JusticeMarg.com

Profile
go Premium
Menu

Chapter 9: The Trade Marks Act, 1999

Uncategorized /

CHAPTER IX: CERTIFICATION TRADE MARKS

This chapter introduces a new special category of mark. A Certification Mark is not a brand. It is a mark of quality or standards (like “ISO 9001” or “Woolmark”) that an owner (the “certifier”) allows anybody to use, as long as their product or service meets the required standard.

Section 69: Certain provisions of this Act not applicable to certification trade marks

This section is a list of exclusions, stating which normal trademark rules do not apply to certification marks.

  • What it says (Simple English): The following rules do not apply to certification marks:
    • Sec 9(1)(a) & (c): Refusal for being non-distinctive or customary. (A certification mark should be descriptive of the standard, e.g., “100% Cotton”).
    • Sec 18, 20, 21: The normal application, advertisement, and opposition process (a different process is defined in this chapter).
    • Sec 28, 29, 30: The normal rules for rights and infringement (special rules are defined in this chapter).
    • Sec 41, 42: Rules about how a mark can be sold/assigned (certification marks have their own rules for assignment in Sec 43, which does apply).
    • Sec 47: Cancellation for non-use (this is a big one!).
    • Sec 48, 49, 50, 52, 54: The entire “Registered User” (licensing) system. (A certification mark doesn’t have “licensees”; it has “authorized users” under its own regulations).
    • Sec 56(2): The rule about “change in trade connection.”
    • Chapter XII (except Sec 107): The criminal offenses for falsifying marks (a certification mark is protected differently).
  • What it means (Real-world Example): You cannot try to cancel the “ISI” mark for “non-use” by the Bureau of Indian Standards (BIS). The “non-use” rule (Sec 47) does not apply to certification marks. Similarly, you can’t sue the “ISI” mark for being descriptive of a quality standard (Sec 9(1)(a)), because that is its entire purpose.

Section 70: Registration of certification trade marks

This is the most important rule for certification marks. It’s designed to ensure impartiality.

  • What it says (Simple English): A mark cannot be registered as a certification mark in the name of a person who actually trades in the goods or services being certified.
  • What it means (Real-world Example):
    • Allowed: “Woolmark” is owned by “Australian Wool Innovation Limited,” a body that promotes and researches wool. It does not sell wool sweaters. It is impartial. It can, therefore, certify sweaters from any company (like Nike or a local tailor) that meets its “100% Pure New Wool” standard.
    • Not Allowed: “Reliance Industries” sells polyester fiber. It cannot register a certification mark called “Reli-Certified Premium Polyester.” This would be a conflict of interest, as they would be certifying their own products and their competitors’ products. The law requires the certifier to be a neutral third party.

Section 71: Applications for registration of certification trade marks

This section explains how to apply for a certification mark and how the process differs from a standard application.

  • Section 71(1):
    • What it says (Simple English): An application for a certification mark must be made in the prescribed manner by the person who wants to be the owner (the certifier). The application must be accompanied by a draft of the regulations (the rulebook) that will govern the mark.
    • What it means (Real-world Example): An environmental testing lab wants to register a new mark called “Eco-Safe” to certify chemical-free household products. When they file their application, they must also submit their draft rulebook (the “regulations”) that details the exact scientific standards a product must meet to get the “Eco-Safe” seal.
  • Section 71(2):
    • What it says (Simple English): The normal procedural rules for applications (Section 18 – applying, Section 19 – withdrawal of acceptance, and Section 22 – amendments) also apply to certification marks. However, the term “acceptance of an application” should be read as “authorization to proceed with an application.”
    • What it means (Real-world Example): The “Eco-Safe” lab submits its application. The Registrar can still allow them to correct a typo (Sec 22) or withdraw an initial acceptance if an error is found (Sec 19). The process is similar, but it’s just the first step before the main examination of the regulations.
  • Section 71(3):
    • What it says (Simple English): When examining the application, the tribunal (Registrar) must consider all the usual factors (like distinctiveness under Sec 9, similarity under Sec 11) in addition to any other relevant factors. This includes considering the desirability of making the mark explicitly state that it is a certification mark.
    • What it means (Real-world Example): The Registrar examines the “Eco-Safe” logo. They might say, “This logo just looks like a brand. It could be confused with a company selling its own products. To prevent public confusion, I will only approve this if you add the words ‘Certified Standard’ to the logo.”

Section 72: Consideration of application for registration by Registrar

This is the special examination stage for certification marks, focusing on the applicant and their rulebook.

  • Section 72(1):
    • What it says (Simple English): The Registrar must consider the following specific matters:
      • (a) Competence to certify: Is the applicant (the certifier) actually competent to certify the goods/services in question?
      • (b) Satisfactory draft regulations: Is the submitted rulebook satisfactory?
      • (c) Public advantage: Will registering this mark be to the public’s advantage?
    • What it means (Real-world Example): The Registrar asks three questions about the “Eco-Safe” application:
      • (a) Competence: Is the applicant a real, accredited scientific laboratory that can actually test for chemicals? Or is it just a marketing agency with no scientific basis? (This is to prevent scams).
      • (b) Regulations: Is the rulebook clear and specific (e.g., “products must contain less than 0.01% phthalates”) or vague and useless (e.g., “products must be ‘eco-friendly'”)?
      • (c) Public Good: Will this “Eco-Safe” mark genuinely help consumers identify safer products, or will it just add more confusion to the market?
  • Section 72(1)(i) & (ii):
    • What it says (Simple English): After considering these points, the Registrar may either:
      • (i) refuse the application, OR
      • (ii) accept the application and approve the draft rulebook, either “as is” (unconditionally) or “subject to conditions/modifications” that the Registrar thinks are necessary.
    • What it means (Real-wExample): The Registrar tells the “Eco-Safe” applicant: “Your lab is competent and the mark is for the public good. However, your rulebook is too weak. I will accept this application on the condition that you amend your regulations to require annual re-testing of all certified products.”
  • Section 72(2):
    • What it says (Simple English): The Registrar cannot refuse an application or impose conditions without first giving the applicant an opportunity of being heard.
    • What it means (Real-world Example): Before forcing the “annual re-testing” rule, the Registrar must give the “Eco-Safe” lab a chance to attend a hearing and argue why their original rulebook (e.g., testing every 3 years) is sufficient.

Section 73: Opposition to registration of certification trade marks

This section explains how third parties can object to a certification mark after the Registrar has accepted it.

  • What it says (Simple English): Once an application has been accepted (and the rulebook approved by the Registrar), the Registrar must advertise it in the prescribed manner. From that point, the normal opposition process from Section 21 applies.
  • What it means (Real-world Example): The “Eco-Safe” application (with its amended rulebook) is accepted by the Registrar and published in the Trade Marks Journal. A rival certification body, “GreenGuard,” sees this and files a Notice of Opposition (under Sec 21). Their grounds could be:
    • “The ‘Eco-Safe’ logo is confusingly similar to our ‘GreenGuard’ logo.”
    • “The applicant is not competent to certify (Sec 72(1)(a)).”
    • “The regulations are not for the public good (Sec 72(1)(c)).”

Section 74: Filing of regulations governing use of a certification trade mark

This section deals with the final, official rulebook and how it can be amended after registration.

  • Section 74(1):
    • What it says (Simple English): The final, approved regulations must be filed and kept at the Trade Marks Registry. The rules must include when the owner will certify goods and authorize use of the mark. The rules may also include a right of appeal to the Registrar for any person who is refused certification by the mark’s owner. These regulations are open to public inspection.
    • What it means (Real-world Example): The “Woolmark” regulations are on file at the Registry.
      • Public Inspection: You can go and read the exact standards a sweater must meet to get the logo.
      • Appeal Right: The rules may state, “If ‘Woolmark’ refuses to certify your company’s sweaters, you have the right to appeal this refusal directly to the Registrar of Trade Marks,” who can then overrule “Woolmark” if the refusal was unfair.
  • Section 74(2):
    • What it says (Simple English): The registered owner can apply to the Registrar to alter their regulations.
    • What it means (Real-world Example): The “ISI” mark standards for helmets are found to be outdated. The Bureau of Indian Standards (BIS) must apply to the Registrar to alter its filed regulations to include new, stricter safety standards.
  • Section 74(3):
    • What it says (Simple English): The Registrar may decide to advertise any proposed change to the regulations. If they do, any person can file a notice of opposition against the proposed change. The Registrar must hear both sides before deciding.
    • What it means (Real-world Example): BIS applies to relax the safety standards for helmets. The Registrar advertises this proposed change. A public safety NGO opposes the alteration, arguing that it is not for the public good. The Registrar must then hold a hearing to decide whether to allow the change to the rules.

Section 75: Infringement of certification trade marks

This section provides the specific legal definition of what constitutes infringement of a certification mark.

  • What it says (Simple English): The rights of a certification mark are infringed by any person who is not the owner and not an authorized user (i.e., not certified) who:
    • Uses an identical or deceptively similar mark,
    • In the course of trade,
    • On the same kind of goods/services for which the mark is registered,
    • …and does so in a way that makes it likely to be taken as a trademark.
  • What it means (Simple English): In short, infringement is when an uncertified person uses the mark to falsely claim they have met the standards.
  • What it means (Real-world Example): A local electronics shop imports un-tested, cheap power adapters and illegally stamps the “ISI” mark on them to trick customers into thinking they are safe and government-approved. This shop is infringing the “ISI” certification mark.

Section 76: Acts not constituting infringement of certification trade marks.

What it means: This section lists specific situations where using a certification mark is not considered infringement. In simple terms, these are the legal exceptions where you can’t be sued for using the mark.

Section 76(1)

This is the introduction, stating that even if other parts of the Act might suggest otherwise, the following acts are not infringement.

  • Section 76(1)(a):
    • Legal Language: “…where a certification trade mark is registered subject to any conditions or limitations entered on the register, the use of any such mark in any mode… to which… the registration does not extend;”
    • Plain English: If a certification mark is registered with specific limits (e.g., “for use only in India” or “for cheese only”), it is not infringement to use that mark outside of those limits (e.g., on a product sold in Europe or on a non-cheese product). The protection only extends as far as the registration.
    • Real-World Example: A “Deccan Organic” certification mark is registered, but with a limitation that it only applies to spices sold within India. A company uses this mark on its spice packets that are exclusively for export to the USA. The mark’s owner cannot sue them for infringement, because the registration’s protection doesn’t extend to the US market.
  • Section 76(1)(b):
    • Legal Language: “…the use of a certification trade mark in relation to goods or services certified by the proprietor… if… the proprietor or another… has applied the mark and has not subsequently removed or obliterated it… or the proprietor has at any time expressly or impliedly consented to the use of the mark;”
    • Plain English: This is the “second-hand sale” or “genuine goods” rule. If a product was genuinely certified and the mark was put on it by the owner (or with their permission), you don’t infringe the mark by simply re-selling that product.
    • Real-World Example: You buy a t-shirt that has a genuine “100% Organic Cotton” certification tag on it. You then decide to sell it on a “pre-owned” website like OLX or an eBay-style marketplace. You are allowed to use the “100% Organic Cotton” mark in your listing to truthfully describe the t-shirt. The certification body can’t sue you, because you are just reselling a product they already approved.
  • Section 76(1)(c):
    • Legal Language: “…the use of a certification trade mark in relation to goods or services adapted to form part of, or to be accessory to, other goods… if the use of the mark is reasonably necessary… and neither the purpose nor the effect… is to indicate otherwise than in accordance with the fact that the goods or services are certified…”
    • Plain English: This is the “spare parts” or “accessory” rule. You can use a certification mark to truthfully state that your product (like a spare part) is designed to be used with a certified product, as long as you’re not trying to trick people into thinking your spare part itself is certified.
    • Real-World Example: A company makes a special, non-certified cleaning filter designed only for “PureH2O” certified water purifiers. They can write on their packaging: “This filter is designed for use with the ‘PureH2O’ certified purifier.” They are not infringing, as this is a necessary and truthful statement. They would be infringing if they just slapped the “PureH2O” logo on their filter, implying the filter itself was certified.

Section 76(2)

  • Legal Language: “Clause (b) of sub-section (1) shall not apply… if such application is contrary to the regulations referred to in that clause.”
  • Plain English: This is a specific exception to the “second-hand sale” rule. If the official regulations for the certification mark (the rules filed with the government) specifically forbid putting the mark on certain things (like external packaging), then you can’t use that as a defence, even if the product inside is genuine.
  • Real-World Example: The “AgriCert” mark regulations state that the logo can only be printed on the main product bag (e.g., the 5kg bag of rice) and not on any external shipping boxes. A distributor buys the certified rice, repackages it into plain cardboard shipping boxes, and then stamps the “AgriCert” logo on those boxes. Even though the rice inside is genuine, this use is infringement because it violates the specific regulations about how the mark can be applied.

Section 76(3)

  • Legal Language: “Where a certification trade mark is one of two or more trade marks registered under this Act, which are identical or nearly resemble each other, the use of any of those trade marks… shall not be deemed to be an infringement…”
  • Plain English: This is a technical point. If the same person happens to own two or more different certification marks that look almost identical (and are both registered), using one of them legally doesn’t count as infringing the other one.
  • Real-World Example: The “India Standards Institute” (ISI) registers its “ISI” logo as a certification mark. Later, they also register a new, slightly more stylized “ISI-2025” logo as a separate certification mark. A company is given the right to use the old “ISI” mark. The Institute cannot turn around and sue that company for infringing its new “ISI-2025” mark, because the company has a valid right to use the near-identical registered mark.

Section 77: Cancellation or varying of registration of certification trade marks.

What it means: This section explains the specific reasons why a certification mark’s registration can be cancelled or changed. These reasons are unique to certification marks.

The “Registrar” (the head of the Trade Marks Registry) can cancel or change the mark if anyone who is “aggrieved” (negatively affected by it) applies and proves one of the following:

  • Section 77(a):
    • Legal Language: “…that the proprietor is no longer competent… to certify those goods or services;”
    • Plain English: The person or organization that owns the certification mark no longer has the ability, expertise, or resources to actually check the standards.
    • Real-World Example: A small lab, “PureTest,” owns a certification mark for testing gold purity. However, the lab goes bankrupt, fires all its scientists, and sells its testing equipment. A jewelers’ association can apply to cancel the “PureTest” mark, arguing that the owner is “no longer competent” to certify gold.
  • Section 77(b):
    • Legal Language: “…that the proprietor has failed to observe any provisions of the regulations to be observed on his part;”
    • Plain English: The mark’s owner isn’t even following their own rules (the official regulations they filed with the government).
    • Real-World Example: The “EcoGrow” mark’s regulations (which are public) state that they must conduct an on-site inspection of every farm annually. A group of consumers proves that “EcoGrow” hasn’t inspected any farms in three years and is just collecting fees. The mark can be cancelled because the owner “failed to observe” its own regulations.
  • Section 77(c):
    • Legal Language: “…that it is no longer to the public advantage that the mark should remain registered;”
    • Plain English: The certification mark is no longer useful, relevant, or beneficial to the public.
    • Real-World Example: A “SafeType” mark was created in 1995 to certify that typewriters are electrically safe. As typewriters are now obsolete, this certification mark serves no real public purpose. A an electronics group could apply to have it cancelled as it’s “no longer to the public advantage” to have it on the register.
  • Section 77(d):
    • Legal Language: “…that it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.”
    • Plain English: The mark itself is still useful, but the rules for getting it are outdated, harmful, or against the public interest. In this case, the mark isn’t cancelled, but the rules are changed.
    • Real-World Example: The “FreshBake” certification mark requires that all bread be wrapped in a specific type of red plastic. New environmental laws show this plastic is toxic and non-recyclable. A public interest group could apply to vary the regulations (not cancel the mark) to remove this harmful requirement, arguing it’s “requisite for the public advantage.”

Section 78: Rights conferred by registration of certification trade marks.

What it means: This section explains what legal power an owner gets when they register a certification mark.

  • Section 78(1):
    • Legal Language: “Subject to the provisions of sections 34, 35 and 76, the registration… shall, if valid, give to that person the exclusive right to the use of the mark in relation to those goods or services.”
    • Plain English: As long as the registration is valid (and keeping in mind the exceptions in other sections), the owner gets the exclusive right to use that certification mark. This is the main power: the right to control the mark and stop anyone else from using it without permission.
    • Real-World Example: The “Vegan Society” registers its ‘Vegan’ sunflower logo as a certification mark for food. This registration gives them the exclusive right to use and authorize that logo. If a company starts putting that ‘Vegan’ sunflower logo on its new (non-vegan) snack without permission, the Vegan Society can sue them for infringement.
  • Section 78(2):
    • Legal Language: “The exclusive right… shall be subject to any conditions and limitations to which the registration is subject.”
    • Plain English: This just clarifies that the “exclusive right” is only as broad as the registration. If the registration has limits, the owner’s rights also have those same limits.
    • Real-World Example: The “Crafts of India” mark is registered, but only for “hand-woven textiles” (a limitation). The owner has the exclusive right to use this mark only on hand-woven textiles. They do not have the right to stop someone from using a similar name on, say, machine-made pottery, because their right is limited by their registration.

Related Posts