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

(1) No application for the  registration of a trade mark in respect of any goods or services shall be refused nor shall permission for  such registration be withheld, on the ground only that it appears that the applicant does not use or propose  to use the trade mark if the Registrar is satisfied that— 

(a) a company is about to be formed and registered under the Companies Act, 1956 (1 of 1956) and that the applicant intends to assign the trade mark to that company with a view to the use thereof  in relation to those goods or services by the company, or 

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

(2) The provisions of section 47 shall have effect, in relation to a trade mark registered under the  powers conferred by this sub-section, as if for the reference, in clause (a) of sub-section (1) of that  section, to the intention on the part of an applicant for registration that a trade mark should be used by him there were substituted a reference to the intention on his part that it should be used by the company or  registered user concerned. 

(3) The 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 as abandoned. 

(4) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods or services  is registered in the name of an applicant who, relies on intention to assign the trade mark to a company,  then, unless within such period as may be prescribed or within such further period not exceeding six  months as the Registrar may, on application being made to him in the prescribed manner, allow, the  company has been registered as the proprietor of the trade mark in respect of those goods or services, the  registration shall cease to have effect in respect thereof at the expiration of that period and the Registrar  shall amend the register accordingly. 

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

(1) A registered  trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the 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 company concerned or the registered user, as the case  may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods  or services by any proprietor thereof for the time being up to a date three months before the date of  the application; or 

(b) that up to a date three months before the date of the application, a continuous period of five  years from the date on which the trade mark is actually entered in the register or longer had elapsed  during which the trade mark was registered and during which there was no bona fide use thereof in  relation to those goods or services by any proprietor thereof for the time being: 

Provided that except where the applicant has been permitted under section 12 to register an identical  or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of  opinion that he might properly be permitted so to register such a 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, bona fide use of the trade  mark by any proprietor thereof for the time being in relation to— 

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

(ii) goods or services associated with those goods or services of that description being goods or  services, as the case may be, in respect of which the trade mark is registered. 

(2) Where in relation to any goods or services in respect of which a trade mark is registered— 

(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as  regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular  place in India (otherwise than for export from India), or in relation to goods to be exported to a  particular market outside India; or in relation to services for use or available for acceptance in a  particular place in India or for use in a particular market outside India; and 

(b) a person has been permitted under section 12 to register an identical or nearly resembling  trade mark in respect of those goods, under a registration extending to use in relation to goods to be  so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for  use or available for acceptance in that place or for use in that country, or the tribunal is of opinion that  he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the 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 shall cease to extend to such use. 

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the  purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special  circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the  goods or services to which the application relates. 

48. Registered users.—

(1) Subject to the provisions of section 49, a person other than the registered  proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the  goods or services in respect of which the trade mark is registered. 

(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall  be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any  other purpose for which such use is material under this Act or any other law. 

49. Registration as registered user.—

(1) Where it is proposed that a person should be registered as  a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be  accompanied by— 

(a) the agreement in writing or a duly authenticated copy thereof, entered into between the  registered proprietor and the proposed registered user with respect to the permitted use of the trade  mark; and 

(b) an affidavit made by the registered proprietor or by some person authorised to the satisfication  of the Registrar to act on his behalf,— 

(i) giving particulars of the relationship, existing or proposed, between the registered  proprietor and the proposed registered user, including particulars showing the degree of control  by the proprietor over the permitted use which their relationship will confer and whether it is a  term of their relationship that the proposed registered user shall be the sole registered user or that  there shall be any other restriction as to persons for whose registration as registered users  application may be made; 

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

(iii) stating the conditions or restrictions, if any, proposed with respect to the characteristics  of the goods or services, to the mode or place of permitted use, or to any other matter; 

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

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

(2) When the requirements of sub-section (1) have been complied with, the Registrar shall register the  proposed registered user in respect of the goods or services as to which he is so satisfied. 

(3) The Registrar shall issue notice in the prescribed manner of the registration of a person as a  registered user, to other registered users of the trade mark, if any. 

(4) The Registrar shall, if so requested by the applicant, take steps for securing that information given  for the purposes of an application under this section (other than matters entered in the register) is not  disclosed to rivals in trade. 

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

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

(a) may be varied by the Registrar as regards the goods or services in respect of which it has  effect on the application in writing in the prescribed manner of the registered proprietor of the trade  mark; 

(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of  the registered proprietor or of the registered user or of any other registered user of the trade mark; 

(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of  any person on any of the following grounds, namely:—

(i) that the registered user has used the trade mark otherwise than in accordance with the  agreement under clause (a) of sub-section (1) of section 49 or in such way as to cause or to be  likely to cause, deception or confusion; 

(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact  material to the application for registration which if accurately represented or disclosed would not  have justified the registration of the registered user; 

(iii) that the circumstances have changed since the date of registration in such a way that at  the date of such application for cancellation they would not have justified registration of the  registered user; 

(iv) that the registration ought not to have been effected having regard to rights vested in the  applicant by virtue of a contract in the performance of which he is interested; 

(d) may be cancelled by the Registrar on his own motion or on the application in writing in the  prescribed manner by any person, on the ground that any stipulation in the agreement between the  registered proprietor and the registered user regarding the quality of the goods or services in relation  to which the trade mark is to be used is either not being enforced or is not being complied with; 

(e) may be cancelled by the Registrar in respect of any goods or services in relation to which the  trade mark is no longer registered. 

(2) The Registrar shall issue notice in the prescribed manner in respect of every application under this  section to the registered proprietor and each registered user (not being the applicant) of the trade mark. 

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

Provided that before cancelling of registration, the registered proprietor shall be given a reasonable  opportunity of being heard. 

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

(1) The Registrar may, at any time during the continuance of the registration of the registered  user, by notice in writing, require the registered proprietor to confirm to him within one month that the  agreement filed under clause (a) of sub-section (1) of section 49 continues to be in force. 

(2) If the registered proprietor fails to furnish the confirmation within one month as required under  sub-section (1), the registered user shall cease to be the registered user on the day immediately after the  expiry of the said period and the Registrar shall notify the same. 

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

(1) Subject to any  agreement subsisting between the parties, a registered user may institute proceedings for infringement in  his own name as if he were the registered proprietor, making the registered proprietor a defendant and the  rights and obligations of such registered user in such case being concurrent with those of the registered  proprietor. 

(2) Notwithstanding anything contained in any other law, a registered proprietor so added as  defendant shall not be liable for any costs unless he enters an appearance and takes part in the  proceedings. 

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

A person referred to in  sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding  for any infringement. 

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

Nothing in this Act shall  confer on a registered user of a trade mark any assignable or transmissible right to the use thereof. 

Explanation I.—

The right of a registered user of a trade mark shall not be deemed to have been  assigned or transmitted within the meaning of this section in the following cases, namely:— 

(a) where the registered user being an individual enters into a partnership with any other person  for carrying on the business concerned; but in any such case the firm may use the trade mark, if  otherwise in force, only for so long as the registered user is a member of the firm;

(b) where the registered user being a firm subsequently undergoes a change in its constitution; but  in any such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long  as any partner of the original firm at the time of its registration as registered user, continues to be a  partner of the reconstituted firm. 

Explanation II.—

For the purposes of Explanation I, ―firm‖ has the same meaning as in the Indian  Partnership Act, 1932 (9 of 1932). 

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 shall think right, accept use of a registered  associated trade mark, or of the trade mark with additions or alterations not substantially affecting its  identity, as an equivalent for the use required to be proved. 

(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, be deemed to be  also use of any trade mark being a part thereof and registered in accordance with sub-section (1) of  section 15 in the name of the same proprietor. 

(3) Notwithstanding anything in section 32, the use of part of the registered trade mark in  sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act. 

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

(1)  The application in India of trade mark to goods to be exported from India or in relation to services for use  outside India and any other act done in India in relation to goods to be so exported or services so rendered  outside India which, if done in relation to goods to be sold or services provided or otherwise traded in  within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade  mark in relation to those goods or services for any purpose for which such use is material under this Act  or any other law. 

(2) The use of a registered trade mark in relation to goods or services between which and the person  using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to  cause deception or confusion on the ground only that the mark has been or is used in relation to goods or  services between which and the said person or a predecessor in title of that person a different form of  connection in the course of trade subsisted or subsists.