Repealed or not in force · As amended up to 2026-08
(6) Except as otherwise expressly provided in this section, the provisioils of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases. ,
39. (1) `-4` person other than tho proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of' which it is registered (otherwise than as a defensive tcade mark) and either with or without conditions or restrictione.
(2) The permitted use of a trade mmk shall be deemed to be use by the proprietor thereof, and shall
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bedeemed not to be use by a person other than the proprietor, for any purpose for which such use is material under this Act or any other law.
40. (1) Subject to any agreement subsisting between power $he pqrtias, a ~egktsrie&~u.~le.r, pf?a~?@iide mark shall be registered `to` take entitled to call upon the proprietor thereof to take tzgpga proceedings to prevent infringement thereof, and if lnfihgement. the proprietor refuses or neglect0 to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the propriet~r a defendant.
(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of' which there is no longer any registration in tho name of the same proprietor otherwise than as a defensive trade mark.
45. TTse of trade mark for esport trade, and use when form of trade connection changes.
CHAPTER VII.
arid to rectify the'
46. :Power to cancel or vary r e g i ~ t ~ a l i o ~ l arid register.
47. Correction of. register.
(4) On application in the manner by any any person aggrieved to a High Court or to the Rogistrar, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of' sub-section (I) are no longer satisfied in respect of any goods in relation to which the trade mark is registered: in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is regietered as a defensive trade mark on the .ground that there is no longer any likelihood that the use of the trade mark in relation to. those goods would be taken as giving the indication. mentioned in sub-seotibn (1).
(2) Where in relation to any goods in respect of which a trade mark is registered-
- (a) the circumstar~ces referred to in clause (b) of sub-section (I) are shown to exist BO far ag regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in British India (otherwise than for export from British India), or in relation to goods to be exported to a particular market outside British India, end
- (b) a person has been permitted undor sub-seotion (2) of section `10` to register an identical or nearly resembling trade mark in respect - of those goods under a registration extending to
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to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register rsuch a tredo mark,
on application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark with limitations as it thinks proper for securing that that registration shall cease to extend to such use.
(3) The Registrar shall refuse an application under this section if it appears to him that the grant thereof wollld tend to facilitate trafficking in a trade mark.
CHAPTER VI.
36. ( I ) No application for the registration of a trade z;ty;;adB mark in respect of any goods shall be refused, nor shall mark company `by to` permission for such registration be witlllleld, on the hc formed. ground only that. it appears that the applicant does not use or propoae to use the tracie mark, if the Registrar is satisfied that company is about to be formed and registered under the Indian Companies Act, 1913, and that the applicant intends to assign the trade mask to that company wit.11 a view to the use thereof in relation to those goods by the company.
(2) The tribunal may, in a case to which sub-section (1) applies, require the applicant to give sec~lrity for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.
(3) Where in a case to which sub-section (1) applies, s trade mark in respect of any goods is registered in the na.me of an applicant who rdies on intention to assign to a company, then, unless within such period as may be prescribed, or within srlch further period not exceeding six months as the Registrar may, on applica,tion being made to him in the prescribed manner, allow, the company has heen registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.
3'7. (1) Subject to t4e provisions of section 38, a ~,,,,,1 registered trade mark may be taken off the register inF:d"i~~kkh~ of limi4tions respect of any of tho goods in respect of which it is re- ground of gistored on application in tlie prescribed manner by any [non-use. ] pmon aggrieved to a High Court or to the Registrar, on the ground either-
( ( I ) that the trade mark mas registered without any bonn Jide intention on the part ~f the applicant for registration that it shonld be nsed in rela,tion to hose goods by him or, in a c!r,sn to uEic11 the provisions of ~ection 36
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||(4)The Registrarshd,ifso requested by an appli-<br>cant, take steps for securing that information given for<br>the purposes of an application under t h i ~<br>section (other<br>than matter entered in the register) is not disclosed t o<br>rivals in trade.<br>(5)The Registrar shall issue notice in the prescribed<br>manner-|(4)The Registrarshd,ifso requested by an appli-<br>cant, take steps for securing that information given for<br>the purposes of an application under t h i ~<br>section (other<br>than matter entered in the register) is not disclosed t o<br>rivals in trade.<br>(5)The Registrar shall issue notice in the prescribed<br>manner-|I|I|
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|||(a)of the registration of a person as a registered|||
|||user, to any other registered user of the trade|||
|||mark;|||
|||(b)of an application under section42,to the|||
|||registered propriator, and each registered|||
|||user (not being the applicant), of the trade|||
|||mark.|||
|Power to<br>Reglatrsr<br>tovaryor<br>cancel|46,|42.Without prejudice to the provisions of section<br>46,the registration of a person as a registered user-|||
|registration<br>aa Eglste~ed||(a)may be varied by tlxa Registrarasregards|||
|user.||tho goods in respect of which, or any condi-|||
|||tions or restrictiom subject to which, it has|||
|||effect, on the application in writinginthe|||
|||prescribed||i<br>i|
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(3) An applicant shall not be ontitled to rely for the purpose of clause ( b ) of sub-section (1) or 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 and not to any intention to abandon or not to use the trade mark in relation to the goods to which the applicetion relates.
38. (1) Where a trade mark consisting of any in- Defensive regiatratlon vented word has become so well-known as respects any of well-known trade `marks.` goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the firstmentioned goods, then, notwithstanding that the proprietor registered in respect of the fist-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 37, the trade mark may on application in the prescribed manner by such proprietor be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be faken off the register in respect of those goods under t,he said section.
(2) Notwithstanding anything contained in any other law, a proprietor so added as defendant shall not be liable for ally costs unless he enters an appearance a.nd takes part in the proceedings.
41. (1) Where it is proposed that a person should kp,p:fg%t- be registered as a registered user of a trade mark, the kkna;;;~b- proprietor and the proposed registered user shall make application in writing to the Registrar in the prescribed manner accompanied by an affidavit made by the proprietor, or by some person anthorised to the satisfaction of the R>egistrar to act on his behalf,--
(a) giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including par. ticulnrs 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 sball he tlie sole registered user or that there shall be any other restric,tion as to persons for whose re&-tration as registered twers application may be made :
- (b) stating the goods in respect of which registration is proposed ;
- (c) stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter ;
- (d) stating
apply, by the company concerned, and that there has in fact been no bonajide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application ; or
- ( b ) that. up to `s` date one month before the date of the application, s continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no b m . jide use thereof in relation to those goods by any proprietor thereof for the time being :
Provided that, except where the applicant has been uermitted under sub-section (2) of section `10` to regist-. an identical or nearly resembling trade mark in respect of the goods 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 made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, born $de use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respeat of which the trade mark is registered.
(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already re@stered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding
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that it is already registered in his name in respect of those goods as a defensive trade marlr, in lieu in each case of the existing registration.
(3) A trade mark registered as a defensive trade mark and that trade mark a8 otherwise registered in the name of the same proprietor shall,' notwithstanding that the respective registrations are in respect of different goods, be deemed to he, and shall be registered as, associated trade marks.
manner by any any
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(d) stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof;
and by such further documents, information or evidence as may he required by th6 RBgilbtaf or a$ may be prescribed.
(2) When the requirements of sub-section (I) have been complied with, if the Registrar is satisfied that in all the cirqumstances the use of the trade mark in respect of the proposed goods or any of them by the proposed registered user subject to any conditions or rostrictians which the Registrar may think proper, would not be contrary to the public interest, the Registrar may register, subject as aforesaid, %he proposed registered user as a registered user in respect of the goods as to which he is so satisfied.
|I<br>I<br>I||OF19401<br>T*adeMarks||||||||||
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|I||prescribed manner of the registered proprie-||||||||||
|||tor of the trade mark;||||||||||
|||(b)may be cancelled by the Registrar on the||||||||||
|||application in writing in the prescribed||||||||||
||d|manner of the registered proprietor or of the||||||||||
|I||registered user or of m y other registered||||||||||
|||user of the trade mark;||||||||||
|||(c)may be cancelled by the Registrar on the||||||||||
|(<br>I||,zpplica.tion in writing 'in the prescribed||||||||||
|||manner of any person on anyofthe following||||||||||
|||grounds, namely:-||||||||||
|||ii)that the registered user has used the trade||||||||||
|||mark otherwise than by way of the per-||||||||||
|||mitted use, or in such(Iway asto9auseor||||||||||
|||to be likelytocause, deception or confu-||||||||||
|||sion;||||||||||
|||(ii)that the proprietor or'the registered user||||||||||
|||misrepresented, or failed to disclose, some||||||||||
|||fact material to the application for the||||||||||
|I||registration, or that the ciroumstances||||||||||
|I||have materially changed since the date of||||||||||
|||the registration;||||||||||
|I||(iii)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 in respect||||||||||
|||of any goods in relation to which the trade||||||||||
|||mark is no longer registered.||||||||||
|||43.Nothing in this Act shall confer on a registered|Registered<br>user notto|||Registered||||||
|||user of a trade mark any assignable or transmissible<br>right to the use thereof.|user of a trade mark any assignable or transmissiblehave right<br>of assignment<br>or tranamisslon,,|||||||||
|||44.(1)Where under the provisions of this Act use of|~|~|~|~|;|o|;|f||
|||a registered trade mark is required to be proved for arly<br>purpose, the tribunal may,ifand so far as it shall think<br>right, accept use of a registered associated trade mark,|a registered trade mark is required to be proved for arlysubstantially<br>identical<br>and so far as it shall thinkg$v$,";p<br>right, accept use of a registered associated trade mark,g$;e;F||||||||i<br>!<br>I|
|||or of the trademarkwith additions or alterations not|with additions or alterations not|||||||||
|||substantially affecting its identity, as an equivalent for|substantially affecting its identity, as an equivalent for|||||||||
|||the use required to be proved.||||||||||
|||(2)The|The|||||||||
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(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in accordance with sub-section (1) of section 11 in the name of the same proprietor.
45. (1) The application in British India of a trade mark to goods to be exported from British India, and any other act done in British India in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise tra-ded in within British India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or any other law.
Use-of trade marx for export trade and use wheh form of trade aonnectlon .changes.
(2) The use of a registered trade mark in relation to goods between which and the person using the mark any form of connection in the course of tra;de 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 between which and the person using the mark or any predecessor in his business different form of connection in the course of trade subsisted or subsists.
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Source: India Code