was originally constructed :
Provided that the original construction was made with the consent or licence of the owner of the
copyright in such drawings and plans;
(y) in relation to a literary, dramatic or musical work recorded or reproduced in any cinematograph
film the exhibition of such film after the expiration of the term of copyright therein :
Provided that the provisions of sub-clause (ii) of clause (a), sub-clause (a) of clause (b) and clauses
(d), (f), (g), (m) and (p) shall not apply as respects any act unless that act is accompanied by an
acknowledgment-
(i) identifying the work by its title or other description; and
(ii) unless the work is anonymous or the author of the work has previously agreed or required that no
acknowledgement of his name should be made, also identifying the author.
(z) 115 the making of an ephemeral recording, by a broadcasting organisation using its own facilities
for its own broadcast by a broadcasting organisation of a work which it has the right to broadcast;
and the retention of such recording for archival purposes on the ground of its exceptional
documentary character;
(za) 116 the performance of a literary, dramatic or musical work or the communication to the public of
such work or of a sound recording in the course of any bona fide religious ceremony or an official
ceremony held by the Central Government or the State Government or any local authority.
Explanation.- For the purpose of this clause, religious ceremony including a marriage procession and
other social festivities associated with a marriage.
(2) The provisions of sub-section (1) shall apply to the doing of any act in relation to the translation of
a literary, dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as
they apply in relation to the work itself.
[52A. Particulars to be included in records and video films. 117 (1) No person shall publish a
118[sound recording] in respect of any work unless the following particulars are displayed on the
[sound recording] and on any container thereof, namely:-
(a) the name and address of the person who has made the [sound recording];
(b) the name and address of the owner of the copyright in such work; and
(c) the year of its first publication.
(2) No person shall publish a video film in respect of any work unless the following particulars are
displayed in the video film, when exhibited, and on the video cassette or other container thereof,
namely :-
(a) if such work is a cinematograph film required to be certified for exhibition under the provisions of
the Cinematograph Act, 1952, a copy of the certificate granted by the Broad of Film Certification
under section 5A of that Act in respect of such work;
(b) the name and address of the person who has made the video film and a declaration by him that
he has obtained the necessary licence or consent from the owner of the copyright in such work for
making such video film; and
(c) the name and address of the owner of the copyright in such work.]
52B. Accounts and Audit. 119 (1) Every copyright society appointed under section 34A shall
maintain proper accounts and other relevant records and prepare an annual statement of accounts,
in such form and in such manner as may be prescribed by the Central Government in consultation
with the Comptroller and Auditor-General of India.
(2) The accounts of each of the copyright societies in relation to the payments received from the
Central Government shall be audited by the Comptroller and Auditor-General of India at such
intervals as may be specified by him and any expenditure incurred in connection with such audit shall
be payable by the copyright society to the Comptroller and Auditor-General.
(3) The Comptroller and Auditor-General of India or any other person appointed by him in connection
with the audit of the accounts of the copyright society referred to in sub-section (2) shall have the
same rights and privileges and authority in connection with such audit as the Comptroller and
Auditor-General has in connection with the audit of the Government accounts and, in particular, shall
have the right to demand the production of books, accounts and other documents and papers and to
inspect any of the offices of the copyright society for the purpose only of such audit.
(4) The accounts of each of the copyright societies as certified by the Comptroller and Auditor-
Generai of India or any other person appointed by him in this behalf together with the audit report
thereon shall be forwarded annually to the Central Government and that Government shall cause the
same to be laid before each House of Parliament.
53. Importation of infringing copies. -(1) The Registrar of Copyrights, on application by the owner
of the copyright in any work or by his duly authorised agent and on payment of the prescribed fee,
may, after making such inquiry as he deems fit, order that copies made out of India of the work which
if made in India would infringe copyright shall not be imported.
(2) Subject to any rules made under this Act, the Registrar of Copyrights or any person authorised by
him in this behalf may enter any ship, dock or premises where any such copies as are referred to in
sub-section (1) may be found and may examine such copies.
(3) All copies to which any order made under sub-section (1) applies shall be deemed to be goods of
which the import has been prohibited or restricted 120[under section 11 of the Customs Act, 1962],
and all the provisions of that Act shall have effect accordingly:
Provided that all such copies confiscated under the provisions of the said Act shall not vest in the
Government but shall be delivered to the owner of the copyright in the work.
53A. Resale share right in original copies. 121 (1) In the case of resale for a price exceeding ten
thousand rupees, of the original copy of a painting, sculpture or drawing, or of the original manuscript
of a literary or dramatic work or musical work, the author of such work if he was the first owner of
rights under section 17 or his legal heirs shall, notwithstanding any assignment of copyright in such
work, have a right to share in the resale-price of such original copy or manuscript in accordance with
the provisions of this section:
Provided that such right shall cease to exist on the expiration of the term of copyright in the work.
(2) The share referred to in sub-section (1) shall be such as the Copyright Board may fix and the
decision of the Copyright Board in this behalf shall be final :
Provided that the Copyright Board may fix different shares for different classes of work :
Provided further that in no case shall the share exceed ten per cent of the resale price.
(3) If any dispute arises regarding the right conferred by this section, it shall be referred to the
Copyright Board whose decision shall be final.
101. Subs. by Act 38 of 1994, s. 51.
102. Certain words omitted by Act 65 of 1984, s. 3 (w.e.f. 8-10-1984).
103. Subs. by Act 38 of 1994, s. 5 1
104. Ins. by Act 38 of 1984, s. 52.
105. Ins. by Act 38 of 1994, s. 52.
106. Ins. by Act 38 of 1994, s. 52.
107. Subs. by Act 23 of 1983, s. 2, for "radio-diffusion" (w.o.f. .9-8-1994).
108. Ins. by s. 18, ibid (w.e.f. 9-8-1984).
109. Subs. by Act 38 of 1984, s. 2, for "record".
110. Ins. by Act 38 of 1994, s. 52.
111. Subs. by Act 38 of 1994, s. 52.
112. Subs. by Act 38 of 1994, s. 52
113. Subs by Act 38 of 1994, s. 52
114. Clause (w) omitted by Act 38 of 1994, s. 52.
115. Ins. by Act 38 of 1994, s. 52.
116. Ins. by Act 38 of 1994, s. 52.
117. Ins. by Act 65 of 1984, s. 4 (w.e.f. 8-10-1984).
118. Subs. by Act 38 of 1994, s. 2 for `record'.
119. Ins. by Act 38 of 1994, s. 52B
120. Sub. by-Act 23 Df 1983, s. 19, for "under section 19 of the Sea Custorns Act, 1878" (w.e.f. 9-8-
1984).
121. Ins. by Act 38 of 1994, s. 53A.
[121A. Ins. By Act 49 of 1999, Section 7(wef 15.1.2000)]
[121B. Subs. By Act 49 of 1999 Section 7 for fifty years (wef 15.1.2000)]
INDIAN COPYRIGHT ACT, 1957
CHAPTER XII
Civil Remedies
54. Definition. -For the purposes of this Chapter, unless the context otherwise requires, the
expression "owner of copyright" shall include-
(a) an exclusive licensee;
(b) in the case of an anonymous or pseudonymous literary, dramatic, musical or artistic work, the
publisher of the work, until the identity of the author or, in the case of an anonymous work of joint
authorship, or a work of joint authorship published under names all of which are pseudonyms, the
identity of any of the authors, is disclosed publicly by the author and the publisher or is otherwise
established to the satisfaction of the Copyright Board by that author or his legal representatives.
55. Civil remedies for infringement of copyright. - (1) Where copyright in any work has been
infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all
such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred
by law for the infringement of a right :
Provided that if the defendant proves that at the date of the infringement he was not aware and had
no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be
entitled to any remedy other than an injunction in respect of the infringement and a decree for the
whole or part of the profits made by the defendant by the sale of the infringing copies as the court
may in the circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic work, a name purporting to be that of
the author or the publisher, as the case may be, appears on copies of the work as published, or, in
the case of an artistic work, appeared on the work when it was made, the person whose name so
appears or appeared shall, in any proceeding in respect of infringement of copyright in such work, be
presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case
may be.
(3) The costs of all parties in any proceedings in respect of the infringement of copyright shall be in
the discretion of the court.
56. Protection of separate rights. - Subject to the provisions of this Act, where the several rights
comprising the copyright in any work are owned by different persons, the owner of any such right
shall, to the extent of that right be entitled to the remedies provided by this Act and may individually
enforce such right by means of any suit, action or other proceeding without making the owner of any
other right a party to such suit, action or proceeding.
57.122 [Author’s special rights. (1) Independently of the author's copyright and even after the
assignment either wholly or partially of the said copyright, the author of a work shall have the right-
(a) to claim authorship of the work; and
(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in
relation to the said work which is done before the expiration of the term of copyright if such distortion,
mutilation, modification or other act would be prejudicial to his honour or reputation:
Provided that the author shall not have any right to restrain or claim damages in respect of any
adaptation of a computer programme to which clause (aa) of sub-section (1) of section 52 applies.
Explanation.- Failure to display a work or to display it to the satisfaction of the author shall not be
deemed to be an infringement of the rights conferred by this section.]
(2) The right conferred upon an author of a work by sub-section (1), other than the right to claim
authorship of the work, may be exercised by the legal representatives of the author.
58. Rights of owner against persons possessing or dealing with infringing copies. - All
infringing copies of any work in which copyright subsists, and all plates used or intended to be used
for the production of such infringing copies, shall be deemed to be the property of the owner of the
copyright, who accordingly may take proceedings for the recovery of possession thereof or in respect
of the conversion thereof :
Provided that the owner of the copyright shall not be entitled to any remedy in respect of the
conversion of any infringing copies, if the opponent proves-
(a) that he was not aware and had no reasonable ground to believe that copyright subsisted in the
work of which such copies are alleged to be infringing copies; or
(b) that he had reasonable grounds for believing that such copies or plates do not -involve
infringement of the copyright in any work.
59. Restriction on remedies in the case of works of architecture. -(1) Notwithstanding anything
contained in 123[the Specific Relief Act, 1963], where the construction of a building or other structure
which infringes or which, if completed, would infringe the copyright in some other work has been
commenced, the owner of the copyright shall not be entitled to obtain an injunction to restrain the
construction of such building or structure or to order its demolition.
(2) Nothing in section 58 shall apply in respect of the construction of a building or other structure
which infringes or which, if completed, would infringe the copyright in some other work.
60. Remedy in the case of groundless threat of legal proceedings. - Where any person claiming
to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any
other person with any legal proceedings or liability in respect of an alleged infringement of the
copyright, any person aggrieved thereby may, notwithstanding anything contained 124[in section 34 of
the Specific Relief Act, 1963] institute a declaratory suit that the alleged infringement to which the
threats related was not in fact an infringement of any legal rights of the person making such threats
and may in any such suit-
(a) obtain an injunction against the continuance of such threats; and
(b) recover such damages, if any, as he has sustained by reason of such threats.
Provided that this section shall not apply if the person making such threats, with due diligence,
commences and prosecutes an action for infringement of the copyright claimed by him.
61. Owners of copyright to be party to the proceeding. - (1) In every civil suit or other proceeding
regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright
shall, unless the court otherwise directs, be made a defendant and where such owner is made a
defendant, he shall have the right to dispute the claim of the exclusive licensee.
(2) Where any civil suit or other proceeding regarding infringement of copyright instituted by an
exclusive licensee is successful, no fresh suit or other proceeding in respect of the same cause of
action shall lie at the instance of the owner of the copyright.
62. Jurisdiction of court over matters arising under this Chapter. - (1) Every suit or other civil
proceeding arising under this Chapter in respect of the infringement of copyright in any work or the
infringement of any other right conferred by this Act shall be instituted in the district court having
jurisdiction.
(2) For the purpose of sub-section (1), and "district court having jurisdiction" shall, notwithstanding
anything contained in the Code of Civil Procedure, 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 other 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.
122. Sub. by Act 38 of 1984, s. 57.
123. Subs. by Act 23 of 1983, s. 20, for "the Specific Relief Act, 1877" (w.e.f. 9-8-1984)
124. Subs. by s. 21, ibid., for "in section 42 of the Specific Relief Act, 1877" (w.e.f. 9;8-1984).
INDIAN COPYRIGHT ACT, 1957
CHAPTER XIII
Offences
63. Offence of infringement of copyright or other rights conferred by this Act. Any person who
knowingly infringes or abets the infringement of-
(a) the copyright in a work, or
(b) any other right conferred by this Act, 125[except the right conferred by section 53A]
126[shall 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 127[where the infringement has not been made for gain in the course of trade or
business] the court may, for adequate and special reasons to be mentioned in the judgement, impose
a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand
rupees.]
Explanation.-Construction of a building or other structure which infringes or which, if completed,
would infringe the copyright in some other work shall not be an offence under this section.
128[63A. Enhanced penalty on second and subsequent covictions. - Whoever having already
been convicted of an offence under section 63 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 129[where the infringement has not been made for gain in the course of trade or
business] 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 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 the Copyright (Amendment) Act, 1984.]
"63B. Knowing use of infringing copy of computer programme to be an offence. 130 Any person
who knowingly makes use on a computer of an infringing copy of a computer programme shall be
punishable with imprisonment for a term which shall not be less than seven days 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 where the computer programme has not been used for gain or in the course of trade or
business, the court may, for adequate and special reasons to be mentioned in the judgment, not
impose any sentence of imprisonment and may impose a fine which may extend to fifty thousand
rupees."
64. Power of police to seize infringing copies . -(1)131 Any police officer, not below the rank of a
sub-inspector, may, if he is satisfied that an offence under section 63 in respect of the infringement of
copyright in any work has been, is being, or is likely to be, committed, seize without warrant, all
copies of the work, and all plates used for the purpose of making infringing copies of the work,
wherever found, and all copies and plates so seized shall, as soon as practicable, be produced
before a Magistrate.]
(2) Any person having an interest in any copies of a work 132[or plates] seized under sub-section (1)
may, within fifteen days of such seizure, make an application to the Magistrate for such copie. 133[or
plates] being restored to him and the Magistrate, after hearing the applicant and the complainant and
making such further inquiry as may be necessary, shall make such order on the application as he
may deem fit.
65. Possession of plates for purpose of making infringing copies. – Any person who knowingly
makes, or has in his possession, any plate for the purpose of making infringing copies of any work in
which copyright subsists shall be punishable with imprisonment which may extend to 134[two years
and shall also be liable to fine].
66. Disposal of infringing copies or plates for purpose of making infringing copies. -The court
trying any offence under this Act may, whether the alleged offender is convicted or not, order that all
copies of the work or all plates in the possession of the alleged offender, which appear to it to be
infringing copies, or plates for the purpose of making infringing copies, be delivered up to the owner
of the copyright.
67. Penalty for making false entries in register, etc., for producing or tendering false entries . -
Any person who,-
(a) makes or causes to be made a false entry in the Register of Copyrights kept under this Act, or
(b) makes or causes to be made a writing falsely purporting to be a copy of any entry in such register,
or
(c) produces or tenders or causes to be produced or tendered as evidence any such entry or writing,
knowing the same to be false,
shall be punishable with imprisonment which may extend to one year, or with fine, or with both.
68. Penalty for making false statements for the purpose of deceiving or influencing any
authority or officer. Any person who, -
(a) with a view to deceiving any authority or officer in the execution provisions of this Act, or
(b) with a view to procuring or influencing the doing or omission of anything relation to this Act or any
matter thereunder,
makes a false statement or representation knowing the same to be false, shall be punishable with
imprisonment which may extend to one year, or with fine, or with both.
135[68A. Penalty for contravention of section 52A. -Any person who publishes a 136[sound
recording] or a video film in contravention of the provisions of section 52A shall be punishable with
imprisonment which may extend to three years and shall also be liable to fine.]
69. Offences by companies. -(1) Where any offence under this Act has been committed by a
company, every person who at the time the offence was committed was in charge of, and was
responsible to the company for, the conduct of the business of the company, as well as the company
shall be deemed to be guilty of such offence and shall be liable to be proceeded against and
punished accordingly:
Provided that nothing contained in this sub-section shall render any 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.
(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 was committed with the consent or
connivance of, or is attributable to any negligence 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 persons; and
(b) "director" in relation to a firm means a partner in the firm.
70. Cognizance of offences. - No court inferior to that of 137a Metropolitan Magistrate or a Judicial
Magistrate of the first class] shall try any offence under this Act.
125. Ins. by Act 38 of 1994, s. 63.
126. Subs. by Act 65 of 1984, s. 5, for certain words (w.e.f. 8-10-1984).
127. Ins. by Act 38 of 1994, s. 63.
128. Ins. by Act 65 of 1984, s. 6 (w.e.f. 8-10-1984).
129. Ins. by Act 38 of 1994, s. 63.
130. Ins. by Act 38 of 1994, s. 63B.
131. Subs. by s. 7, ibid., for sub section (1) (w.e.f. 8-10-1984).
132. Ins. by Act 65 of 1984, s. 7 (w.e.f. 8-10-1984).
133. Ins. by s. 7, ibid, (w.e.f. 8-10-1984).
134. Subs. by s. 8, ibid., for "one year, or with fine, or with both' (w.e.f. 8-10-1984).
135. Ins. by Act 65 of 1984, s. 9 (w.9.f. 8-10-1984).
136. Subs. by Act 38 of 1994, s. 2, for `record'.
137. Subs. by Act 23 of 1983, s. 22, for "a Presidency Magistrate or a Magistrate of the first class"
(w.e.f. 9- 8-1984). 73. The High Court may make rules consistent with this Act as to the procedure to
be followed in respect of appeals made to it under section 72.
INDIAN COPYRIGHT ACT, 1957
CHAPTER XIV
Appeals
71. Appeals against certain orders of Magistrate. -Any person aggrieved by an order made under
sub-section (2) of section 64 or section 66 may, within thirty days of the date of such order, appeal to
the court to which appeals from the court making the order ordinarily lie, and such appellate court
may direct that execution of the order be stayed pending disposal of the appeal.
72. Appeals against orders of Registrar of Copyrights and Copyright Board. - (1) Any person
aggrieved by any final decision or order of the Registrar of Copyrights may, within three months from
the date of the order or decision, appeal to the Copyright Board.
(2) Any person aggrieved by any final decision or order of the Copyright Board, not being a decision
or order made in an appeal under sub-section (1), may, within three months from the date of such
decision or order, appeal to the High Court within whose jurisdiction the appellant actually and
voluntarily resides or carries on business or personally works for gain;
Provided that no such appeal shall lie against a decision of the Copyright Board under section 6.
(3) In calculating the period of three months provided for an appeal under this section, the time taken
in granting a certified copy of the order or record of the decision appealed against shall be excluded.
73. Procedure for appeals. – The High Court may make rules consistent with this Act as to the
procedure to be followed in respect of appeals made to it under section 72.
INDIAN COPYRIGHT ACT, 1957
CHAPTER XV
Miscellaneous
74. Registrar of Copyrights and Copyright Board to possess certain powers of civil courts. -
The Registrar of Copyrights and the Copyright Board shall have the powers of a civil court when
trying a suit under the Code of Civil Procedure, 1908, in respect of the following matters, namely :-
(a) summoning and enforcing the attendance of any person and examining him on oath;
(b) requiring the discovery and production of any document;
(c) receiving evidence on affidavits;
(d) issuing commissions for the examination of witnesses or documents;
(e) requisitioning any public record or copy thereof from any court or office;
(f) any other matter which may be prescribed.
Explanation.- For the purpose of enforcing the attendance of witnesses, the local limits of the
jurisdiction of the Registrar of Copyrights or the Copyright Board, as the case may be, shall be limits
of the territory of India.
75. Orders for payment of money passed by Registrar of Copyrights and Copyright Board to
be executable as a decree. –Every order made by the Registrar of Copyrights or the Copyright
Board under this Act for the payment of any money or by the High Court in any appeal against any
such order of the Copyright Board shall, on a certificate issued by the Registrar of Copyrights, the
Copyright Board or the Registrar of the High Court, as the case may be, be deemed to be a decree of
a civil court and shall be executable in the same manner as a decree of such court.
76. Protection of action taken in good faith. - No suit or other legal proceeding 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.
77. Certain persons to be public servants. - Every officer appointed under this Act and every
member of the Copyright Board shall be deerned to be a public servant within the meaning of section
21 of the Indian Penal Code.
78. Power to make rules. - (1) The Central Government may, by notification in the Official Gazette,
make rules for carrying out the purposes of this Act.
(2) In particular, and without prejudice to the generality of the foregoing power, the Central
Government may make rules to provide for all or any of the following matters, namely :-
(a) the term of office and conditions of service of the Chairman and other members of the Copyright
Board;
(b) the form of complaints and applications to be made, and the licences to be granted, under this
Act;
(c) the procedure to be followed in connection with any proceeding before the Registrar of
Copyrights;
(ca)139 the conditions for submission of application under sub-section (2) of section 33;
(cb)140 the conditions subject to which a copyright society may be registered under sub-section (3) of
section 33;
(cc)141 the inquiry for cancellation of registration under sub-section (4) of section 33;
(cd)142 the conditions subject to which the copyright society may accept authorisation under clause
(a) of sub-section (1) of section 34 and the conditions subject to which owners of rights have right to
withdraw such authorisation under clause (b) of that sub-section;
(ce)143 the conditions subject to which a copyright society may issue licences, collect fees and
distribute such fees amongst owners of rights under sub-section (3) of section 34;
(cf)l44 the manner in which the approval of the owners of rights regarding collection and distribution of
fees, approval for utilisation of any amount collected as fees and to provide to such owners
information concerning activities in relation to the administration of their rights under sub-section (1)
of section 35;
(cg)145 the returns to be filed by copyright societies to the Registrar of Copyrights under sub-section
(1) of section 36;
(d) the manner of determining any royalties payable under this Act, and the security to be taken for
the payment of such royalties;
(da)146 the manner of payment of royalty under clause (j) of sub-section (1) of section 52;
(db)147 the form and the manner in which the copyright society shall maintain accounts and other
relevant records and prepare annual statements of accounts and the manner in which the quantum of
remuneration is to be paid to individual owner of rights under sub-section (1) of section 52B;
(e) the form of Register of Copyrights to be kept under this Act and the particulars to be entered
therein;
(f) the matter in respect of which the Registrar of Copyrights and the Copyright Board shall have
powers of a civil court;
(g) the fees which may be payable under this Act;
(h) the regulation of business of the Copyright Office and of all things by this Act placed under the
direction or control of the Registrar of Copyrights.
[(3)148 Every rule made under this section 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.]
79. Repeals, savings and transitional provisions. - (1) The Indian Copyright Act, 1914, and the
Copyright Act of 1911 passed by the Parliament of the United Kingdom as modified in its application
to India by the Indian Copyright Act, 1914, are hereby repealed.
(2) Where any person has, before the commencement of this Act, taken any action whereby he has
incurred any expenditure or liabilities in connection with the reproduction or performance of any work
in a manner which at the time was lawful or for the purpose of or with a view to the reproduction or
performance of a work at a time when such reproduction or performance would, but for the coming
into force of this Act, have been lawful, nothing in this section shall diminish or prejudice any rights or
interests arising from or in connection with such action which are subsisting and valuable at the said
date, unless the person who, by virtue of this Act, becomes entitled to restrain such reproduction or
performance agrees to pay such compensation as, failing agreement, may be determined by the
Copyright Board.
(3) Copyright shall not subsist by virtue of this Act in any work in which copyright did not subsist
immediately before the commencement of this Act under any Act repealed by sub-section (1).
(4) Where copyright subsisted in any work immediately before the commencement of this Act, the
rights comprising such copyright shall, as from the date of such commencement, be the rights
specified in section 14 in relation to the class of works to which such work belongs, and where any
new rights are conferred by that section, the owner of such rights shall be-
(a) in any case where copyright in the work was wholly assigned before the commencement of this
Act, the assignee or his successor-in-interest;
(b) in any other case, the person who was the first owner of the copyright in the work under any Act
repealed by sub-section (1) or his legal representatives.
(5) Except as otherwise provided in this Act, where any person is entitled immediately before the
commencement of this Act to copyright in any work or any right in such copyright or to an interest in
any such right, he shall continue to be entitled to such right or interest for the period for which he
would have been entitled thereto if this Act had not come into force.
(6) Nothing contained in this Act shall be deemed to render any act done before its commencement
an infringement of copyright if that act would not otherwise have constituted such an infringement.
(7) Save as otherwise provided in this section, nothing in this section shall be deemed to affect the
application of the General Clauses Act, 1897, with respect to the effect of repeals.
139. Ins. by Act 38 of 1994, s. 78(2).
140. Ins. by Act 38 of 1994, s. 78(2).
141. Ins. by Act 38 of 1994, s. 78(2).
142. Ins. by Act 38 of 1994, s. 78(2).
143. Ins. by Act 38 of 1994, s. 78(2).
144. Ins. by Act 38 of 1994, s. 78(2).
145. Ins. by Act 38 of 1994, s. 78(2).
146. Ins. by Act 38 of 1994, s. 78(2).
147. Ins. by Act 38 of 1994, s. 78(2).
148. Subs. by Act 23 of 1983, s. 23, for sub-section (3) (w.e.f. 9-8-1984).

2009-01-02T23:57:00.001-08:00

TRADE MARKS ACT 1999 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:- CHAP PRELIMINARY CHAPTER I PRELIMINARY
Short title and commencement.
1. Short title 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 date 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.
Definitions and interpretation.
2. Definitions and interpretation.-(1) In this Act, unless the context otherwise requires,- (a) "Appellate Board" means the Appellate Board established under section 83; (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; (d) "Bench" means a Bench of the Appellate Board; (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 f 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 ma k, of that person; (f) "Chairman" means the Chairman of the Appellate Board; (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 t ose 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 (III) any trade description which denotes or implies that there are con- tained, 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; (k) ''Judicial Member'' means a Member of the Appellate Board appointed as such under this Act, and includes the Chairman and the Vice-Chairman; (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 I dia 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; (n) "Member" means a Judicial Member or a Technical Member of the Appellate Board and includes the Chairman and the Vice-Chairman; (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 (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; (s) "prescribed" means 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, i surance, 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, guage 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; (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 ase 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 to indicate a connection in the course of trade between the goods or services, as the case may be, a d 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; (ze) "tribunal" means the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending; (zf) "Vice-Chairman" means a Vice-Chairman of the Appellate Board; (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 service 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 desc iptions 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. CHAP THE REGISTER AND CONDITIONS FOR REGISTRATION CHAPTER II THE REGISTER AND CONDITIONS FOR REGISTRATION
Appointment of Reistrar and other officers.
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 ti e to time authorise them to discharge.
Power of Reistrar to withdraw or transfer cases, etc. 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 be ore 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 tra sfer, proceed with the matter either de novo or from the stage it was so transferred.
Trade Marks Registry and offices thereof.
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 u der 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.
The Register of Trade Marks.
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 escription 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 diskattes 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.
Classification of goods and services.
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.
Publication of alphabetical index.
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 .
Absolute grounds for refusal of registration.
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 characteris ics 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.
Limitation as to colour.
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 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.
Relative grounds for refusal of registration.
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.
(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 rade 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 circumstance under section 12. Explanation.-For the purposes of this section, earlier trade mark means- (a) a registered trade mark 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 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; (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 shal 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.
Registration in the case of honest concurrent use, etc. 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
Prohibition of registration of names of chemical elements orinternational non-proprietary names. 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.
Use of names and representations of living persons or personsrecently dead. 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 twen y years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the 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.
Registration of parts of trade marks and of trade marks as a series. 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 trad 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 d ffer 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.
Registration of trade marks as associated trade marks.
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 s 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 f 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 r 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 registra ion, 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 thoreof 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 li elihood 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.
Effect of registration of parts of a mark.
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 (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. CHAP PROCEDURE FOR AND DURATION OF REGISTRATION CHAPTER III PROCEDURE FOR AND DURATION OF REGISTRATION
Application for 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 o 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 busi ess 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 n 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.
Withdrawal of acceptance. 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.
Advertisement of application.
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 ac epted 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 th t 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 (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 t e application.
Opposition to registration.
21. Opposition to registration.-(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, o application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner 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 c unter-statement 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 w ether 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 proceeding 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.
Correction and amendment. 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 applica ion 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 divided applications so divided. initial application shall be deemed to be the date f making of the
Registration.
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 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 f 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 applicant in the prescribed manner, treat the a plication 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.
Jointly owned trade marks.
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 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.
Duration, renewal, removal and restoration of registration.
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 s ction.
(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 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: expiration and the conditions as to payment of fees and otherwi e upon 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 a d 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 fi to impose, for a period of ten years from the expiration of the last registration.
Effect of removal from register for failure to pay fee for renewal. 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 anothe trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either- (a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or (b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed. CHAP EFFECT OF REGISTRATION CHAPTER IV EFFECT OF REGISTRATION
No action for infringement of unregistered trade mark.
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.
Rights conferred by registration.
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 t e 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 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 (except so far as their respective rights are subject to any gainst other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Infringement of registered trade marks.
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.
(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 f 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 labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he appli d 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.
Limits on effect of registered trade mark.
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 ervices for use or available or 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 or 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 se vices have been performed by the proprietor or a registered user of the mark; (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 r 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 by r ason 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.
Registration to be prima facie evidence of validity.
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 assignme ts 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 t e 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.
Protection of registration on ground of distinctiveness in certaincases. 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 aft r 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.
Effect of acquiescence.
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.
Saving for vested rights. 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 o services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior- (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.
Saving for use of name, address or description of goods or services. 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.
Saving for words used as name or description of an article orsubstance or service. 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 whic 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 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; substance in question or of any goods of the same de cription, or of (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 th 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. CHAP ASSIGNMENT AND TRANSMISSION CHAPTER V ASSIGNMENT AND TRANSMISSION
Power of registered proprietor to assign and give receipts. 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.
Assignability and transmissibility of registered trade marks. 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 withou 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.
Assignability and transmissibility of unregistered trade marks. 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.
Restriction on assignment or transmission where multiple exclusiverights would be created. 40. Restriction on assignmnt 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 t ansmission 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 decei e 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 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 servi regard to limitations imposed thereon, such as n t to be exercisable es 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 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 c rtificate 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 certificat 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.
Restriction on assignment or transmission when exclusive rights wouldbe created in different parts of India. 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 ssignment 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 si ce 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 assi nment 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 th 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.
Conditions for assignment otherwise than in connection with thegoodwill of a business. 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 h s 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.
Assignability and transmissibility of certification trade marks. 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 ma ner.
Assignability and transmissibility or associated trade marks. 44. Assignability and transmissibility or 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 t have been registered as separate trade marks.
Registration of assignments and transmissions.
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 r ceipt of the application and on proof of title to his satisfaction, 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 the ass gnment or transmission to be entered on the register: Provided that 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.
(2) Except for the purpose of an application before the Registrar
under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has een made in
the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Bo rd or the court, as the case may be, otherwise directs. CHAP USE OF TRADE MARKS AND REGISTERED USERS CHAPTER VI USE OF TRADE MARKS AND REGISTERED USERS
Proposed use of trade mark by company to be formed, etc.
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 a pears 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 appl cant 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 tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relating to any opposition or appeal, and in default of such security being duly given, may treat the application a 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 pr scribed 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 servic s, the registration shall cease to have effect in respect thereof at the expiration of that period and the Registrar shall amend the register accordingly.
Removal from register and imposition of limitations on ground ofnon-use. 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 o the Registrar or the Appellate Board 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 c mpany 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 durin 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 tribunal is trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, of opinion that he might properly be permitte so to register such a 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 good to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the Appellate Board or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shal 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 re trictions 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.
Registered users.
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 tra e mark is registered.
(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 nder this Act or any other law.
Registration as registered user.
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 pres ribed 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 satisfaction 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 w ll 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.
Power of Registrar for variation or cancellation of registration asregistered user. 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; (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 preformance 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 uality 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.
Power of Registrar to call for information relating to agreement inrespect of registered users. 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 propri tor 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 hall notify the same.
Right of registered user to take proceedings against infringement. 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, maki g 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.
No right of permitted user to take proceeding against infringement. 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.
Registered user not to have right of assignment or transmission. 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).
Use of one of associated or substantially identical trade marksequivalent to use of another. 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 tribunal may, if and, so far as it hall 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.
Use of trade mark for export trade and use when form of tradeconnection changes. 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 relati n 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 he 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. CHAP RECTIFICATION AND CORRECTION OF THE REGISTER CHAPTER VII RECTIFICATION AND CORRECTION OF THE REGISTER
Power to cancel or vary registration and to rectify the register. 57. Power to cancel or vary registration and to rectify the
register.-(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, ay apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section
(1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
Correction of register.
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; (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.
Alteration of registered trade marks.
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 t e 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 advertise ent 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).
Adaptation of entries in register to amended or substitutedclassification of oods or services. 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 n 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 servi es 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 t e proposed amendment
contravenes the provisions of sub-section (1). CHAP COLLECTIVE MARKS CHAPTER VIII COLLECTIVE MARKS
Special provisions for 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 memb rs of an association of persons which is the proprietor of the mark from those of others.
Collective mark not to be misleading as to character or significance. 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 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.
Application to be accompanied by regulations governing use ofcollective marks. 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 matter as may be prescribed.
Acceptance of application and regulations by Registrar. 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 con itions 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.
Regulations to be open to inspection. 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.
Amendment of regulations. 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.
Infringement proceedings by registered proprietor of collective mark. 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 b 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.
Additional grounds for removal of registration of collective mark. 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. CHAP CERTIFICATION TRADE MARKS CHAPTER IX CERTIFICATION TRADE MARKS
Certain provisions of this Act not applicable to certification trademarks. 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.
Registration of certification trade marks. 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.
Applications for registration of certification trade marks.
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 proprie or thereof, and accompanied by a draft of the regulations to be deposited under section 74.
(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 t erein 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 tribunal shall have regard to the like considerations, so far as relevant, as if the application were applications under section 18 and to any other considerations relev nt 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.
Consideration of application for registration by Registrar.
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 h 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.
Opposition to registration of certification trade marks. 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 sect on 21 shall apply in relation to the registration of the mark as they apply in relation to an application under section 18.
Filing of regulations governing use of a certification trade mark. 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 p ovisions 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 i serted 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 file 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 Re istrar shall not decide the matter without giving the parties an opportunity of being heard.
Infringement of certification trade marks. 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 nder 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 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.
Acts not constituting infringement of certification trade marks. 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 exp rted 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 t e 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 eing 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 th 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 applicati n 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 regis ration, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.
Cancellation or varying of registration of certification 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 a 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.
Rights conferred by registration of certification trade marks. 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, giv 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. CHAP SPECIAL PROVISIONS FOR TEXTILE GOODS CHAPTER X SPECIAL PROVISIONS FOR TEXTILE GOODS
Textile goods. 79. Textile goods.-The Central Government may prescribe classes of goods (in this Chapter referred to as textile goods) to the trade marks used in relation to which the provisions of this Chapter shall apply; and subject to the said provisions, the other provisions of this Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods.
Restriction on registration of textile goods.
80. Restriction on registration of textile goods.-(1) In respect of textile goods being piece goods- (a) no mark consisting of a line heading alone shall be registrable as a trade mark; (b) a line heading shall not be deemed to be capable of distinguishing; (c) the registration of trade mark shall not give any exclusive right to the use of a line heading.
(2) In respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.
Stamping of piece gods, cotton yarn and thread.
81. Stamping of piece goods, cotton yarn and thread.-(1) Piece goods, such as are ordinarily sold by length or by the piece, which have been manufactured, bleached, dyed, printed or finished in premises which are a factory, as defined in the Factories A t, 1948 (63 of 1948), shall not be removed for sale from the last of such premises in which they underwent any of the said processes without having conspicuously stamped in international form of Indian numerals on each piece the length thereof in standar yards, or in standard yards and a fraction of such a yard, or in standard metres or in standard metres and a fraction of such a metre, according to the real length of the piece, and, except when the goods are sold from the factory for export from India, without being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the premises in which the piece was finally processed or of the wholesale purchaser in India of the piece.
(2) Cotton yarn such as is ordinarily sold in bundles, and cotton thread, namely, sewing, darning, crochet or handicraft thread, which have been manufactured, bleached, dyed or finished in any premises not sale from those premises unless, in accordance with the said rules in the case of yarn- exempted by the rules made under section 82 sha l not be removed for (a) the bundles are conspicuously marked with an indication of the weight of yarn in English or the metric system in each bundles; and (b) the count of the yarn contained in the bundles and in the case of thread each unit is conspicuously marked with the length or weight of thread in the unit and in such other manner as may be required by the said rules; and (c) except where the goods are sold from the premises for export from India, unless each bundle or unit is conspicuously marked with the name of the manufacturer or of the wholesale purchaser in India of the goods: Provided that the rules made under section 82 shall exempt all premises where the work is done by members of one family with or without the assistance of not more than ten other employees, and all premises controlled by a co-operative society where not m re than twenty workers are employed in the premises.
Determination of character of textile goods by sampling.
82. Determination of character of textile goods by sampling.-(1) For the purposes of this Act, the Central Government may make rules- (a) to provide, with respect to any goods which purport or are alleged to be of uniform number, quantity, measure, guage or weight, for the number of samples to be selected and tested and for the selection of the samples; (b) to provide, for the manner in which for the purposes of section 81 cotton yarn and cotton thread shall be marked with the particulars required by that section, and for the exemption of certain premises used for the manufacture, bleaching, dying or f nishing of cotton yarn or cotton thread from the provisions of that section; and (c) declaring what classes of goods are included in the expression "piece goods such as are ordinarily sold by length or by the piece" for the purpose of section 81, of this Act or clause (n) of
sub-section (2) of section 11 of the Customs Act, 1962.
(2) With respect to any goods for the selection and testing of samples of which provision is not made in any rules for the time being in
force under sub-section (1), the court or officer of customs, as the case may be, having occasion to ascertain the n mber, quantity, measure, gauge or weight of the goods, shall, by order in writing, determine the number of samples to be selected and tested and the manner in which the samples are to be selected.
(3) The average of the results of the testing in pursuance of rules
under sub-section (1) or of an order under sub-section (2) shall be prima facie evidence of the number, quantity, measure, gauge or weight, as the case may be, of the goods.
(4) If a person having any claim to, or in relation to, any goods of which samples have been selected and tested in pursuance of rules
under sub-section (1), or of an order under sub-section (2), desires that any further samples of the goods be selected and tested, such further samples shall, on his written application and on the payment in advance by him to the court or officer of customs, as the case may be, of such sums for defraying the cost of the further selection and testing as the court or offic r may from time to time require, be selected and tested to such extent as may be permitted by rules made by the Central Government in this behalf or as, in the case of goods with respect to which provision is not made in such rules, the court reasonable, the samples being selected in the manner prescribed under
sub-section (1), or in sub-section (2), as the case may be. or officer f customs may determine in the circumstances to be
(5) The average of the results of the testing referred to in
sub-section (3) and of the further testing under sub-section (4) shall be conclusive proof of the number, quantity, measure, gauge or weight, as the case may be, of the goods. CHAP APPELLATE BOARD CHAPTER XI APPELLATE BOARD
Establishment of Appellate Board. 83. Establishment of Appellate Board.-The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority confer ed on it by or under this Act.
Composition of Appellate Board.
84. Composition of Appellate Board.-(1) The Appellate Board shall consist of a Chairman, Vice-Chairman and such number of other Members, as the Central Government may deem fit and, subject to the other provisions of this Act, the jurisdiction, powers an authority of the Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the Chairman- (a) may, in addition to discharging the functions of the Judicial Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the case may be, the Technical Member, of any other Bench; (b) may transfer a Member from one Bench to another Bench; (c) may authorise the Vice-Chairman, the Judicial Member or the Technical Member appointed to one Bench to discharge also the functions of the Judicial Member or the Technical Member, as the case may be, of another Bench.
(4) Where any Benches are constituted, the Central Government may, from time to time, by notification, make provisions as to the distribution of the business of the Appellate Board amongst the Benches and specify the matters which may be dealt with by e ch Bench.
(5) If any question arises as to whether any matter falls within the purview of the business allocated to a Bench, the decison of the Chairman shall be final. Explanation.- For the removal of doubts, it is hereby declared that the expression ''matter'' includes an appeal under section 91.
(6) If the Members of a Bench differ in opinion on any point, they shall state the point or points on which they differ, and make a reference to the Chairman who shall either hear the point or points himself or refer the case for hearing on such point o points by one or more of the other Members and such point or points shall be decided according to the opinion of the majority of the Members who have heard the case, including those who first heard it.
Qualifications for appointment as Chairman, Vice-Chairman, or otherMembers. 85. Qualifications for appointment as Chairman, Vice-Chairman, or
other Members.-(1) A person shall not be qualified for appointment as the Chairman unless he- (a) is, or has been, a Judge of a High Court; or (b) has, for at least two years, held the office of a Vice-Chairman.
(2) A person shall not be qualified for appointment as the Vice-Chairman, unless he- (a) has, for at least two years, held the office of a Judicial Member or a Technical Member; or (b) has been a member of the Indian Legal Service and has held a post in Grade I of that service or any higher post for at least five years.
(3) A person shall not be qualified for appointment as a Judicial Member, unless he- (a) has been a member of the Indian Legal Service and has held the post in Grade I of that Service for at least three years; or (b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical Member, unless he- (a) has, for at least ten years, exercised functions of a tribunal under this Act or under the Trade and Merchandise Marks Act, 1958, or both, and has held a post not lower than the post of a Joint Registrar for at least five years; or (b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law.
(5) Subject to the provisions of sub-section (6), the Chairman, Vice-Chairman and every other Member shall be appointed by the President of India.
(6) No appointment of a person as the Chairman shall be made except after consultation with the Chief Justice of India.
Term of office of Chairman, Vice-Chairman and other Members. 86. Term of office of Chairman, Vice-Chairman and other Members.-The Chairman, Vice-Chairman or other Members shall hold office as such for a term of five years from the date on which he enters upon his office or until he attains,- (a) in the case of Chairman and Vice-Chairman, the age of sixty-five years; and (b) in the case of a Member, the age of sixty-two years, whichever is earlier
Vice-Chairman or senior-most Member to act as Chairman or dischargehis functions in certain circumstances. 87. Vice-Chairman or senior-most Member to act as Chairman or
discharge his functions in certain circumstances.-(1) In the event of or any vacancy in the office of the Chairman by reasons of his death, resignation or otherwise, the Vice-Chairman and in h s absence the senior-most Member shall act as Chairman until the date on which a new Chairman, appointed in accordance with the provisions of this Act to fill such vacancy, enters upon his office.
(2) When the Chairman is unable to discharge his functions owing to his absence, illness or any other cause, the Vice-Chairman and in his absence the senior-most Member shall discharge the functions of the Chairman until the date on which the Chairman r sumes his duty.
Salaries, allowances and other terms and conditions of service ofChairman, Vice-Chairman and other Members. 88. Salaries, allowances and other terms and conditions of service of
Chairman, Vice-Chairman and other Members.-(1) The salaries and allowances payable to, and other terms and conditions of service (including pension, gratuity and other retirement bene its), of the Chairman, Vice-Chairman and other Members shall be such as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), a person who, immediately before the date of assuming office as the Chairman, Vice-Chairman or other Member was in service of Government, shall be deemed to have retired from service on the date n which he enters upon office as the Chairman, Vice-Chairman or other Member.
Resignation and removal.
89. Resignation and removal.-(1) The Chairman, Vice-Chairman or any other Member may, by notice in writing under his hand addressed to the President of India, resign his office: Provided that the Chairman, Vice-Chairman or any other Member shall, unless he is permitted by the President of India to relinquish his office sooner, continue to hold office until the expiry of three months from the date of receipt of such notice or un il a person duly appointed as his successor enters upon his office or until the expiry of his term of office, whichever is earlier.
(2) The Chairman, Vice-Chairman or any other Member shall not be removed from his office except by an order made by the President of India on the ground of proved misbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in which he Chairman, Vice-Chairman or other Member had been informed of the charges against him and given a reasonable opportunity of being heard in respect of those charges.
(3) The Central Government may, by rules, regulate the procedure for the investigation of misbehaviour or incapacity of the Chairman,
Vice-Chairman or other Member referred to in sub-section (2).
Staff of Appellate Board.
90. Staff of Appellate Board.-(1) The Central Government shall determine the nature and categories of the officers and other employees required to assist the Appellate Board in the discharge of its functions and provide the Appellate Board with such off cers and other employees as it may think fit.
(2) The salaries and allowances and conditions of service of the officers and other employees of the Appellate Board shall be such as may be prescribed.
(3) The officers and other employees of the Appellate Board shall discharge their functions under the general superintendence of the Chairman in the manner as may be prescribed.
Appeals to Appellate Board.
91. Appeals to Appellate Board.-(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder may prefer an appeal to the Appellate Board within three months from the date on which the order or decision s ught to be appealed against is communicated to such person preferring the appeal.
(2) No appeal shall be admitted if it is preferred after the expiry of
the period specified under sub-section (1): Provided that an appeal may be admitted after the expiry of the period specified therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.
(3) An appeal to the Appellate Board shall be in the prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the order or decision appealed against and by such fees as may be prescribed.
Procedure and powers of Appellate Board.
92. Procedure and powers of Appellate Board.-(1) The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure, 1908 (5 of 1908) but shall be guided by principles of natural justice and subject to the provisions of thi Act and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of places and times of its hearing.
(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908) while trying a suit in respect of the following matters, amely:- (a) receiving evidence; (b) issuing commissions for examination of witnesses; (c) requisitioning any public record; and (d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the Indian Penal Code (45 of 1860), and the Appellate Board shall be deemed to b a civil court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973 (2 of 1974).
Bar of jurisdiction of courts, etc. 93. Bar of jurisdiction of courts, etc.-No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or
authority in relation to the matters referred to in sub-section (1) of section 91.
Bar to appear before Appellate Board. 94. Bar to appear before Appellate Board.-On ceasing to hold office, the Chairman, Vice-Chairman or other Members shall not appear before the Appellate Board or the Registrar.
Conditions as to making of interim orders. 95. Conditions as to making of interim orders.-Notwithstanding anything contained in any other provisions of this Act or in any other law for the time being in force, no interim order (whether by way of injunction or stay or any other manner) shall be m de on, or in any proceedings relating to, an appeal unless- (a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to the party against whom such appeal is made or proposed to be made; and (b) opportunity is given to such party to be heard in the matter.
Power of Chairman to transfer cases from one Bench to another. 96. Power of Chairman to transfer cases from one Bench to another.-On the application of any of the parties and after notice to the parties, and after hearing such of them as he may desire to be heard, or on his own motion without such notice, the Chair an may transfer any case pending before one Bench, for disposal, to any other Bench.
Procedure for application for rectification, etc., before AppellateBoard. 97. Procedure for application for rectification, etc., before
Appellate Board.-(1) An application for rectification of the register made to the Appellate Board under section 57 shall be in such form as may be prescribed.
(2) A certified copy of every order or judgment of the Appellate Board relating to a registered trade mark under this Act shall be communicated to the Registrar by the Board and the Registrar shall amend the entries in, or rectify, the register in accordance with such order. give effect to the order of the Board and shall, when s directed,
Appearance of Registration in legal proceedings.
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 Appellate Board in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised; (b) in any appeal to the Board 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 Board.
(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the g ounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.
Costs of Registrar in proceedings before Appellate Board. 99. Costs of Registrar in proceedings before Appellate Board.-In all proceedings under this Act before the Appellate Board the costs of the Registrar shall be in the discretion of the Board, but the Registrar shall not be ordered to pay the costs of any of the parties.
Transfer of pending proceedings to Appellate Board. 100. Transfer of pending proceedings to Appellate Board.-All cases of appeals against any order or decision of the Registrar and all cases pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate Boa d from the date as notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred. CHAP OFFENCES, PENALTIES AND PROCEDURE CHAPTER XII OFFENCES, PENALTIES AND PROCEDURE
Meaning of applying trade marks and trade descriptions.
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 ap lied; 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 person in pursuance of a request or order made by reference to the trade mark or trade description as so used.
(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.
Falsifyingg and falsely applying trade marks.
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.
Penalty for applying false trade marks, trade descriptions, etc. 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 in ication 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 hich 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.
Penalty for selling goods or providing services to which false trademark or false trade description is applied. 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 hi es 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 m nufacturer, 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 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.
Enhanced penalty on second or subsequent conviction. 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, wi h 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 judgment, 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.
Penalty for removing piece goods, etc. contrary to section 81. 106. Penalty for removing piece goods, etc., contrary to section 81.-If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 81 or sells or exposes for sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the pac ing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees.
Penalty for falsely representing a trade mark as registered.
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 punishable with imprisonment for a term which may extend to three years, or with fine, or with both.
(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 re istration 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 refere ce 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 (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.
Penalty for improperly describing a place of business as connectedwith the Trade Marks Office. 108. Penalty for improperly describing a place of business as connected with the Trade Marks Office.-If any person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his pla e of business is, or is officially connected with, the Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
Penalty for falsification of entries in the register. 109. Penalty for falsification of entries in the register.-If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
No offence in certain cases. 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.
Forfeiture of goods.
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 n 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 co mitted, 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 o 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.
Exemption of certain persons employed in ordinary course of business. 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.
Procedure where invalidity of registration is pleaded by the accused. 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 following procedure shall be followed:- accused pleads that the registration of the trade m rk is invalid, the (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 ap lication before the Appellate Board under this Act, for the rectification of the register on the ground that the registration is invalid. (b) If the accused proves to the court that he has made such application within the time so limited or within such further time as the court may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal f such application for rectification. (c) If within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the Appellate Board for rectification of the register, the court shall proceed with the case as if the registration were val d.
(2) Where before the institution of a complaint of an offence referred
to in sub- section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result o the application for rectification in so far as the complainant relies upon the registration of his mark.
Offences by companies.
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 offenc 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.
(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 at ributable 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 an 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.
Cognizance of certain offences and the powers of police officer forsearch and seizure. 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 off cer 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 i 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 warra t 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 Metropol tan 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 b ing 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.
Evidence of origin of goods imported by sea. 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 1 62), 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 faci evidence of the place or country in which the goods are made or produced.
Costs of defence or prosecution. 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 circumstan es of the case and the conduct of the parties and the costs so awarded shall be recoverable as if they were a fine.
Limitation of prosecution. 118. Limitation of prosecution.-No prosecution for an offence under this Act or under clause (b) of section 112 of the Customs Act, 1962, relating to confiscation of goods under clause (d) of section 111 and
notified by the Central Government under clau e (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 th reof by the prosecutor, whichever expiration first-happens.
Information as to commission of offence. 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 o any offence against this Act.
Punishment of abetment in India of acts done out of India. 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 a y 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.
Instructions of Central Government as to permissible variation to beobserved by criminal courts. 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, meas re, gauge or weight which are to be recognised by criminal courts as permissible in the case of any goods. CHAP MISCELLANEOUS CHAPTER XIII MISCELLANEOUS
Protection of action taken in good faith. 122. Protection of action taken in good faith.-No suit or other legal prceedings 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.
Certain persons to be public servants. 123. Certain persons to be public servants.-Every person appointed under this Act and every Member of the Appellate Board shall be deemed to be a public servant within the meaning of section 21 of the Indian Penal Code.
Stay of proceedings where the validity of registration of the trademark is questioned, etc. 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 plantiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,- (i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings; (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plantiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(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 rial 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 nd 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 t e 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.
Application for rectification of register to be made to AppellateBoard in certain cases. 125. Application for rectification of register to be made to
Appellate Board in certain cases.-(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant r 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 rade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the Appellate Board and not 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 o the Appellate Board.
Implied warranty on sale of marked goods. 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 th sale of goods or providing of services on contract to and accepted by the buyer.
Powers of Registrar. 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 examinat on 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.
Exercise of discretionary power by Registrar. 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 in him by this Act or the rules made thereunder adversely to a person applying for the e ercise of that power without (if so required by that person within the prescribed time) giving to the person an opportunity of being heard.
Evidence before Registrar. 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.
Death of party to a proceeding. 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 the Appellate Board or a court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of he 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.
Extension of time.
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 prov ded 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.
(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.
Abandonment. 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.
Preliminary advice by the Registrar as to distinctiveness.
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 ppears 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, gi es 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 fili g of the application.
Suit for infringement, etc., to be instituted before District Court. 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 or any other law for the time being in force, include a District Court w thin 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 ca ries on business or personally works for gain.
Explanation.-For the purposes of sub-section (2), "person'' includes the registered proprietor and the registered user.
Relief in suits for infringement or for passing off.
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 a 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 (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.
Registered user to be impleaded in certain proceedings.
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 nder 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.
Evidence of entries in register, etc., and things done by theregistrar. 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 f the matter or things having been done or not done.
Registrar and other officers, not compellable to produce register,etc. 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 docu ent 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.
Power to require goods to show indication of origin.
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 imp rted 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 sa , 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 t e 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.
(4) The provisions of section 23 of the General Clauses Act, 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 f r exportation whether after transhipment in or transit through India or otherwise.
Power to require information of imported goods bearing false trademarks. 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 th said goods
constitute infringement under clause (c) of sub-section (6) of section
(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, for the protection of trade marks, and are liable to confiscation on imp rtation 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 agen , 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.
(3) The importer or his agent shall, within fourteen da, within fourteen days, comply with the requirement as aforesaid, and if he fails to do so, he shall be punishable with fine which may extend to five hundred rupees.
(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 fals trade mark.
Certificate of validity. 141. Certificate of validity.-If in any legal proceeding for rectification of the register before the Appellate Board a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registrat on of the trade mark, the Appellate Board may grant a certificate to that effect, and if such a certificate is granted, then, in any subsequent legal proceeding in which the said validity comes into question the said proprietor on obtaining a final order or judgment in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.
Groundless threats of legal proceedings.
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 erson 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 rade 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 the trade mark. prosecutes an action against the person threatene for infringement of
(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.
Address for service. 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 docu ents 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.
Trade usages, etc., to be taken into conseration. 144. Trade usages, etc., to be taken into conseration.-In any proceeding relating to a trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other pe sons.
Agents. 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 pe son 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.
Marks registered by an agent or representative without authority. 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 shal 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.
Indexes. 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.
Documents open to public inspection.
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: 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 print- out 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).
Reports of Registrar to be placed before Parliament. 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.
Fees and surcharge.
150. Fees and surcharge.-(1) There shall be paid in respect of 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.
Savings in respect of certain matters in Chapter XII. 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 a 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 fu l information as to his master and as to the instructions which he has received from his master.
Declaration as to ownership of trade mark not registrable under theRegistration Act, 1908. 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 p rson to a trade mark other than a registered trade mark shall be registered under that Act.
Government to be bound. 153. Government to be bound.-The provisions of this Act shall be binding on the Government.
Special provisions relating to applications for registration fromcitizens of convention countries. 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 u ion 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 Organisations, 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 represent tive 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 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 o 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 o 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.
Provision as to reciprocity. 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 oes 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.
Power of Central Government to remove difficulties.
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 p ovisions 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.
Power to make rules.
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; (vii) the manner of making an application and the fee payable for such
application giving notice under sub-section (1) and sending
counter-statements 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 t e manner of such
notice under sub-section (3) of that section;
(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; (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 marking 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-secion (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; (xxiv) the manner of advertising an application under section 73; (xxv) the manner of making an application under section 77; (xxvi) the classes of goods under section 79;
(xxvii) the conditions and restrictions under sub-section (2) of section 80; (xxviii) determination of character of textile goods by sampling under section 82; (xxix) the salaries and allowances payable to, and the other terms and conditions of service of, the Chairman, Vice-Chairman and other
Members under sub-section (1) of section 88; (xxx) the procedure for investigation of misbehaviour or incapacity of
the Chairman, Vice-Chairman and other Members under sub-section (3) of section 89; (xxxi) the salaries and allowances and other conditions of service of the officers and other employees of the Appellate Board under
sub-section (2), and the manner in which the officers and other
sub-section (3), of section 90; employees of the Appellate Board shall discharge their fun tions under (xxxii) the form of making an appeal, the manner of verification and
the fee payable under sub-section (3) of section 91; (xxxiii) the form in which and the particulars to be included in the
application to the Appellate Board under sub-section (1) of section 97; (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 m re 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 r le 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 any-thing previously done under that rule.
Amendments. 158. Amendments.-The enactment specified in the Schedule shall be amended in the manner specified therein.
Repeal and savings.
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 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, author sation, 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 r 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 infringemen 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 he expiry of the period for which it was registered or renewed, whichever is earlier.
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