3. Appointment of Registrar and other officers.—

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

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

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

Without prejudice to the generality of  the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for reasons to be  recorded therein, withdraw any matter pending before an officer appointed under the said sub-section (2)  and deal with such matter himself either de novo or from the stage it was so withdrawn or transfer the  same to another officer so appointed who may, subject to special directions in the order of transfer,  proceed with the matter either de novo or from the stage it was so transferred. 

5. Trade Marks Registry and offices thereof.—

(1) For the purposes of this Act, there shall be a  trade marks registry and the Trade Marks Registry established under the Trade and Merchandise Marks  Act, 1958 (43 of 1958) shall be the Trade Marks Registry under this Act. 

(2) The head office of the Trade Marks Registry shall be at such place as the Central Government  may specify, and for the purpose of facilitating the registration of trade marks, there may be established at  such places as the Central Government may think fit branch offices of the Trade Marks Registry. 

(3) The Central Government may, by notification in the Official Gazette, define the territorial limits  within which an office of the Trade Marks Registry may exercise its functions. 

(4) There shall be a seal of the Trade Marks Registry. 

6. The Register of Trade Marks.—

(1) For the purposes of this Act, a record called the Register of  Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all  registered trade marks with the names, addresses and description of the proprietors, notifications of  assignment and transmissions, the names, addresses and descriptions of registered users, conditions,  limitations and such other matter relating to registered trade marks as may be prescribed. 

(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Registrar to keep  the records wholly or partly in computer floppies diskettes or in any other electronic form subject to such  safeguards as may be prescribed. 

(3) Where such register is maintained wholly or partly on computer under sub-section (2) any  reference in this Act to entry in the Register shall be construed as the reference to any entry as maintained  on computer or in any other electronic form. 

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

(5) The register shall be kept under the control and management of the Registrar. 

(6) There shall be kept at each branch office of the Trade Marks Registry a copy of the register and  such of the other documents mentioned in section 148 as the Central Government may, by notification in  the Official Gazette, direct. 

(7) The Register of Trade Marks, both Part A and Part B, existing at the commencement of this Act,  shall be incorporated in and form part of the register under this Act. 

7. Classification of goods and services.—

(1) The Registrar shall classify goods and services, as far  as may be, in accordance with the International classification of goods and services for the purposes of  registration of trade marks. 

(2) Any question arising as to the class within which any goods or services falls shall be determined  by the Registrar whose decision shall be final.

8. Publication of alphabetical index.—

(1) The Registrar may publish in the prescribed manner an  alphabetical index of classification of goods and services referred to in section 7. 

(2) Where any goods or services are not specified in the alphabetical index of goods and services  published under sub-section (1), the classification of goods or services shall be determined by the  Registrar in accordance with sub-section (2) of section 7. 

9. Absolute grounds for refusal of registration.—

(1) The trade marks— 

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the  goods or services of one person from those of another person; 

(b) which consist exclusively of marks or indications which may serve in trade to designate the  kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the  goods or rendering of the service or other characteristics of the goods or service; 

(c) which consist exclusively of marks or indications which have become customary in the  current language or in the bona fide and established practices of the trade, shall not be registered: 

Provided that a trade mark shall not be refused registration if before the date of application for  registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade  mark. 

(2) A mark shall not be registered as a trade mark if— 

(a) it is of such nature as to deceive the public or cause confusion; 

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

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

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950). 

(3) A mark shall not be registered as a trade mark if it consists exclusively of— 

(a) the shape of goods which results from the nature of the goods themselves; or 

(b) the shape of goods which is necessary to obtain a technical result; or 

(c) the shape which gives substantial value to the goods. 

Explanation.—

For the purposes of this section, the nature of goods or services in relation to which  the trade mark is used or proposed to be used shall not be a ground for refusal of registration. 

10. Limitation as to colour.—

(1) A trade mark may be limited wholly or in part to any combination  of colours and any such limitation shall be taken into consideration by the 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. 

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 trade mark. 

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be  prevented— 

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark  used in the course of trade; or 

(b) by virtue of law of copyright. 

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the  earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may  register the mark under special circumstances under section 12. 

Explanation.—

For the purposes of this section, earlier trade mark means— 

1[(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or  an international registration referred to in section 36E or convention application referred to in  section 154 which has a date of application earlier than that of the trade mark in question, taking  account, where appropriate, of the priorities claimed in respect of the trade marks;] 

(b) a trade mark which, on the date of the application for registration of the trade mark in  question, or where appropriate, of the priority claimed in respect of the application, was entitled to  protection as a well-known trade mark. 

(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3),  unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor  of the earlier trade mark. 

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into  account any fact which he considers relevant for determining a trade mark as a well-known trade mark  including— 

(i) the knowledge or recognition of that trade mark in the relevant section of the public including  knowledge in India obtained as a result of promotion of the trade mark; 

(ii) the duration, extent and geographical area of any use of that trade mark; 

(iii) the duration, extent and geographical area of any promotion of the trade mark, including  advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the  trade mark applies; 

(iv) the duration and geographical area of any registration of or any application for registration of  that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark; 

(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to  which the trade mark has been recognised as a well-known trade mark by any court or Registrar under  that record. 

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a  relevant section of the public for the purposes of sub-section (6), take into account— 

(i) the number of actual or potential consumers of the goods or services; 

(ii) the number of persons involved in the channels of distribution of the goods or services; 

(iii) the business circles dealing with the goods or services, to which that trade mark applies. 

(8) Where a trade mark has been determined to be well known in at least one relevant section of the  public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known  trade mark for registration under this Act. 

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a  well-known trade mark, any of the following, namely:— 

(i) that the trade mark has been used in India; 

(ii) that the trade mark has been registered; 

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark— 

(a) is well-known in; or 

(b) has been registered in; or 

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India, or 

(v) that the trade mark is well-known to the public at large in India. 

(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall— 

(i) protect a well-known trade mark against the identical or similar trade marks; 

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting  the right relating to the trade mark. 

(11) Where a trade mark has been registered in good faith disclosing the material informations to the  Registrar or where right to a trade mark has been acquired through use in good faith before the  commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that  trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to  a well-known trade mark. 

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

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

In the case of honest concurrent use or  of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may  permit the registration by more than one proprietor of the trade marks which are identical or similar  (whether any such trade mark is already registered or not) in respect of the same or similar goods or  services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. 

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

No word— 

(a) which is the commonly used and accepted name of any single chemical element or any single  chemical compound (as distinguished from a mixture) in respect of a chemical substance or  preparation, or 

(b) which is declared by the World Health Organisation and notified in the prescribed manner by  the Registrar from time to time, as an international non-proprietary name or which is deceptively  similar to such name, shall be registered as a trade mark and any such registration shall be deemed for the purpose of section 57  to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register,  as the circumstances may require. 

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

Where an  application is made for the registration of a trade mark which falsely suggests a connection with any  living person, or a person whose death took place within twenty years prior to the date of application for  registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the  legal representative of the deceased person to the connection appearing on the trade mark, and may refuse  to proceed with the application unless the applicant furnishes the Registrar with such consent. 

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

(1) Where the  proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may  apply to register the whole and the part as separate trade marks. 

(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark. 

(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or  similar goods or services or description of goods or description of services, which, while resembling each  other in the material particulars thereof, yet differ in respect of— 

(a) statement of the goods or services in relation to which they are respectively used or proposed to be used; or 

(b) statement of number, price, quality or names of places; or 

(c) other matter of a non-distinctive character which does not substantially affect the identity of  the trade mark; or 

(d) colour, seeks to register those trade marks, they may be registered as a series in one registration. 

16. Registration of trade marks as associated trade marks.—

(1) Where a trade mark which is  registered, or is the subject of an application for registration, in respect of any goods or services is  identical with another trade mark which is registered, or is the subject of an application for registration, in  the name of the same proprietor in respect of the same goods or description of goods or same services or  description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a  person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be  entered on the register as associated trade marks. 

(2) Where there is an identity or near resemblance of marks that are registered, or are the subject of  applications for registration in the name of the same proprietor, in respect of goods and services which are  associated with those goods or services, or goods or services of that description, sub-section (1) shall  apply as it applies as where there is an identity or near resemblance of marks that are registered, or are the  subject of applications for registration, in the name of the same proprietor in respect of the same goods or  description of goods or same services or description of services. 

(3) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1)  of section 15, registered as separate trade marks in the name of the same proprietor, they shall be deemed  to be, and shall be registered as, associated trade marks. 

(4) All trade marks registered in accordance with the provisions of sub-section (3) of section 15 as a  series in one registration shall be deemed to be, and shall be registered as, associated trade marks. 

(5) On application made in the prescribed manner by the registered proprietor of two or more trade  marks registered as associated trade marks, the Registrar may dissolve the association as respects any of  them if he is satisfied that there would be no likelihood of deception or confusion being caused if that  trade mark were used by any other person in relation to any of the goods or services or both in respect of  which it is registered, and may amend the register accordingly. 

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

(1) When a trade mark consists of several matters,  its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. 

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

(a) contains any part— 

(i) which is not the subject of a separate application by the proprietor for registration as a  trade mark; or

(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.