Section 76 of The Trade Marks Act, 1999
- (1)Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered certification trade mark--
- (a)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, in relation to goods to be sold or otherwise traded 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, country or territory or in any other circumstances, to which having regard to any such limitations, the registration does not extend;
- (b)the use of a certification trade mark in relation to goods or services certified by the proprietor of the mark if, as to those goods or services or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations 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;
- (c)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 in relation to which the mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the 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 mark is to indicate otherwise than in accordance with the fact that the goods or services are certified by the proprietor.
- (2)Clause (b) of sub-section (1) shall not apply to the case of use consisting of the application of a certification trade mark to goods or services, notwithstanding that they are such goods or services as are mentioned in that clause if such application is contrary to the regulations referred to in that clause.
- (3)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 in exercise of the right to the use of that trade mark given by registration, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.
Summary
- This provision outlines exceptions where using a certification mark does not count as infringement.
- It allows use of the mark outside the geographical limits or specific conditions set in its registration.
- It protects people who sell goods that genuinely had the mark applied by the owner or an authorized user.
- It permits using the mark to show that a product or service is an accessory to the certified goods, provided it is honest.
- It clarifies that using one registered certification mark does not infringe another identical or similar registered mark.
Practical examples
FAQ
1. Can I resell products bearing a certification mark without infringing Section 76 of The Trade Marks Act, 1999?
Yes, under Section 76 of The Trade Marks Act, 1999, it is not an infringement if the mark was originally applied to the goods by the proprietor or an authorized user and has not been removed.
2. What does Section 76 of the trade mark law say about marks with geographical limits?
Under Section 76 of The Trade Marks Act, 1999, if a certification mark is registered with specific limitations like a geographical area, using the mark in a place outside those limits does not constitute infringement.
3. Does using a mark to indicate an accessory violate Section 76 of the Act?
No, Section 76 of The Trade Marks Act, 1999 allows the use of a certification mark to show that goods are adapted to form part of or be an accessory to certified goods, as long as it is reasonably necessary and factual.
Test yourself
Q1.According to Section 76 of The Trade Marks Act, 1999, when does clause (b) regarding the genuine application of a mark not apply as a defense?
Q2.Under Section 76 of the general trade mark law, what happens if two people own identical registered certification trade marks?
Q3.Based on Section 76 of The Trade Marks Act, 1999, which of the following is an allowed use of a certification mark by a third party?
Q4.If a certification mark is only registered for use in retail sales, what does Section 76 of the trade marks legislation say about someone using it for wholesale?