. INTRODUCTION

Customers recognise the product by its “ TRADE MARK ”. As the business grows, the importance of the Trade Mark grows. It’s a valuable property of any business. Some Trade Marks like “Coca Cola”, “Pepsi”, “Phillips” and “Microsoft” have worldwide recognition. It is necessary for business that the trade mark is NOT used by an unauthorised person. Trade and Merchandise Marks Act, 1958 was enacted with an intention to PROTECT the rights in trade marks of business. However, after liberalisation and opening of Indian economy -need has been felt to change the law. Trade Marks Act, 1999 has replaced the earlier 1958 enactment.

The major CHANGES incorporated in the NEW enactment are as under :-

- Registration of service marks allowed.

- Collective marks owned by associations provided (eg. Darjeeling Tea or Benares Sarees)

- Appellate Board, for speedy disposal of matters, provided

- Procedure for registration simplified.

- Expansion of ground for refusal of registration

- Well known trade marks are protected though NOT registered.

- Registrar is empowered to register certification trade marks. ( Earlier it was with Central Govt.)

- Offences made cognizable.

- Courts have been empowered to grant ex- parte injunctions.

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. SCHEME OF THE ACT

The Act, contains 13 Chapters, 159 Sections and One Schedule.

CHAPTER PROVISION SECTIONS

Chapter –I Short title, Extent and Definition 1-2

Chapter –II Register and Conditions for Register 3-17

Chapter – III Procedure for and duration of Registration 18-26

Chapter –IV Effect of Registration 27-36

Chapter –V Assignment and Transmission 37-45

Chapter –VI Use of Trade marks and Registered users 46-56

Chapter –VII Rectification and Correction of Register 57-60

Chapter –VIII Collective Marks 61-68

Chapter –IX Certification Trade Marks 69-78

Chapter –X Special Provisions for Textile Goods 79-82

Chapter –XI Appellate Board 83-100

Chapter –XII Offences, Penalties and Procedures 101-121

Chapter -XIII Miscellaneous 122-159

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. DEFINITIONS - SEC. 2

C/1 Sec. 2(1)(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 of 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 mark, of that person.

C/2 Sec. 2(1)(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.

C/3 Sec. 2(1)(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.

C/4 Sec. 2(1)(r) - “ PERMITTED USE” :- in relation to a REGISTERED trade mark, MEANS the USE of Trade Mark-

1) By 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

2) By the 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.

C/5 Sec. 2(1)(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, insurance, 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.

C/6 Sec. 2(1)(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

1. 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 case may be and some person having the RIGHT as PROPRIETOR to use the mark ; AND

2. 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 and 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.

C/7 Sec. 2(1)(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 services 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.

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REGISTRAR AND TRADE MARK REGISTRY

Appointment of Registrar :- Under Section 3 of the Act, The Central Govt. is empowered, by notification in the official gazette, to appoint a person to be known as the Controller General of Patent, Designs and Trade Marks, who shall be the REGISTRAR of Trade Marks - for the purpose of Trade Marks Act and such other officers as it may deem fit.

Under Section 4 of the Act, the REGISTRAR may, by order in writing along - with the reasons thereof, with - draw any matter pending before any officer and deal with such matter himself or transfer the same to such other officer as he may deem fit.

According to Section 5 of the Act, the Trade Mark Registry established under the Trade and Merchandise Marks Act, 1958, shall be the Trade Mark Registry under the new Act. The Central Govt. may define the JURISDICTION of such trade mark registry.

SINGLE Register of Trade Marks :- According to SECTION 6 of the Act, a Register of Trade Marks shall be kept at the had Office of the Trade Marks Registry, wherein the details, EXCEPT the details of notice of trust, of all registered trade marks along with the names, addresses, description of proprietors, assignment and transmissions etc, shall be entered. A copy of the register shall be kept at each branch office. Further, the registrar is allowed to maintain the above register in computer floppies or diskettes or in any other electronic form, subject to the prescribed safeguards.

CLASSIFICATION of GOODS and SERVICES and PUBLICATION of INDEX :- In terms of Section 7, the Registrar shall CLASSIFY the goods and services, in accordance with the international classification of goods and services for the purposes of Registration of Trade marks.

According to Section 8, the Registrar may PUBLISH an alphabetical index of classification of goods and services.

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ABSOLUTE GROUNDS FOR “ REFUSAL OF REGISTRATION ”

( SECTION 9 )

1. The following TRADE MARKS shall NOT be registered :-

- Which are NOT capable of distinguishing the goods or services of one person from those of another person,

- Which consist EXCLUSIVELY of marks or indications which may be used in trade - to indicate the kind, quality, quantity, intended use, date of production or other characteristics of goods or services,

- Which consist EXCLUSIVELY of marks or indications, which have become customary and established practices of trade

- However, where BEFORE making the application for registration, if it has acquired a DISTINCTIVE character as a result of its use or is a well known trade mark, the registration of the same shall NOT be refused.

2. A MARK shall NOT be registered as a Trade Mark - in the following cases :-

- If it is DECEIVING in nature or may cause CONFUSION

- If it is likely to HURT the religious susceptibility or a section of Citizens of India

- If it contains SCANDALOUS or OBSCENE matter

- Its use is PROHIBITED under the Emblems and Names (Prevention of Improper Use) Act.

3. A MARK shall NOT registered as a Trade Mark - if it contains EXCLUSIVELY of :-

- The shape of goods which is NATURAL

- The shape of goods which is necessary to obtain a TECHNICAL result

- The shape which gives SUBSTANTIAL value to the goods.

Sec. 11 - “ RELATIVE GROUNDS ” FOR THE REFUSAL OF REGISTRATION

According to Section 11 of the Act, where there exists a likelihood of confusion - on the part of the public because of the identity of the EARLIER Trade Mark or similarity of the goods or services, the trade mark shall NOT be registered.

Further a Trade Mark, which is IDENTICAL with (or) similar to an EARLIER trade mark but covering the goods or services which are NOT similar to those covered by the earlier trade mark registered in the name of a different proprietor, shall NOT be registered - if the use of the same may cause UNDUE advantage of or be DETRIMENTAL to the DISTINCTIVE character or repute of the EARLIER trade mark.

Where the USE of a trade mark is PREVENTED by virtue of any law of passing off or law of copyright, such trade mark shall NOT be registered.

However, where the proprietor of the EARLIER trade mark consents for the registration of the above mentioned subsequent trade mark; the registration of the same shall NOT be refused.

For the purpose of this section, “Earlier Trade Mark”, means a registered trade mark or a convention application which has a date of application EARLIER than the trade mark in question, or a trade mark, which on the date of application was a WELL KNOWN trade mark.

Further, the registration of the trade mark, on the above grounds, shall NOT be refused, UNLESS the proprietor of the EARLIER trade mark files the OPPOSITION thereof.

In deciding whether a trade mark is WELL KNOWN trade mark or not, the Registrar may take into consideration the following & namely-

-

The knowledge about the trade mark in the relevant section of public

- Duration, extent and territorial area in which the trade mark is used.

- The record of successful enforcement of the rights in that trade mark, by the Court or the Registrar.

Further the Registrar, while considering an application for the Registration of a Trade Mark, shall :-

- Protect the well known trade mark against the use of identical or similar marks

- Take into consideration the bad faith on part of either the applicant or the opponent affecting the rights relating to the trade mark.( Type Q.4(a) J 04 - 5 Marks, June 2006)

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. “ PROCEDURE ” FOR REGISTRATION

According to SECTION 18 of the Act, any Person claiming to be the PROPRIETOR of a Trade Mark, who desirous of registering it, shall APPLY to the Registrar in the prescribed manner for the registration of his trade mark.

Further, a SINGLE application may be made for the registration of a trade mark for different classes of goods and services.

However, the fee payable is to be calculated on the basis of the number of classes in which the registration is sought. ( In the old Act of 1958, separate applications were required to be made if the applicant desires to register the trade mark in more than one class ).

After the application for registration is ACCEPTED, the Registrar shall ADVERTISE the same in the prescribed manner, inviting the objections, if any, for registration of such trade mark. The OPPOSITION, if any, may be served on the Registrar within 3 months from the date of advertisement.

According to Section 23, the Registrar shall register the trade mark-

- If the application has NOT been opposed and the time for the notice of opposition has expired, or

- If the application has been OPPOSED and the matter is decided in FAVOUR of the applicant.

DURATION, RENEWAL, REMOVAL AND RESTORATION OF REGISTRATION ( Section 25 )

The duration of registration of a trade mark shall be for a period of 10 YEARS, but the same may be RENEWED from time to time. The Registrar shall, on the application made in the prescribed form in the prescribed time along with prescribed fee, renew the registration for a further period of 10 years from the date of expiration of original registration.

The registrar shall NOT remove the trade mark from the Register, for want of renewal, UPTO 6 months from the date of expiration of the last registration.

Where the trade mark is REMOVED from the Register of trade marks, for want of renewal, after 6 months and where an application is made within 1 year from the date of expiration of the last registration, the registrar shall RESTORE the trade mark to the Register and RENEW the registration of the trade mark.

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“ INFRINGEMENT ” OF REGISTERED TRADE MARKS ( SECTION 29 )

A registered trade mark is INFRINGED - if a person uses a mark which is DECEPTIVELY identical or similar to the registered trade mark, - in the COURSE of trade, neither as registered proprietor nor permitted user.

A REGISTERED Trade Mark is INFRINGED if -

1 . the mark is identical and used in respect of similar goods or services; (or)

2 . the mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; (or)

3 . the trade mark is identical and is used in relation to identical goods or services,

And such use is likely to cause CONFUSION on the part of the public or is likely to be taken to have an association with the registered trade mark.

Further, a REGISTERED trade mark is INFRINGED by a Person if he –

1 . uses a mark which is IDENTICAL or SIMILAR to the registered trade mark, and

2 . is used in relation to goods or services which are NOT similar to those for which the trade mark is registered, and

3 . 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 the reputation the registered trade mark.

Further, 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 of which the trade mark is registered.

A Person is deemed to have USED a REGISTERED Trade Mark, if he :-

- affixes it to the goods or the packaging thereof,

- offers or exposes the goods for sale or offers services under such mark,

- imports or exports the goods under the mark, (or)

- Uses such mark on business papers or in advertising.

A REGISTERED Trade Mark is infringed by a person who uses such mark on any packaging or labelling material, on business papers or in advertising, and such person knew or has reason to believe that the application of such mark is NOT authorised by the proprietor or a licensee.

A REGISTERED Trade Mark is INFRINGED - if such mark is used in advertising and such advertising is contrary to honest practices in industrial or commercial matters or is detrimental to its distinctive character or is against the reputation of the trade mark.

Further, where the REGISTERED Trade Mark consists of - words, the spoken use of such words or visual representation of the same also would constitute INFRINGEMENT.

“ LIMITS ” - ON EFFECT OF REGISTERED TRADE MARKS ( Section 30 )

The following do NOT constitute infringement of a registered trade mark :-

1. the use is in accordance with the HONEST practices in industrial or commercial matters,

2. the use is NOT to take undue advantage of or be detrimental to the distinctive character or repute of the trade mark.

3. the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characters of the goods or services

4. where the trade mark is registered subject to conditions and limitations, the use of the trade mark in a manner OUTSIDE the scope of registration

5. where a person uses the mark in relation to goods or services under the authority of the registered owner, and such authorisation is NOT subsequently removed or the owner impliedly consented to its use

6. a trade mark is registered for any goods may be used in relation to parts and accessories to other goods or services and such use is reasonably necessary and its effect is NOT likely to deceive as to the origin

7. the use, of a trade mark being one of two or more trade marks registered under the Act, in exercise of the right to the use of such registered trade mark

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“ ASSIGNMENT ” AND “ TRANSMISSION ”INSERT AMENDED

COV.H

According to Section 37, the registered proprietor is entitled to ASSIGN the trade mark and to give effectual receipts for the consideration for such assignment. In terms of SECTION 38, the trade mark shall be assignable and transmissible with or without Goodwill of the business - in respect of all goods or services or part thereof.

According to Section 40, a trade mark is RESTRICTED from being transmitted or assigned, if such assignment or transmission would result in rights IN MORE THAN ONE person - in relation to goods or services, same description of goods or services, the goods or services or description thereof is ASSOCIATED with each other and which would be likely to DECEIVE or cause CONFUSION.

A CERTIFICATION trade mark CANNOT be transmitted or assigned EXCEPT with the consent of the Registrar ( Section 43 ). ASSOCIATED trade marks, which are registered as separate trade marks, shall be assignable or transmissible ONLY as a whole and NOT separately (Section 44).

Sec. 46 - “ PROPOSED USE ” OF TRADE MARK BY COMPANY TO BE FORMED

According to Section 46 of the Act, NO application for the registration of the trade mark shall be refused nor the permission for such registration shall be withheld - on the ground that the applicant does NOT use or propose to use such trade mark, if the registrar is satisfied that -

1. a Company is about to be incorporated and that the applicant intends to assign the Trade Mark - to that Company with a view to its use - in relation to the goods or services by the Company; (OR)

2. the Proprietor intends it to be used by a Person, as a Registered user AFTER the Registration of the Trade Mark.

Sec. 47 - “ REMOVAL ” OF TRADE MARK FOR “ NON-USE ”

Where a trade mark is NOT used within 5 years of its Registration, becomes liable for removal EITHER completely or in respect of those goods or services for which the mark has NOT been used.

The 5 years period starts from the date on which the trade mark is actually entered on the register. However, where such trade mark is NOT used - due to special circumstances in the trade which may INCLUDE restrictions imposed by any law or regulation on the use of the trade mark in India, such trade mark shall NOT be removed.( Type Q.5(a)/J 05 - 5 Marks)

Sec. 48 - “ REGISTERED ” USERS

According to Section 48 of the Act, any person OTHER THAN the proprietor of a registered trade mark may be entered in the register as a registered user, in respect of the goods or services in relation to which the trade mark is registered.

The application in this connection shall be made JOINTLY by the REGISTERED Owner and the proposed registered user in the prescribed form and manner to the Registrar.

The Registration of the registered user may be EITHER cancelled or varied by the REGISTRAR under the following circumstances :-

1. the registration may be VARIED by the Registrar UPON an application made by the Registered proprietor,

2. the registration may be CANCELLED by the Registrar UPON an application made by the Registered proprietor,

3. the registrar may CANCEL the registration UPON an application made by any person in the following cases :-

- the Registered User has used the trade mark OTHER WISE than in accordance with the agreement (or) in such a way as to cause deception or confusion.

- Where the registration has been obtained by NOT disclosing the material facts - which if disclosed would NOT have justified the registration of the registered user.

- Where the circumstances have changed and that the registration of the registered user is NO longer justifiable.

The Registrar may require the registered proprietor to CONFIRM the fact of existence of any agreement, at any point of time.

If such confirmation is NOT received by the registrar within 1 month from the date of notice, the registrar may REMOVE the entry pertaining to the registered user from the register in the prescribed manner.

The registered user may initiate proceedings of infringement under the provisions of Section 52. Further as per Section 54, a registered user is NOT conferred the right of assignment or transmission.(q.5c/d 05-5m)

“ COLLECTIVE ” MARKS

Section 61- 68 of the Act contain the provisions relating to registration of COLLECTIVE trade marks. These provisions provide for the registration of a COLLECTIVE trade mark which belongs to a group or association of persons and the use thereof is restricted to ONLY the members of the group or association of persons.

The application made for the registration of the collective trade mark shall be accompanied by the regulations governing the use thereof. The collective mark may be OWNED by the an association which may NOT use the same but the members of such association may use such collective mark. The primary function of a collective trade mark is to indicate a trade CONNECTION with the association or the organisation.

The REGISTRATION of a COLLECTIVE Trade Mark may be REMOVED if :-

- The manner in which it is used by the owner or authorised users so as to MISLEAD the public as to a collective mark,

- That the proprietor has FAILED to observe the regulations - governing the USE of such collective trade mark.

Q.Explain the meaning of Collective trade mark. ( Dec.02 - 4 Marks)

“ CERTIFICATION ” TRADE MARKS

Sections 69 - 78 deal with registration of Certification Trade Marks.

“ Certification Trade Mark ” is a mark adapted in relation to goods to DISTINGUISH the goods certified by any person in respect of origin, material, mode of manufacture, quality etc. Such mark is registrable in the name of the person certifying the goods. Some examples of such marks are “ISI”, and “AGMARK”. A certification trade mark may be used IN ADDITION TO the user’s own trade mark on his goods.

The certification marks shall NOT be registered - in the name of a Person who carries on a trade in goods or provision of services of the kind certified. After receiving an application for the registration of a mark as a certification trade mark, the Registrar shall consider the following matter, BEFORE registering the mark :-

- Whether the applicant is competent to certify the goods or services,

- Whether the certifying regulations are satisfactory,

- Whether such registration would be in the public advantage.

Further, a certification trade mark may be CANCELLED by the Registrar - if the applicant is NOT competent to certify or fails to observe the regulations or if it is NOT to the public advantage.

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INTELLECTUAL PROPERTY APPELLATE BOARD (

SECTIONS 89 - 99 )

Constitution of the Board :- Under Section 83, the Central Govt. is empowered to establish an Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it. Section 84 provides that the Board shall consist of a Chairman, Vice- Chairman and such number of other members as may be prescribed by the central govt. Section 85 provides for the qualifications for appointment as the Chairman, Vice- Chairman and members. The term of office shall be 5 years from the date of assuming office (or) the attaining of 65 years for chairman & vice chairman and 62 years for members, whichever is EARLIER.

Powers :- Section 92 states that the Appellate Board shall NOT be bound by the procedures as laid down in Code of Civil Procedure, but shall be governed by the principles of natural justice. The appellate board can prescribe its own procedure including the fixing of time and places of hearing.

The Appellate Board shall have the same powers as are vested in a civil court, for the purpose of discharging its functions, in respect of the following matters, namely-

- Receiving evidence ;

- Issuing commissions for the examination of witnesses ;

- Requisitioning any public record ;

- Any other matter as may be prescribed by the Central Govt.

According to SECTION 95, NO interim order shall be given UNLESS the copies of the appeal are furnished to the party against whom the appeal is made and an opportunity of hearing is given to such parties. Further, the Chairman of the Appellate Board is empowered to transfer any case PENDING BEFORE one Bench for disposal to any other Bench (Section 96).

Section 98 entitles the registrar to appear BEFORE the Appellate Board in certain circumstances or in lieu of appearance, to file a statement in writing which shall be treated as evidence in the proceedings. Section 99 EXEMPTS registrar from being ordered to pay costs to the other parties.

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OFFENCES AND PENALTIES

Sections 101-121 heal with the matters relating to offences, penalties and procedure.

Section 103 deals with penalty for applying false trade marks, trade descriptions etc. Section 104 deals with penalty for selling goods or providing services to which false trade mark or false trade description is applied.

The penalty for applying false trade marks, trade descriptions etc and for selling goods or providing services to which false trade mark or false trade description is applied shall be imprisonment for a term which shall NOT be less than 6 months but which may extend to 3 years and with fine which shall not be less than Rs.50,000, but which may extend to Rs. 2,00,000.

However, the Court is empowered to impose a LESSER sentence in deserving cases.

ENHANCED penalty on SECOND or SUBSEQUENT conviction :- Section 105 provides that whoever having already been convicted is again convicted of ANY such offence shall be punishable for the second and for every subsequent offence with imprisonment which shall NOT be less than one year but which may EXTEND to 3 years and with fine which shall NOT be less than Rs. 1,00,000, but which may EXTEND to Rs. 2,00,000. However, the court is empowered to impose a LESSER sentence in deserving cases.

PENALTY for REMOVING piece goods etc. contrary to Section. 81 :- Section 106 provides that if any person removes or attempts to remove for sale the goods or cotton yarn or cotton threads which are NOT marked in accordance with the provision of the Act, all such goods will be FORFEITED to the Government and the person shall be punishable with fine which may extend to Rs. 1000.

Penalty for FALSELY representing a Trade Mark as REGISTERED (Section 107) :- Section 107 provides that if any person falsely represent a trade mark as a registered trade mark, he shall be punishable with imprisonment for a term which may extend to 3 years, or with fine, or with both.

“ EXCEPTIONS ” :-

- However, where such word “registered” (or) any other expression or sign or symbol referring to registration - is USED with OTHER words - with the same size in Characters and such indication as to registration as a trade mark under the law of a Country OUTSIDE India - in which it is in force.

- Where the word is used in relation to a mark registered as a Trade Mark under the law of a Country OUTSIDE India and relation 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 CONNECTED with Trade Mark office :- In terms of Section 108, the use of any words which would lead to the belief that a person’s place of business is OFFICIALLY connected with the trade mark office shall be treated as offence and punishable with imprisonment for a term which may extend to 2 years or with fine or with both.

OFFENCES by “ COMPANIES ” :- Section 114 provides that where a Person committing offence is a Company, every person in-charge of and responsible to the Company for the conduct of its business will be liable. Where a person accused proves that the offence was committed WITHOUT his knowledge or he has exercised all due diligence to prevent the commission of such offence, will NOT be liable.

However, where it is PROVED that the offence was committed with the CONSENT or CONNIVANCE or is ATTRIBUTABLE to any neglect of any Director,

Manager, Secretary or any other officer of the company, he shall be deemed to be guilty of the offence.

COGNIZANCE of certain OFFENCES and POWERS of Police Officer :- According to Section 115, NO court shall take cognizance of any offence committed under Sections 107 ( falsely representing a trade mark as registered ),108 (improperly describing a place of business as connected with Trade Mark office ) & 109 (falsification of entries in the register ) EXCEPT on a complaint made by the registrar or any authorised person.

Further, NO court inferior to that of a metropolitan magistrate or judicial magistrate of the First Class shall TRY an offence under this Act. The offences under Sections 103, 104 & 105 are COGNIZABLE offences.

Any Police Officer NOT below the rank of Deputy Superintendent of police may, if he has reason to believe that any offence under Sections 103, 104 & 105 is committed, or is likely to be committed, search and seize the goods or other articles involved in the committing the offence the produce the same BEFORE metropolitan magistrate or judicial magistrate of the First Class, as early as practicable.

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“ RELIEF ” IN SUITS - FOR INFRINGEMENT (OR) PASSING

OFF

Section 135 deals with Reliefs which may be granted by Courts - in suits for infringement or passing off. In such cases, the court may grant an INJUNCTION (or) at the option of the plaintiff, EITHER damages or share in profits, with or without order for delivery of infringing labels and marks for destruction.

The order of injunction may INCLUDE ex-parte injunction or nay interlocutory order for discovery of documents, preserving infringing goods, other pecuniary remedies etc.

However, the Courts are RESTRAINED from granting relief by way of damages ( other than nominal damages ), or an account of profit - in any case where the infringement complained - of relates to Certification marks (or) collective mark (or) where the defendant SATISFIES the court that when he used that mark, he was unaware (or) has NO reasonable ground to believe that the trade mark is registered one and when he came to know of the existence of the trademark, he STOPPED the use of the trade mark.

TRADE MARK “ AGENT ” :- Section 145 provides that if any act is required to be done BEFORE the Registrar by any person, may also be done by an AUTHORISED legal practitioner, a TRADE MARK AGENT, (or) a person who is in sole and regular EMPLOYMENT of the principal.

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