The Scheme of the Trade Marks Act 1999

How to find a provision from its subject

Ask what stage of a mark's life the question is about.

• Can this sign be registered at all? Chapter II, and above all sections 9 and 11.
• How do I get it registered? Chapter III, sections 18 to 23, with the Trade Marks Rules, 2017.
• Somebody is opposing it. Section 21, in Chapter III.
• What does registration give me? Chapter IV, sections 27 to 29.
• The defendant says he is entitled to use it anyway. Chapter IV again, sections 30 to 36.
• I want to sell or licence the mark. Chapter V for assignment, Chapter VI for licensing.
• The other side has not used its mark for years. Section 47, in Chapter VI.
• The registration should never have been granted. Section 57, in Chapter VII.
• I want to sue. Sections 134 and 135, in Chapter XIII, and section 124 if validity is in issue.
• The infringer should be prosecuted. Chapter XII.
• The other side has threatened me and has no case. Section 142, in Chapter XIII.

Three things about the arrangement that surprise students

The civil remedies are not in Chapter IV. A beginner looks for the suit provisions next to the infringement provision and does not find them. Section 29 says what infringement is; sections 134 and 135, thirty pages later in Chapter XIII, say where to sue and what the court may grant. Learn the pairing.

Chapter XI is nearly empty. Eighteen section numbers, of which fourteen were omitted in 2021. What survives is section 91, appeals to the High Court, section 94, the bar on a former officer appearing before the Registrar, section 97, the procedure on a rectification application before the High Court, and section 98, the Registrar's appearance in legal proceedings.

Chapter X is entirely gone. Sections 79 to 82 were the textile goods provisions and were omitted in 2013. MU's syllabus still prints "Textile Trademarks" as a topic, and chapter 1010 teaches what those sections were and what governs textile marks now.

Worked example

A client rings with the following facts. He has sold water pumps under the mark AQUAFLO since 2011 and registered it in class 7 in 2014. A competitor has begun selling pumps under AQUAFLOW, and has also registered a company called Aquaflow Engineering Private Limited. The competitor has sent him a notice claiming that AQUAFLO is descriptive and threatening to sue. Which provisions do you turn to, and in what order?

1. Is his own registration safe? Sections 9(1)(b) and the proviso, Chapter II, and section 31, which makes registration prima facie evidence of validity.
2. Is the competitor infringing? Section 29(2), similar mark and identical goods, and section 29(3)'s presumption, both Chapter IV.
3. The company name. Section 29(5), Chapter IV, which covers use of the mark as a trade name where the business deals in the goods of the registration.
4. Passing off as well. Section 27(2), Chapter IV, preserves it.
5. Where does he sue? Section 134, Chapter XIII, and he may be able to sue where he himself carries on business.
6. What can he get? Section 135, Chapter XIII.
7. The threat against him. Section 142, Chapter XIII, if the competitor's threat is groundless and the competitor does not begin an action with due diligence.
8. If the competitor pleads that the registration is invalid, section 124, Chapter XIII, on the stay of the suit, and section 57, Chapter VII, on the rectification application.

Eight provisions from six chapters, for one telephone call. That is why the map is worth learning first.

What it does NOT mean

The chapter headings are not operative provisions. They are a guide to arrangement. A section is construed by its own words, though a heading may be used to resolve an ambiguity.

"Chapter IVA" is not a sub-part of Chapter IV. It is a whole chapter inserted between Chapters IV and V, and it deals with a subject, international registration, that Chapter IV has nothing to do with.

And an omitted chapter is not a gap to be filled by analogy. Sections 79 to 82 are gone; there is no residual textile regime that a court can revive.

Quick revision

s.1: short title; extends to the whole of India; in force on a notified date, and different dates may be appointed for different provisions. In force 15 September 2003.

Chapters: I preliminary (1 to 2); II register and conditions for registration (3 to 17); III procedure and duration (18 to 26); IV effect of registration (27 to 36); IVA Madrid Protocol (36A to 36G); V assignment and transmission (37 to 45); VI use and registered users (46 to 56); VII rectification (57 to 60); VIII collective marks (61 to 68); IX certification trade marks (69 to 78); X textile goods, OMITTED (79 to 82); XI Appellate Board, mostly OMITTED (83 to 100); XII offences (101 to 121); XIII miscellaneous (122 to 159).

The civil remedies are in Chapter XIII, ss.134 and 135, not beside s.29.

s.158 amends other enactments; s.159 repeals the 1958 Act and saves what was done under it.

Test yourself

1. In which chapter and sections will you find the grounds for refusing registration? Chapter II, principally sections 9, 10, 11, 13 and 14.

2. Where are the civil remedies for infringement, and why is that surprising? Sections 134 and 135, in Chapter XIII, Miscellaneous. It is surprising because infringement itself is defined in section 29, in Chapter IV, and a beginner expects the remedies to follow immediately.

3. Which chapter was inserted, by which Act, and when did it come into force? Chapter IVA, sections 36A to 36G, inserted by the Trade Marks (Amendment) Act, 2010 (40 of 2010), in force from 8 July 2013.

4. Which chapter is entirely omitted, and which is nearly so? Chapter X, sections 79 to 82 on textile goods, omitted by the 2010 Act with effect from 8 July 2013. Chapter XI, the Appellate Board, of which only sections 91, 94, 97 and 98 survive the Tribunals Reforms Act, 2021.

5. What does the proviso to section 1(3) permit? It permits different dates to be appointed for different provisions of the Act, and provides that a reference in such a provision to the commencement of the Act is to be construed as a reference to the coming into force of that provision.