Taxmann's Trade Marks Act 1999 with Rules

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© Taxmann Price : ` 295 Law stated in this book is as updated till 1st December, 2025 Published by : Taxmann Publications (P.) Ltd. Sales & Marketing : 59/32, New Rohtak Road, New Delhi-110 005 India Phone : +91-11-45562222 Website : www.taxmann.com E-mail : sales@taxmann.com Regd. Office : 21/35, West Punjabi Bagh, New Delhi-110 026 India Printed at : Tan Prints (India) Pvt. Ltd. 44 Km. Mile Stone, National Highway, Rohtak Road Village Rohad, Distt. Jhajjar (Haryana) India E-mail : sales@tanprints.com Disclaimer Every effort has been made to avoid errors or omissions in this publication. In spite of this, errors may creep in. Any mistake, error or discrepancy noted may be brought to our notice which shall be taken care of in the next edition. It is notified that neither the publisher nor the author or seller will be responsible for any damage or loss of action to any one, of any kind, in any manner, therefrom. It is suggested that to avoid any doubt the reader should cross-check all the facts, law and contents of the publication with original Government publication or notifications.

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Contents TRADE MARKS ACT, 1999 PAGE

CHAPTER I PRELIMINARY 1. Short title, extent and commencement

1

2. Definitions and interpretation

1

CHAPTER II THE REGISTER AND CONDITIONS FOR REGISTRATION 3. Appointment of Registrar and other officers

9

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

9

5. Trade marks registry and offices thereof

9

6. The Register of Trade Marks

10

7. Classification of goods and services

10

8. Publication of alphabetical index

10

9. Absolute grounds for refusal of registration

11

10. Limitation as to colour

13

11. Relative grounds for refusal of registration

13

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

17

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

18

I-5

CONTENTS

I-6 PAGE

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

18

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

19

16. Registration of trade marks as associated trade marks

20

17. Effect of registration of parts of a mark

21

CHAPTER III PROCEDURE FOR AND DURATION OF REGISTRATION 18. Application for registration

22

19. Withdrawal of acceptance

24

20. Advertisement of application

24

21. Opposition to registration

25

22. Correction and amendment

26

23. Registration

26

24. Jointly owned trade marks

26

25. Duration, renewal, removal and restoration of registration

27

26. Effect of removal from register for failure to pay fee for renewal

28

CHAPTER IV EFFECT OF REGISTRATION 27. No action for infringement of unregistered trade mark

29

28. Rights conferred by registration

29

29. Infringement of registered trade marks

31

30. Limits on effect of registered trade mark

34

31. Registration to be prima facie evidence of validity

35

32. Protection of registration on ground of distinctiveness in certain cases

35

33. Effect of acquiescence

36

34. Saving for vested rights

36

35. Saving for use of name, address or description of goods or services

37

36. Saving for words used as name or description of an article or substance or service

37

I-7

CONTENTS PAGE

CHAPTER IVA SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL 36A. Application of Act in case of international registration under Madrid Protocol

38

36B. Definitions

38

36C. Trade Marks Registry to deal with international applications

39

36D. International application originating from India

39

36E. International registrations where India has been designated

40

36F. Effects of international registration

41

36G. Duration and renewal of international registration

41

CHAPTER V ASSIGNMENT AND TRANSMISSION 37. Power of registered proprietor to assign and give receipts

41

38. Assignability and transmissibility of registered trade marks

42

39. Assignability and transmissibility of unregistered trade marks

42

40. Restriction on assignment or transmission where multiple exclusive rights would be created

42

41. Restriction on assignment or transmission when exclusive rights would be created in different parts of India

43

42. Conditions for assignment otherwise than in connection with the goodwill of a business

44

43. Assignability and transmissibility of certification trade marks

44

44. Assignability and transmissibility or associated trade marks

45

45. Registration of assignments and transmissions

45

CHAPTER VI USE OF TRADE MARKS AND REGISTERED USERS 46. Proposed use of trade mark by company to be formed, etc.

47

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

48

48. Registered users

51

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I-8 PAGE

49. Registration as registered user

51

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

53

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

54

52. Right of registered user to take proceedings against infringement

54

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

55

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

55

55. Use of one of associated or substantially identical trade marks equivalent to use of another

56

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

56

CHAPTER VII RECTIFICATION AND CORRECTION OF THE REGISTER 57. Power to cancel or vary registration and to rectify the register

57

58. Correction of register

58

59. Alteration of registered trade marks

58

60. Adaptation of entries in register to amended or substituted classification of goods or services

58

CHAPTER VIII COLLECTIVE MARKS 61. Special provisions for collective marks

59

62. Collective mark not to be misleading as to character or significance

59

63. Application to be accompanied by regulations governing use of collective marks

59

64. Acceptance of application and regulations by Registrar

59

65. Regulations to be open to inspection

59

66. Amendment of regulations

59

67. Infringement proceeding by registered proprietor of collective mark

60

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CONTENTS PAGE

68. Additional grounds for removal of registration of collective mark

60

CHAPTER IX CERTIFICATION TRADE MARKS 69. Certain provisions of this Act not applicable to certification trade marks

60

70. Registration of certification trade marks

60

71. Applications for registration of certification trade marks

60

72. Consideration of application for registration by the Registrar

61

73. Opposition to registration of certification trade marks

61

74. Filing of regulations governing the use of a certification trade mark

61

75. Infringement of certification trade marks

62

76. Acts not constituting infringement of certification trade marks

62

77. Cancellation or varying of registration of certification trade marks

63

78. Rights conferred by registration of certification trade marks

63

CHAPTER X [***] 79. to 82. [Omitted by the Trade Marks (Amendment) Act, 2010, w.e.f.

8-7-2013]

64

CHAPTER XI APPEALS 83. to 90. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

64

91. Appeals to High Court

64

92. [Omitted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021]

68

93. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

68

94. Bar to appear before Registrar

69

95. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

69

96. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

69

97. Procedure for application for rectification, etc., before High Court

69

98. Appearance of Registrar in legal proceedings

69

CONTENTS

I-10 PAGE

99. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

70

100. [Omitted by the Tribunals Reforms Act, 2021, w.e.f. 4-4-2021]

70

CHAPTER XII OFFENCES, PENALTIES AND PROCEDURE 101. Meaning of applying trade marks and trade descriptions

70

102. Falsifying and falsely applying trade marks

71

103. Penalty for applying false trade marks, trade descriptions, etc.

71

104. Penalty for selling goods or providing services to which false trade mark or false trade description is applied

72

105. Enhanced penalty on second or subsequent conviction

73

106. Penalty for removing piece goods, etc., contrary to section 81

73

107. Penalty for falsely representing a trade mark as registered

73

108. Penalty for improperly describing a place of business as connected with the trade marks office

74

109. Penalty for falsification of entries in the register

74

110. No offence in certain cases

74

111. Forfeiture of goods

74

112. Exemption of certain persons employed in ordinary course of business

75

112A. Adjudication of penalties

75

112B. Appeal

75

113. Procedure where invalidity of registration is pleaded by the accused

76

114. Offences by companies

77

115. Cognizance of certain offences and the powers of police officer for search and seizure

77

116. Evidence of origin of goods imported by sea

78

117. Costs of defence or prosecution

78

118. Limitation of prosecution

78

119. Information as to commission of offence

78

120. Punishment of abetment in India of acts done out of India

78

121. Instructions of Central Government as to permissible variation to be observed by criminal courts

78

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CONTENTS PAGE

CHAPTER XIII MISCELLANEOUS 122. Protection of action taken in good faith

79

123. Certain persons to be public servants

79

124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

79

125. Application for rectification of register to be made to High Court in certain cases

80

126. Implied warranty on sale of marked goods

80

127. Powers of Registrar

81

128. Exercise of discretionary power by Registrar

81

129. Evidence before Registrar

81

130. Death of party to a proceeding

81

131. Extension of time

81

132. Abandonment

82

133. Preliminary advice by the Registrar as to distinctiveness

82

134. Suit for infringement, etc., to be instituted before District Court

83

135. Relief in suits for infringement or for passing off

84

136. Registered user to be impleaded in certain proceedings

85

137. Evidence of entries in register, etc., and things done by the Registrar

86

138. Registrar and other officers not compellable to produce register, etc.

86

139. Power to require goods to show indication of origin

86

140. Power to require information of imported goods bearing false trademarks

87

141. Certificate of validity

87

142. Groundless threats of legal proceedings

88

143. Address for service

89

144. Trade usages, etc., to be taken into consideration

89

145. Agents

89

146. Marks registered by an agent or representative without authority

89

147. Indexes

89

148. Documents open to public inspection

90

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I-12 PAGE

149. Reports of Registrar to be placed before Parliament

90

150. Fees and surcharge

90

151. Savings in respect of certain matters in Chapter XII

90

152. Declaration as to ownership of trade mark not registrable under the Registration Act, 1908

91

153. Government to be bound

91

154. Special provisions relating to applications for registration from citizens of convention countries

91

155. Provision as to reciprocity

92

156. Power of Central Government to remove difficulties

92

157. Power to make rules

92

158. Amendments

96

159. Repeal and savings

96

SCHEDULE

97

SUBJECT INDEX

99

TRADE MARKS RULES, 2017 CHAPTER I PRELIMINARY 1. Short title and commencement

107

2. Definitions

107

3. Principal place of business in India

110

4. Appropriate office of the Trade Marks Registry

110

5. Jurisdiction of appropriate office not altered by change in the principal place of business or address for service

111

6. Entry of the appropriate office in the Register

111

7. Transfer of pending applications and proceedings to appropriate offices of the Trade Marks Registry

111

8. Leaving of documents, etc.

112

9. Issue of notices etc.

112

10. Fees

112

11. Forms

112

12. Size, etc of documents

113

13. Signing of documents

113

14. Service of documents

113

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CONTENTS PAGE

15. Particulars of address etc. of applicants and other persons

114

16. Statement of principal place of business in India in the application

114

17. Address for Service

114

18. Service of Documents by the Registrar

115

19. Agency

115

20. Classification of goods and service

116

21. Preliminary advice by Registrar as to distinctiveness

116

22. Request to Registrar for Search

116

CHAPTER II PROCEDURE FOR REGISTRATION OF TRADEMARKS APPLICATION 23. Form and signing of application

117

24. Application under convention arrangement

117

25. Statement of user in applications

118

26. Representation of trademark

118

27. Series Trademarks

119

28. Transliteration and translation

119

29. Names and representations of living persons or persons recently dead

119

30. Name or description of goods or services on a trademark

120

31. Deficiencies

120

32. Acknowledgement of the Application

120

33. Examination, Objection to acceptance, hearing

120

34. Expedited Processing of Application

121

35. Notice of withdrawal of application for registration

121

36. Decision of Registrar

121

37. Correction and amendment of application

122

38. Withdrawal of acceptance by the Registrar

122

39. Manner of Advertisement

122

40. Notification of correction or amendment of application

123

41. Request to Registrar for particulars of advertisement of a trademark

123

Opposition to Registration 42. Notice of Opposition

123

43. Requirements of Notice of Opposition

124

CONTENTS

I-14 PAGE

44. Counter-statement

125

45. Evidence in support of opposition

125

46. Evidence in support of application

125

47. Evidence in reply by opponent

126

48. Further evidence

126

49. Translation of documents

126

50. Hearing and decision

126

51. Security for costs

127

Notice of Non-Completion of Registration 52. Procedure for giving notice

127

Registration 53. Entry in the Register

127

54. Associated trademarks

128

55. Death of applicant before registration

128

56. Certificate of registration

128

CHAPTER III RENEWAL OF REGISTRATION AND RESTORATION 57. Renewal of registration

129

58. Notice before removal of trademark from register

129

59. Advertisement of removal of trademark from the register

129

60. Restoration and renewal of registration

130

61. Notice and advertisement of renewal and restoration

130

CHAPTER IV SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADEMARKS THROUGH THE INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL 62. Definitions

130

63. Language

130

64. Issue of notices or communications etc. and response thereto

130

65. International application in respect of which India is the country of origin

130

66. Verification and Certification of international application in respect of which India is the country of origin

131

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CONTENTS PAGE

67. Handling fee

131

68. Manner of keeping the record of international registrations where India has been designated

131

69. Examination of application under section 36E

131

70. Invalidation of protection

132

71. Effect of cancellation of international registration

132

72. Collective and Certification Trademarks

132

73. Replacement of national registration

132

74.

133 CHAPTER V ASSIGNMENT AND TRANSMISSION

75. Application for entry of assignment or transmission

133

76. Case accompanying application

133

77. Proof of title

133

78. Impounding of Instruments

133

79. Assignments involving transmission of moneys outside India

133

80. Application for Registrar’s direction as to advertisement of an assignment of a trademark without goodwill of the business

133

81. Application for entry of assignment without goodwill

134

82. Separate registration

134

83. Registrar’s certificate or approval as to certain assignment and transmissions

134

84. Entry in register, of particulars of assignment

135

85. Registration of assignment to a company under section 46

135

CHAPTER VI REGISTERED USER 86. Application for registration as registered user

135

87. Consideration by the Registrar

136

88. Hearing before refusing an application or to accept it conditionally

136

89. Entry in the register

136

90. Registration not to imply authorisation to transmit money outside India

136

CONTENTS

I-16 PAGE

91. Communication of registration as registered user

136

92. Registered proprietor’s application to vary entry

136

93. Cancellation of registration of registered user

137

94. Power of the Registrar to call for information with respect to registered user

137

95. Procedure on application to vary entry or cancel registration

137

96. Registered user’s application

137

CHAPTER VII RECTIFICATION AND CORRECTION OF REGISTER ALTERATION OR RECTIFICATION OF REGISTER 97. Application to rectify or remove a trademark from the register

138

98. Further procedure

138

99. Intervention by third parties

138

100. Rectification of the register by the Registrar of his own motion

138

Alteration or Correction in Register 101. Alteration of address in register

139

102. Alteration of registered trademark

140

103. Advertisement before decision and opposition etc.

140

104. Decision, Advertisement, Notification

140

Re-classification of Goods in Respect of Existing Registration 105. Re-classification in respect of existing registration

141

CHAPTER VIII MISCELLANEOUS 106. Refusal or invalidation of registration of a trademark conflicting with a geographical indication

141

107. Single application under sub-section (2) of section 18

141

108. Divisional Application

142

109. Extension of time

142

110. Exercise of discretionary power of Registrar

142

111. Communication of decision

142

112. Amendments and correction of irregularity in procedure

143

113. Directions not otherwise prescribed

143

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CONTENTS PAGE

114. Opinion of the Registrar under section 115(4)

143

Hearings 115. Hearings

143 Awards of Costs by Registrar

116. Costs in uncontested cases

144

117. Exception to rule 116

144

118. Scale of costs

144

Review of Decisions of the Registrar 119. Application for review of Registrar’s decision

144

Affidavit 120. Form, etc. of Affidavits

144

Inspection of Documents by Public 121. Inspection of documents

145

Certificates 122. Certified copies of documents

145

123. Power of Registrar to notify International Non-proprietary names

145

Well-Known Trademarks 124. Determination of Well Known Trademark by Registrar

146

Appeal to the Intellectual Property Appellate Board 125. Time for appeal

146

126. Service to the Registrar

146

Certificate of Validity 127. Certificate of validity to be noted

146

Return of Exhibits and Destruction of Records 128. Return of exhibits

147

129. Destruction of records

147

130. Rules to apply to collective trademarks

147

131. Application for registration and proceedings relating thereto

147

132. Case accompanying application

148

133. Examination, Hearing, Opposition, Registration, and Renewal

148

134. Amendment of regulations relating to collective trademarks and renewal

148

CONTENTS

I-18 PAGE

135. Removal of collective trademark

148

136. Rules to apply to certification Trademarks

148

137. Application for registration and proceedings relating thereto

148

138. Statement of case accompanying application

149

139. Examination, Hearing, Opposition, Registration, and Renewal

149

140. Cancellation or variation of registration of certification trademark

149

141. Alteration of deposited regulations and consent of the Registrar for assignment or transmission of certification Trademarks

149

142. Register of Trademarks Agents

150

143. Registration of existing registered trademarks agents, code of conduct, etc.

150

144. Qualifications for registration

150

145. Persons debarred from registration

150

146. Manner of making application

151

147. Application for registration as a trademarks agent

151

148. Procedure on application and qualifying requirements

151

149. Certificate of registration

151

150. Continuance of the name in the register of Trade Marks Agents

151

151. Removal of agent’s name from the register of Trade Marks agents

151

152. Power of Registrar to refuse to deal with certain agents

152

153. Restoration of removed names

152

154. Alteration in the register of Trademarks Agents

152

155. Publication of the register of trademarks agents

153

156. Appeal

153

157. Language of the Trade Marks Registry

153

158. Repeal

153

FIRST SCHEDULE

154

SECOND SCHEDULE FORMS

158

THIRD SCHEDULE

177

FORTH SCHEDULE

179

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TRADE MARKS (APPLICATIONS AND APPEALS TO THE INTELLECTUAL PROPERTY APPELLATE BOARD) RULES, 2003 1. Short title and commencement

180

2. Applications and appeals

180

3. Fees

181

FIRST SCHEDULE

181

SECOND SCHEDULE

186

INTELLECTUAL PROPERTY APPELLATE BOARD (PROCEDURE) RULES, 2003 1. Short title and commencement

187

2. Definitions

187

3. Form of procedure of application or appeal

188

4. Payment of fee

188

5. Language of the Appellate Board

188

6. Application or appeal to be in writing

188

7. Presentation and scrutiny of application or appeal

189

8. Documents to accompany application or appeal

189

9. Notices of application or appeal to the respondent

189

10. Filing of counter-statement to the application or appeal and other documents by the respondent

189

11. Filing of reply by the applicant or appellant

190

12. Exhibits

190

13. Translation of documents

190

14. Extension of time

190

15. Intervention by third parties

190

16. Date of hearing to be notified

191

17. Hearing of application or appeal

191

CONTENTS

I-20

18. Adjournment of hearing

191

19. Award of costs by the Appellate Board

191

20. Order to be signed and dated

191

21. Communication of orders

191

22. Publication of the orders

191

23. Review petitions

191

24. Continuation of proceedings after the death of a party, merger, assignment, acquisition or transmission

192

25. Fee for inspection of records and obtaining copies thereof

192

26. Functions of the Deputy Registrar

192

27. Additional functions and duties of the Deputy Registrar

192

28. Dress regulations for the Chairman, Vice-Chairman, Technical Member of the Appellate Board and for the representatives of the parties

193

29. Seal and emblem

193

FIRST SCHEDULE

193

SECOND SCHEDULE

198

TRADE MARKS (HOLDING INQUIRY AND APPEAL) RULES, 2024 Holding Inquiry and Appeal 1. Short Title and Commencement

199

2. Definitions

199

3. Complaint

200

4. Holding of inquiry

200

5. Appeal

201

6. Serving upon parties

201

7. Extension of time

201

8. Order and penalties FIRST SCHEDULE

201 202

TRADE MARKS (REMOVAL OF DIFFICULTIES) ORDER, 2004

Trade Marks (Removal of Difficulties) Order, 2004

204

SAMPLE CHAPTER

Trade Marks Act, 1999 [47 OF 1999]1 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:— CHAPTER I PRELIMINARY Short title, extent and commencement.

1. (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 date2 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. (1) In this Act, unless the context otherwise requires,— (a) 3[***] (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; 4 (d) [***] 1. Dated 30-12-1999.

2. Notification No. S.O. 1048(E), dated 15-9-2003 - In exercise of the powers conferred by sub-section (3) of section 1 of the Trade Marks Act, 1999 (47 of 1999), the Central Government hereby appoints 15th day of September, 2003 as the date on which all the provisions of the said Act shall come into force.

3. Omitted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021. Prior to its omission, clause (a) read as under: ‘(a) “Appellate Board” means the Appellate Board established under section 83;’ 4. Omitted, ibid. Prior to its omission, clause (d) read as under: ‘(d) “Bench” means a Bench of the Appellate Board;’

1

S. 2

TRADE MARKS ACT, 1999

2

(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; (f) 5[***] (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 those 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 contained, as regards the goods to which it is applied, more yards or metres than there are contained therein standard yards or standard metres; or (IV) any marks or arrangement or combination thereof 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 5. Omitted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021. Prior to its omission, clause (f) as amended by the Finance Act, 2017, w.e.f. 26-5-2017, read as under: ‘(f) “Chairperson” means the Chairperson of the Appellate Board;’

3

TRADE MARKS ACT, 1999

S. 2

(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) 6[***] (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 India 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) 7[***] (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 6. Omitted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021. Prior to its omission, clause (k) as amended by the Finance Act, 2017, w.e.f. 26-5-2017, read as under: ‘(k) “Judicial Member” means a Member of the Appellate Board appointed as such under this Act, and includes the Chairperson and the Vice-Chairperson;’ 7. Omitted, ibid. Prior to its omission, clause (n) as amended by the Finance Act, 2017, w.e.f.

26-5-2017, read as under: ‘(n) “Member” means a Judicial Member or a Technical Member of the Appellate Board and includes the Chairperson and the Vice-Chairperson;’

S. 2

TRADE MARKS ACT, 1999

4

(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,–

8

(i) in relation to proceedings before a High Court, prescribed by rules made by the High Court; and (ii) in other cases, 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, 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; (za) “trade description” means any description, statement or other indication, direct or indirect,— (i) as to the number, quantity, measure, gauge or weight of any goods; or (ii) as to the standard of quality of any goods 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

8. Substituted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021. Prior to its substitution, clause (s) read as under: ‘(s) “prescribed” means prescribed by rules made under this Act;’

5

TRADE MARKS ACT, 1999

S. 2

(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 case 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, 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; (zc) “transmission” means transmission by operation of law, devaluation 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) 9[***] (zf) 9a[***] 9. Omitted by the Tribunals Reforms Act, 2021, w.r.e.f. 4-4-2021. Prior to its omission, clauses (ze) as amended by the Finance Act, 2017, w.e.f. 26-5-2017, read as under: ‘(ze) “tribunal” means the Registrar or, as the case may be, the Appellate Board, before which the proceeding concerned is pending;’ 9a. Omitted, ibid. Prior to its omission, clause (zf) read as under: ‘(zf) “Vice-Chairperson” means a Vice-Chairperson of the Appellate Board;’

TRADE MARKS ACT 1999 WITH RULES BARE ACT WITH SECTION NOTES AUTHOR : PUBLISHER : DATE OF PUBLICATION : EDITION : ISBN NO : NO. OF PAGES : BINDING TYPE :

Taxmann's Editorial Board Taxmann December 2025 2026 Edition 9789375611158 224 Paperback

Rs. 295 DESCRIPTION Trade Marks Act 1999 with Rules [Bare Act with Section Notes] by Taxmann provides a clear, authoritative, and updated presentation of India's trade mark law. It consolidates the Trade Marks Act 1999, along with the applicable Rules and allied subordinate legislation, and is supplemented by concise, section-wise notes that simplify key provisions and clarify their practical application. The publication reproduces the statute in its exact legislative form, while the accompanying notes enhance ease of reference and understanding of trade mark law and procedure.

This book is intended for the following audience: • Legal Professionals & IP Practitioners • Corporates, Start-ups & Business Owners • Academicians & Researchers • Examination Aspirants The Present Publication is the 2026 Edition, covering the amended and updated text of the Trade Marks Act [Act No. 47 of 1999] and Rules, with the following noteworthy features: • [Bare Act with Explanatory Section Notes] Unaltered statutory text followed by brief notes explaining scope, terminology, and procedural relevance • [Incorporation of Amendments] Updated to include amendments to the Act and Rules as in force • [Pre-Amendment Provisions] Earlier versions of amended provisions are included in footnotes for contextual clarity • [Updated Rules, Notifications & Orders] Incorporates the Trade Marks Rules 2017 and relevant procedural instruments • [Madrid Protocol & International Registration] Covers provisions relating to international registration of trade marks • [User-friendly Organisation] Structured contents, classification tables, and alphabetical indexes for quick navigation • [Ready Reckoner for Practitioners] Subject grouping and indexing designed for efficient statutory reference

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