Chapter XIII - Miscellaneous
Section 141
Section 141: Certificate of registration validity
A contested High Court rectification decision upholding validity may support a certificate that affects costs in a later successful validity dispute.
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Need advice on Section 141?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
If in any legal proceeding for rectification of the register before the High Court a decision is on contest given in favour of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect, and if such a certificate is granted, then, in any subsequent legal proceeding in which the said validity comes into question the said proprietor on obtaining a final order or judgment in his favour affirming validity of the registration of the trade mark shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.
Rule and business relevance
The certificate is discretionary. In the subsequent proceeding the proprietor must again obtain a final decision affirming validity; full legal-practitioner-and-client costs then follow unless that decision directs otherwise for sufficient reason.
Limits and related provisions
The certificate does not make validity permanently unchallengeable or guarantee success in the next proceeding. Its stated effect concerns costs after the further favourable final decision.
Hypothetical business example
Hypothetical example: A proprietor with a validity certificate later defeats another validity challenge and seeks the enhanced costs treatment, subject to the court’s sufficient-reason exception.
Practical decision flow
Check the contested rectification decision and certificate.
Identify the later validity issue and final outcome.
Request the appropriate costs treatment with the relevant record.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Check the contested rectification decision and certificate.
- Identify the later validity issue and final outcome.
- Request the appropriate costs treatment with the relevant record.
Avoid
- The certificate does not make validity permanently unchallengeable or guarantee success in the next proceeding. Its stated effect concerns costs after the further favourable final decision.
Glossary
- Validity certificate
- The certificate available after the specified contested decision.
- Full client costs
- The stated costs basis, subject to the final decision’s exception.
Frequently asked questions
Does the certificate bar every later challenge?
No. The section expressly contemplates a later validity proceeding.
Must the proprietor succeed again?
Yes. A favourable final order affirming validity is required for the stated later costs effect.
Can the later court direct otherwise on costs?
Yes, for sufficient reason.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026