Indian Kanoon - Search engine for Indian Law

(ii). The Trade Marks Act, 1999 only governs and regulates registered trade marks and not unregistered trade marks which are not governed by any Indian Legislation and are, therefore, not covered by Indian law, as explained by the said CBEC Circular. Section 27(1) of this Act expressly states. No person shall be entitled to institute any proceeding to prevent or to recover damager for, the infringement of an unregistered trade mark. Unregistered trade marks therefore do not give rise to any taxable services.

(iii). A trade mark is registered only in respect of a specific class of products and not generally. The trade mark is treated as an unregistered trade mark in respect of all other classes of products, even though such other products may have some connection with the class of products for which the trade mark is registered. In the present case, the Appellants trade marks are registered only in respect of Motor Cycles and parts thereof (in clause 12) and not in respect of oils, lubricants and greases which are an altogether different class of product. Consequently, in respect of oils, lubricants and greases, the Appellants trade marks have to be considered to be unregistered trade marks, which are not IPRs within the meaning and for the purpose of section 65 (55)(a).

10. Based upon the above, it stands contended before us that the trade mark belonged to M/s. Hero Honda only in respect of vehicles manufactured by them and was not in respect of oils, lubricants and greases. As such, the said trade mark is required to be considered as unregistered trade mark, which is not a Intellectual property falling within the meaning of section 65(55a). As such, the agreement to use the same on oils being manufactured by the other parties to the agreement will not render the same as providing of intellectual property right services.