27. No action for infringement of unregistered trade mark.—(1) No person shall be entitled to
institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade
mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off
goods or services as the goods of another person or as services provided by another person, or the
remedies in respect thereof.
28. Rights conferred by registration.—(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is
registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this
Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any
conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or
nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so
far as their respective rights are subject to any conditions or limitations entered on the register) be deemed
to have been acquired by any one of those persons as against any other of those persons merely by
registration of the trade marks but each of those persons has otherwise the same rights as against other
persons (not being registered users using by way of permitted use) as he would have if he were the sole
registered proprietor.
29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render the use of the
mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services covered
by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by
such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to
cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark
is registered; and
(c) 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 repute of the registered trade
mark.
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(5) 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.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes
under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a
material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods
or services, provided such person, when he applied the mark, knew or had reason to believe that the
application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade
mark may be infringed by the spoken use of those words as well as by their visual representation and
reference in this section to the use of a mark shall be construed accordingly.
30. Limits on effect of registered trade mark.—(1) Nothing in section 29 shall be construed as
preventing the use of a registered trade mark by any person for the purposes of identifying goods or
services as those of the proprietor provided the use—
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or
repute of the trade mark.
(2) A registered trade mark is not infringed where—
(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of goods or of rendering of services or other
characteristics of goods or services;
(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in
any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods
to be exported to any market or in relation to services for use or available for acceptance in any place
or country outside India or in any other circumstances, to which, having regard to those conditions or
limitations, the registration does not extend;
(c) the use by a person of a trade mark—
(i) in relation to goods connected in the course of trade with the proprietor or a registered user
of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor
or the registered user conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the
use of the trade mark; or
(ii) in relation to services to which the proprietor of such mark or of a registered user
conforming to the permitted use has applied the mark, where the purpose and effect of the use of
the mark is to indicate, in accordance with the fact, that those services have been performed by
the proprietor or a registered user of the mark;
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(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be
accessory to, other goods or services in relation to which the trade mark has been used without
infringement of the right given by registration under this Act or might for the time being be so used, if
the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so
adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise
than in accordance with the fact, a connection in the course of trade between any person and the
goods or services, as the case may be;
(e) the use of a registered trade mark, being one of two or more trade marks registered under this
Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade
mark given by registration under this Act.
(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the
goods in the market or otherwise dealing in those goods by that person or by a person claiming under or
through him is not infringement of a trade mark by reason only of—
(a) the registered trade mark having been assigned by the registered proprietor to some other
person, after the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark by the proprietor or
with his consent.
(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose
further dealings in the goods in particular, where the condition of the goods, has been changed or
impaired after they have been put on the market.
31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a
trade mark registered under this Act (including applications under section 57), the original registration of
the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie
evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the
ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness
and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade
mark had been so used by the registered proprietor or his predecessor in title as to have become
distinctive at the date of registration.
32. Protection of registration on ground of distinctiveness in certain cases.—Where a trade mark
is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of
the use which has been made of it, it has after registration and before commencement of any legal
proceedings challenging the validity of such registration, acquired a distinctive character in relation to the
goods or services for which it is registered.
33. Effect of acquiescence.—(1) Where the proprietor of an earlier trade mark has acquiesced for a
continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no
longer be entitled on the basis of that earlier trade mark—
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to
which it has been so used,
unless the registration of the later trade mark was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the
use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding
that the earlier trade mark may no longer be invoked against his later trade mark.
34. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of
registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or
nearly resembling it in relation to goods or services in relation to which that person or a predecessor in
title of his has continuously used that trade mark from a date prior—
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(a) to the use of the first-mentioned trade mark in relation to those goods or services by the
proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or
services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the
second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.
35. Saving for use of name, address or description of goods or services.—Nothing in this Act
shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide
use by a person of his own name or that of his place of business, or of the name, or of the name of the
place of business, of any of his predecessors in business, or the use by any person of any bona fide
description of the character or quality of his goods or services.
36. Saving for words used as name or description of an article or substance or service.—(1) The
registration of a trade mark shall not be deemed to have become invalid by reason only of any use after
the date of the registration of any word or words which the trade mark contains or of which it consists as
the name or description of an article or substance or service:
Provided that, if it is proved either—
(a) that there is a well known and established use of the said word as the name or description of
the article or substance or service by a person or persons carrying on trade therein, not being use in
relation to goods or services connected in the course of trade with the proprietor or a registered user
of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified
by the proprietor; or
(b) that the article or substance was formerly manufactured under a patent that a period of two
years or more after the cesser of the patent has elapsed and that the said word is the only practicable
name or description of the article or substance,
the provisions of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-section (1) are proved
with respect to any words, then,—
(a) for the purposes of any proceedings under section 57 if the trade mark consists solely of such
words, the registration of the trade mark, so far as regards registration in respect of the article or
substance in question or of any goods of the same description, or of the services or of any services of
the same description, as the case requires, shall be deemed to be an entry wrongly remaining on the
register;
(b) for the purposes of any other legal proceedings relating to the trade mark,—
(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or
any other law to the use of the trade mark; or
(ii) if the trade mark contains such words and other matter, all such right of the proprietor to
the use of such words,
in relation to the article or substance or to any goods of the same description, or to the service or to any
services of the same description, as the case requires, shall be deemed to have ceased on the date on
which the use mentioned in clause (a) of the proviso to sub-section (1) first became well known and
established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.