Falsely Representing A Trade Mark as “Registered Trademark” In India

Definition of Registered Trademark:
Under Section 2(v) -- “Registered Trademark” -- means a trademark which is actually on the register and remaining in force.

This section implies that the trademark must be conferred registration under the Act i.e. entered as registered with the Registrar of Trademark and the registration of such trademark must be in force i.e. the registration of the trademark should not have been lapsed due to non-renewal.

The trademarks if it is registered may bears ® symbol and if it is pending for registration may bears ™ symbol to claim proprietary rights for the trademark. The symbol SM is used in respect of service marks for providing services. However, the law does not prescribe that a registered trademark, when used by its proprietor, be described (to indicates by using the symbol “®”) as such on the goods to which it is applied. Using such symbols on the trademarks is optional.

The registration symbol ® should only be used when the mark is registered as the Section 107 of the Trademark Act 1999 provides penalty for falsely representing a trademark as registered. The provision reads as follows:

107 Penalty for falsely representing a trademark as registered.
(1) No person shall make any representation---
(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark ; or
(c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered, or
(d) to the effect that registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitation entered on the register, the registration does not in fact give that right.

(2) If any person contravenes any of the provisions of sub-section (1) he shall be punishable with imprisonment for a term which may extend to three year or with fine, or with both.

(3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered” or of any other expression symbol or sign referring whether expressly or impliedly to registration shall be deemed to import a reference to registration in the register, except--

(a) where that word or other expression symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expressions, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force: or

(b) Where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a) or

(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country or in relation to services for use in that country.

Cognizance:

Under section 107 (1) -- No Court inferior to that of Metropolitan Magistrate or Judicial Magistrate of the first class shall take cognizance of an offence except on complaint in writing made by the Registrar of Trademarks or any officer authorised by him.



1. if a person uses on his place of business, or on any document issued by him, or otherwise, words which would reasonably lead to the belief that his place of business is connected with the Trade Mark Office under section 108 or

2. if a person makes a writing falsely purporting to be a copy of an entry in the register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false under section 109 of the Trademark Act 1999.

However the Court shall take cognizance of an offence on the basis of a certificate issued by the Registrar of the Trademark to the effect that the registered trademark has been represented as registered in respect of any goods or services in respect of which it is not in fact registered under section 107.