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The
Trade Marks Ordinance, 2000.
An Ordinance to amend and consolidate the law relating to trade marks.
WHEREAS it is expedient to amend and consolidate the law relating to trade
marks and unfair competition and to provide for registration and better
protection of trade marks and for the prevention of the use of fraudulent
marks, and for matters ancillary thereto or connected therewith;
AND WHEREAS the
National Assembly and the Senate stand suspended in pursuance of the Proclamation
of the fourteenth day of October, 1999, and the Provisional Constitution
Order No.1 of 1999;
AND WHEREAS the
President is satisfied that circumstances exist which render it necessary
to take immediate action;
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth
day of October, 1999, and the Provisional Constitution Order No.1 of 1999,
read with the Provisional Constitution (Amendment) Order No.9 of 1999,
and in exercise of all powers enabling him in that behalf, the President
of the Islamic Republic of Pakistan is pleased to make and promulgate
the following Ordinance:-
CHAPTER I
PRELIMINARY
1. Short
title, extent and commencement.- (1) This Ordinance may be called
the Trade Marks Ordinance, 2000.
(2) It extends
to the whole of
(3) This section
and section 132 shall come into force at once; the remaining provisions
of the Ordinance shall come into force on such date as the Federal Government
may, by notification in the official gazette, appoint in this behalf.
2. Definitions.- In this Ordinance, unless there is anything
repugnant in the subject or context,-
(i) "advertising" means the making
of representation in any form in connection with a trade, business or
profession in order to promote the supply of goods or services;
(ii) "assignment" in relation
to a trade mark, means an assignment in writing by act of the parties
concerned;
(iii) "authorized user" means
a person authorised to use a trade mark in relation to goods or services
under the control of the owner of the trade mark and includes a licensee;
(iv) "certification mark" means
a certification mark as defined in sub-section (1) of section 83;
(v) "collective mark" means a
collective mark as defined in sub-section (1) of section 82;
(vi) "comparative advertisement"
means an advertisement which explicitly or by implication identifies a
competitor or goods or services offered by a competitor;
(vii) "Convention application"
means an application as defined in sub-section (1) of section 25;
(viii) "Convention country" means
a Convention country as defined in clause (b) of section 85;
(ix) “counterfeit trade mark goods”
means any goods including packaging bearing without authorization a trade
mark which is identical to the trade mark validly registered in respect
of such goods or which cannot be distinguished in its essential aspects
from such a trade mark and thereby infringes the rights of the owner of
the trade mark under this Ordinance;
(x) “Court” means the High Court;
(xi) "date of filing" means-
(a) in relation
to an application for the registration of a trade mark, the day on which
the application is filed pursuant to sub-section (1) of section 23; or
(b) in relation
to a divisional application for the registration of a trade mark, the
day on which the initial application within the meaning of sub-section
(1) of section 32 is filed; or
(c) in relation
to an application to provide temporary protection during exhibition, the
day referred to in sub-section (1) of section 26; or
(d) in relation
to a Convention application, the day referred to in clause (a) of sub-section
(2) of section 25;
(xii) "date of registration",
in relation to the registration of a trade mark in respect of
particular goods or services, means the day from which the registration
of the trade mark in respect of those goods or services is taken to have
had effect under sub-section (3) of section 33;
(xiii) "deceptively similar" in
relation to a trade mark, means such near resemblance between it and another
trade mark that it is likely to deceive or cause confusion;
(xiv) "dilution" means the lessening
of the capacity of a well known trade mark to identify and distinguish
the goods or services, regardless of the presence or absence of competition
between owner of the well known trade mark or other parties, or likelihood
of confusion or deception;
(xv) "District Court" has
the meanings assigned to that expression by the Code of Civil Procedure,
1908 (Act V of 1908);
(xvi) "divisional application"
means a divisional application as defined in sub-section (1) of section
32;
(xvii) "domain name" means the
domain name as defined in sub-section (1) of section 84;
(xviii) "earlier trade mark" means
an earlier trade mark as defined in sub-section (1) of section 18;
(xix) "false trade description"
means-
(a) a trade description
which is untrue or misleading in a material respect as regards the goods
or services to which it is applied;
(b) any alteration
of a trade description as regards the goods or services to which it is
applied whether by way of addition, effacement or otherwise where that
alteration makes the description untrue or misleading in a material respect;
(c) any mark or
arrangement or combination thereof when applied-
(i) to goods in such a manner as to be likely
to lead persons to believe that the goods are the manufacture or merchandise
of some person other than the person whose merchandise or manufacture
they really are; or
(ii) in relation to services in such a manner
as to be likely to lead persons to believe that the services are provided
or rendered by some person other than the person whose services they really
are;
(d) any false name
or initials of a person applied to goods or services in such a manner
as if such name or initials were a trade description in any case where
the name or initials,-
(i) is or are not a trade mark or part of
a trade mark;
(ii) is or are identical with or deceptively
similar to the name or initials of a person carrying on business in connection
with goods or services of the same description or both and who has not
authorized the use of such name or initials; and
(iii) is or are either the name or initials
of a fictitious person or of some person not bona fide carrying on business
in connection with such goods or services; and the fact that a trade description
is a trade mark or part of a trade mark shall not prevent such trade description
being a false trade description within the meaning of this Ordinance;
or
(e) to any false
name, initials or description of a person used in relation to
goods or services in a manner to suggest that the said person authenticates
or guarantees the nature or fitness for the purpose of the goods or services;
(xx) "geographical indication",
in relation to goods originating in a particular country or in a region
or locality of that country, means a mark recognized in that country as
a mark indicating that the goods-
(a) originated in
that country, region or locality; and
(b) have a quality,
reputation or other characteristic attributable to their geographical
region;
(xxi) "goods" means anything which
is subject of trade, commerce or manufacture;
(xxii) "Journal" means the Trade
Marks Journal published under the authority of the Registrar;
(xxiii) "licensee" means a person
using a registered trade mark by virtue of a transaction;
(xxiv) "limitations" with its
grammatical variations, means any limitations of the exclusive right to
the use of a trade mark given by the registration of a person as proprietor
thereof, including limitations of that right as to mode of use, as to
use in relation to goods or services to be sold or otherwise traded in
within Pakistan, or as to use in relation to goods or services to be exported
to any market outside Pakistan;
(xxv) "mark" includes, in particular,
a device, brand, heading, label, ticket, name including personal name,
signature, word, letter, numeral, shape of goods or their packaging, figurative
element, colour, sound, scent or any combination thereof;
(xxvi) "misleading advertising"
means any advertising which in any way, including its presentation, deceives
or is likely to deceive the persons to whom it is addressed or whom it
reaches and which, by reason of its deceptive nature, is likely to affect
their behaviour or which, for those reasons, injures or is likely to injure
a competitor;
(xxvii) "name" includes any abbreviation
of name;
(xxviii) "notify" means to notify
in the Journal;
(xxix) "opponent" in relation
to the registration of a trade mark, means the person who has filed under
sub-section (2) of section 28, a notice of opposition to the registration
of the trade mark;
(xxx) "packaging" includes, in
particular, any case, box, container, covering, folder,
receptacle, vessel, casket, bottle, wrapper, band, reel, frame, capsule,
cap, lid, stopper and cork;
(xxxi) "Paris Convention" means
the Paris Convention as defined in clause (a) of section 85;
(xxxii) "permitted use", in relation
to a trade mark, means the use of the trade mark by an authorised user;
(xxxiii) "predecessor in title",
in relation to a person who claims to be the proprietor of a trade mark,
means-
(a) if the trade
mark was assigned or transmitted to one or more than one persons before
it was assigned or transmitted to the first-mentioned person, that other
person or any of those other persons; or
(b) if sub-clause
(a) does not apply, the person who assigned the trade mark, or from whom
the trade mark was transmitted to the first-mentioned person;
(xxxiv) "prescribed" means prescribed
by rules made, in relation to proceedings before a High Court, by such
High Court, and in other cases, made under this Ordinance;
(xxxv) "proprietor", in relation
to a registered trade mark, means the person who is for the time being
entered in the Register as proprietor of that trade mark;
(xxxvi) “proprietor of earlier right”, in
relation to a trade mark, means a person entitled to prevent the use of
a trade mark;
(xxxvii) "Register" means the
Register of Trade Marks maintained under sub-section (1) of section 10;
(xxxviii) “Registrar” means the Registrar
of Trade Marks appointed under section 7;
(xxxix) "registered", with its
grammatical variations, means registered under this Ordinance or
the Trade Marks Act, 1940 (V of 1940);
(xl) "registered trade mark" means
a trade mark which is actually on the Register;
(xli) “rules” means the rules made under
this Ordinance;
(xlii) “Schedule” means a Schedule to this
Ordinance;
(xliii) "seized goods" means goods
seized under section 56;
(xliv) "service" means service
of any description which is made available to users or potential users
and includes the provision for services in connection with business of
any industrial or commercial nature, and without limitation, includes
banking, retailing, communication including telecommunication, education,
law, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of goods including electrical or
other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news or information and advertising;
(xlv) "similar goods" includes
goods which are of the same description;
(xlvi) "similar services" include
services which are of the same description;
(xlvii) "trade description" means
any description, statement or other indication, direct or indirect-
(a) as to the number,
quantity, measure, gauge or weight of any goods; or
(b) as to the standard
of quality of any goods or services according to classification commonly
used or recognized in the trade; or
(c) as to fitness
for the purpose, strength, performance or behaviour of any goods, being
drugs or foods; or
(d) as to the place
or country in which or the time at which any goods or services were made,
produced or provided, as the case may be; or
(e) as to the name
and address or other indication of the identity of the manufacturer or
of the person providing the services or of the persons for whom the goods
are manufactured or services provided; or
(f) as to the mode
of manufacture or producing any goods or providing services; or
(g) as to the material
of which any goods are composed; or
(h) as to any goods
being the subject of an existing patent, privilege or copyright,
and includes-
(a) any description
as to the use of any mark which according to the custom of the trade is
commonly taken to be an indication of any of the above matters;
(b) any description
as to any imported goods contained in any bill of entry or shipping bill;
and
(c) any other description
which is likely to be misunderstood or mistaken for all or any of the
said matters;
(xlviii) "trade mark" means any
mark capable of being represented graphically which is capable of distinguishing
goods or services of one undertaking from those of other undertakings;
(xlix) “Trade Marks Registry” means the
Trade Marks Registry established under section 9;
(l) "trade names" means names
used by a person to denote his trade or calling and includes firms’ and
companies’ names;
(li) "transmission" means transmission
by operation of law, devolution on the personal representative of a deceased
person and any other mode of transfer, not being assignment;
(lii) "tribunal" means the Registrar
or, as the case may be, the Court before which the proceedings concerned
is pending;
(liii) "unfair competition" means
an unfair competition as defined in section 67; and
(liv) “word” includes an abbreviation of
a word.
3. Goods and
services when associated, etc.- (1) For the purposes of this Ordinance,
a) goods
and services shall be associated with each other if it is likely
that those goods might be sold or otherwise traded in and those
services might be provided by the same business and so with descriptions
of goods and descriptions of services;
b) a trade
mark shall be taken used on goods if the trade mark is used on any goods
including second-hand goods, material or thing if it is woven in, impressed
on, worked into, or affixed or annexed to, the goods, material or thing.
c) a trade
mark shall be taken used in relation to goods or services if the trade
mark is used-
i. on any covering, packaging, document,
label, band, ticket, reel or thing in or with which
the goods are, or are intended to be, dealt with or provided in the course
of trade;
ii. in a manner likely to lead persons
to believe that it refers to, describes or designates the goods or services;
iii. on a signboard or in an advertisement;
or
iv. in an invoice, list, catalogue,
business letter, business paper, price list or other commercial document.
(2) Where the owner
of a trade mark exercises quality control over goods or services-
(a) dealt
with or provided in the course of trade by another person; and
(b) in relation
to which the trade mark is used,
the other person
shall be taken to use the trade mark in relation to the goods or services
under the control of the owner.
(3) Where
(a) a person
deals with or provides, in the course of trade, goods or services in relation
to which a trade mark is used; and
(b) the owner
of the trade mark exercises financial control over the other person's
relevant trading activities,
the other person
shall be taken to use the trade mark in relation to the goods or services
under the control of the owner.
4. Reference
to use of a trade mark, etc.-In this Ordinance, unless the context
otherwise requires, any reference-
(a)
to use of a trade mark shall include reference to use of the trade mark
in relation to goods, as well as, on goods;
(b)
to use of a trade mark in relation to goods shall include reference to
use of the trade mark on goods, or vice versa;
(c)
to the Registrar shall be construed as including a reference to any officer
when discharging the functions of the Registrar in pursuance of sub-section
(2) of section 7; and
(d)
to the Trade Marks Registry shall be construed as including a reference
to any branch of the Trade Marks Registry.
5. Decision
by tribunal regarding use of a trade mark.- (1) A tribunal may, having
regard to the circumstances of a case, if it thinks fit, decide that a
person has used a trade mark if it is established that the person has
used the trade mark with additions or alterations that do not substantially
affect the identity of the trade mark.
Explanation.- For removal
of doubts, it is clarified that if a trade mark consists of any combination
of any letter, word, name or numeral, any aural representation of the
trade mark shall be, for the purposes of this Ordinance, a use of the
trade mark.
(2) The application in Pakistan of a trade mark to goods or services to
be exported from Pakistan and any other act done in Pakistan in relation
to goods or services to be so exported which, if done in relation to goods
or services to be sold or otherwise traded in within Pakistan would constitute
use of a trade mark therein, shall be deemed to constitute use of the
trade mark in relation to those goods or services for any purpose for
which such use is material under this Ordinance or any other law for the
time being in force.
(3) The use of a registered trade mark in relation to goods or services
between which and the person using the mark any form of connection in
the course of trade subsists shall not be deemed to be likely to cause
deception or confusion on the ground only that the mark has been or is
used in relation to goods or services between which and the person using
the mark or any predecessor in his business different form of connection
in the course of trade subsisted or subsists.
6. Application
of other laws not barred.- The provisions of this Ordinance
shall be in addition to, and not in derogation of any other law for the
time being in force.
CHAPTER
II
REGISTRAR, TRADE
MARKS REGISTRY AND REGISTRATION OF TRADE MARKS
7. Appointment
of Registrar and other officers.- (1) The Federal Government may by
notification in the official Gazette, appoint an officer who shall be
called the Registrar of Trade Marks.
(2) The Federal
Government may appoint such other officers with such designations as it
deems fit for performing under the superintendence and direction of the
Registrar, such function of the Registrar, under this Ordinance as he
may, from time to time, authorise them to discharge.
8. Power of
Registrar to review, withdraw or transfer cases.- The Registrar may,
by order in writing-
(a) review
any function, matter, case or decision of any officer; or
(b) withdraw
any function, matter or case from any officer or staff,
and deal with such
function, matter or case himself either de novo or from the stage
it was so withdrawn, or transfer the same to another officer or staff
at any stage.
9. Trade Marks
Registry and branches thereof.- (1) For the purposes of this
Ordinance, there shall be established a Trade Marks Registry:
Provided that till such time the Trade Marks Registry is established,
the Trade Marks Registry established under the Trade Marks Act, 1940 (V
of 1940), shall be the Trade Marks Registry for the purposes of this Ordinance.
(2) For the purpose of facilitating registration of trade marks, there
may be established at such places, as the Federal Government may think
fit, branch offices of the Trade Marks Registry.
(3) There shall be a seal of the Trade Marks Registry.
10. Register
of Trade Marks.-(1) For the purposes of this Ordinance, a record
called the Register of Trade Marks shall be kept at the Trade Marks Registry
wherein shall be entered particulars of all registered trade marks with
the names, addresses and description of the proprietors, notifications
of assignments and transmissions, the names, addresses and descriptions
of licensees, disclaimers, conditions, limitations and such other matters
relating to registered trade marks as may be prescribed, but there shall
not be entered in the Register any notice of any trust express, implied
or constructive, nor shall any such notice be receivable by the Registrar.
(2) Subject to the superintendence
and direction of the Federal Government, the Register shall be kept under
the control and management of the Registrar.
(3) The Register may be kept in whole, or in part, by using a computer
any bona fide record of a particular or other matter made by using
a computer for the purposes of keeping the Register shall, for the purposes
of this Ordinance, constitute an entry in the Register.
(4) There shall be kept at each branch office of the Trade Marks Registry,
a copy of the Register and such of the other documents as the Registrar
may, by notification in the Journal, direct:
Provided that if the Register in whole, or any part thereof, is kept by
using a computer and access to a computer terminal from which a person
in a branch office can read a screen, or obtain a printed copy of, the
particulars or other matters recorded in the Register or that part of
the Register, requirement under this sub-section of keeping a copy of
the Register at that branch office shall be satisfied.
(5) The Register shall at all convenient times be open to the inspection
of the public subject to such conditions and restrictions as may be prescribed.
(6) If the Register in whole, or any part thereof, is kept by using a
computer, the requirements of sub-section (5) shall be satisfied if a
person who wants to inspect the Register or that part of the Register
is given access to a computer terminal from which he can read a screen,
or obtain a printed copy of, the particulars or other matters recorded
in the Register or that part of the Register.
.
11. Evidence
of entries in Register and things done by Registrar.- (1) A
printed, written or computer generated copy of any entry in the Register,
purporting to be certified by the Registrar and sealed with the seal of
the Trade Marks Registry, shall be admitted in evidence in all Courts
in Pakistan and in all proceedings without further proof or production
of the original.
(2) A certificate purporting to be issued under the hand of the Registrar
as to any entry, matter or thing that he is authorised by this Ordinance
or the rules to make or do shall be prima facie evidence of the
entry having been made and of the contents thereof, or of the matter or
thing having been done or not done.
12. Classification
of goods and services.- (1) A trade mark may be registered in accordance
with the provisions of this Ordinance in respect of-
(a) goods;
(b) services;
or
(c) both
goods and services,
comprised in the
prescribed classification of goods or services in accordance with the
international classification of goods and services.
(2) Any question arising as to the class within which any goods or services
fall shall be determined by the Registrar whose decision in the matter
shall be final.
13. Publication
of an alphabetical index of classification of goods and services.-(1)
The Registrar may publish in the prescribed manner an alphabetical index
of classification of goods and services.
(2) Where any goods or services are not specified in the alphabetical
index of goods and services, published under sub-section (1), the classification
of goods and services shall be determined by the Registrar in accordance
with sub-section (2) of section 12.
14. Absolute
grounds for refusal of registration.- (1) The following shall not
be registered, namely:-
(a)
marks which do not satisfy the requirements of clause (xlviii) of section
2;
(b)
trade marks which are devoid of any distinctive character;
(c)
trade marks which consist exclusively of marks or indications which may
serve, in trade, to designate the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of goods or of rendering
of services, or other characteristics of goods or services; and
(d)
trade mark which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade:
Provided that a trade mark shall not be refused registration by virtue
of clause (b), (c) or (d) if, before the date of application for registration,
it has, in fact, acquired a distinctive character as a result of the use
made of it or is a well known trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively
of-
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
(3) No trade mark nor any part thereof in respect of any goods or services
shall be registered which consists of, or contains, any scandalous design,
or any matter the use of which would‑
(a) by reasons of its being likely to deceive or to cause
confusion or otherwise, be disentitled to protection in a Court;
(b) be likely to hurt the religious susceptibilities of any
class of citizens of
(c) be contrary to any law, for the time being in force, or
morality.
(4) A trade mark shall not be registered if or to the extent that the
application is made in bad faith.
15. Limitation
as to colour.- (1) A trade mark may be limited wholly or in part to
one or more specified colours, and any such limitation shall be taken
into consideration by any tribunal having to decide on the distinctive
character of the trade mark.
(2) So far as a trade mark is registered without limitation of colour
it shall be deemed to be registered for all colours.
16. Use of names
of chemical compounds barred.- (1)No word which is the commonly used
and accepted name of any single chemical element or single chemical compound
as distinguished from a mixture or which is declared by the World Health
Organization and notified in the prescribed manner by the Registrar, from
time to time, as an international non-proprietary name shall be registered
as a trade mark in respect of a chemical substance or preparation, and
any such registration shall, notwithstanding anything in section 44, be
deemed for the purposes of section 98 to be an entry made in the Register
without sufficient cause or an entry wrongly remaining on the Register,
as the circumstances may require.
(2 This section shall not apply to a word which is used to denote only
a brand or make of the element or compound as made by the proprietor or
a licensee of the trade mark, as distinguished from the element or compound
as made by others, and in association with a suitable name or description
open to the public use.
17. Relative
grounds for refusal of registration.- (1) A trade mark shall
not be registered if it is identical with an earlier trade mark and the
goods or services, for which the trade mark is applied for, are identical
with the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because-
(a) it is identical with an earlier trade mark and is to be
registered for goods or services similar to those for which the earlier
trade mark is registered; or
(b) it is similar to an earlier trade mark and is to be registered
for goods or services identical with or similar to those for which the
earlier trade mark is registered,
and there exists
a likelihood of confusion on the part of the public which includes the
likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark;
and
(b) is to be registered for goods or services which are not
similar to those for which the earlier trade mark is registered,
shall not be registered
if, or to the extent that, the earlier trade mark has a reputation in
Pakistan and the use of the later mark without due cause would take unfair
advantage of, or be detrimental to, the distinctive character or the repute
of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its
use in
(a) by virtue of any law, in particular, the law of passing
off, protecting an unregistered trade mark or other mark used in the course
of trade; or
(b) by virtue of an earlier right other than those referred
to in sub-sections (1), (2) and (3) or clause (a) of this sub-section,
in particular by virtue of the law of copyright, design right or registered
designs.
(5) Nothing in this section shall prevent the registration of a trade
mark where the proprietor of the earlier trade mark or other earlier right
consents to the registration.
(6) Where separate applications are made by different persons to be registered
as proprietors respectively of trade marks which are identical or nearly
resemble each other, in respect of the same goods or description of goods,
the Registrar, if thinks fit, may refuse to register any of them until
their rights have been determined by a Court.
18. Meaning
of "earlier trade mark".- (1) In this Ordinance, "earlier
trade mark" means-
(a) a registered trade mark or a Convention trade mark as
per the Paris Convention which has a date of application for registration
earlier than that of the trade mark in question, taking account, where
appropriate, of the priorities claimed in respect of the trade marks;
(b) a trade mark filed under sub-section (1) of section 26;
or
(c) a trade mark which, on the date of application for registration
of the trade mark in question, or where appropriate, of the priority claimed
in respect of the application, was entitled to protection under the Paris
Convention as a well known trade mark.
(2) References in this Ordinance to an earlier trade mark include a trade
mark in respect of which an application for registration has been made
and which, if registered, would be an earlier trade mark by virtue of
clause (a) or (b) of sub-section (1), subject to its being so registered.
(3) A trade mark shall, within clause (a) or (b) of sub-sections (1),
whose registration expires, continue to be taken into account in
determining the registrability of a later mark for a period of one year
after the expiry unless the Registrar is satisfied that there was no bona
fide use of the mark during two years immediately preceding the expiry.
19. Raising
of relative grounds in case of honest concurrent use.- (1)
Where on application for the registration of a trade mark it appears to
the Registrar that there is-
(a)
an earlier trade mark in relation to which the conditions set out in sub-section
(1), (2) or (3) of section 17 obtain; or
(b)
an earlier right in relation to which the condition set out in sub-section
(4) of section 17 is satisfied,
but the applicant
proves to the satisfaction of the Registrar that there has been honest
concurrent use of the trade mark for which registration is sought, the
Registrar shall not refuse the application by reason of the earlier trade
mark or other right unless objection on that ground is raised in opposition
proceedings by the proprietor of that earlier trade mark or other earlier
right.
(2) For the purposes of this section, "honest concurrent use"
means such use in Pakistan, by the applicant or with his consent, as would
formerly have amounted to honest concurrent use for the purposes of sub-section
(2) of section 10 of the Trade Marks Act, 1940 (V of 1940).
(3) Nothing in this section shall affect-
(a) the refusal of registration on the grounds mentioned in
section 14; or
(b) the making of an application for a declaration of invalidity
under sub-section (2) of section 80.
20. Registration
of parts of trade marks and of trade marks as a series.- (1) Where
the proprietor of a trade mark claims to be entitled to exclusive use
of any part thereof separately, he may apply to register the whole and
the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying
to, and have all the incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks
in respect of the same goods or services or description of goods or description
of services which while resembling each other in the material particulars
thereof are yet different in respect of‑
(a) statements or representations as to the goods or services
in relation to which the trade marks are respectively used or proposed
to be used;
(b) statements or representations as to number, price, quality
or names of places;
(c) other matter of a non‑distinctive character which
does not substantially affect the identity of the trade mark; or
(d) the colour or any part of the trade mark,
seeks to register
those trade marks, they may be registered as a series in one registration.
21. Registration
subject to disclaimer.- If a trade mark contains‑
(a) any
part not separately registered as a trade mark in the name of the proprietor;
(b) any
part for the separate registration of which no application has been made;
or
(c) any
matter common to the trade, or otherwise of a non‑distinctive character,
the tribunal, in
deciding whether the trade mark shall be entered or shall remain on the
Register, may require, as a condition of its being on the Register, that
the proprietor shall either disclaim any right to the exclusive use of
such part or of all or any portion of such matter, as the case may be,
to the exclusive use of which the tribunal holds him not to be entitled,
or make such other disclaimer as the tribunal may consider necessary for
the purpose of defining the rights of the proprietor under the registration:
Provided that no disclaimer shall affect any rights of the proprietor
of a trade mark except such as arise out of the registration of the trade
mark in respect of which the disclaimer is made.
CHAPTER III
PROCEDURE FOR,
AND DURATION OF, REGISTRATION
22. Application
for registration.- (1) An application for registration of a trade
mark shall be made in writing to the Registrar in the prescribed manner.
(2) Without limiting the particulars that may be included in an application,
the application shall contain-
(a) a request for registration of a trade mark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which
it is sought to register the trade mark;
(d) international classification of goods or services;
(e) a representation of the trade mark; and
(f) full name, address and contact details of agent,
in case the application, on behalf of the applicant, if made by his agent.
(3) The application shall state that the trade mark is being used by the
applicant, or with his consent, in relation to goods or services, or that
he has a bona fide intention that it should be used.
(4) The Registrar may refuse to admit an application if it does not contain
all the particulars required under sub-sections (2) and (3).
(5) The application shall be subject to the payment of the application
fee as may be prescribed.
23. Date of
filing.- (1) The date of filing of an application for registration
of a trade mark shall be the date on which documents containing particulars
specified in section 22 are furnished to the Registrar.
(2) References in this Ordinance to the date of application for registration
shall be to the date of filing of the application.
24. Co-ownership
of trade mark.- (1) Where the relations between two or more
persons interested in a trade mark are such that none of them is entitled
to use the trade mark except-
(a) on behalf of both or all of them; or
(b) in relation to goods or services or both with which all
of them are connected in the course of trade, the persons may jointly
apply for its registration under section 22.
(2) Where a trade mark is registered in the name of two or more persons
jointly, each of them shall be entitled, subject to any agreement to the
contrary, to an equal undivided share in the registered trade mark.
(3) The following provisions shall apply where two or more persons are
co-proprietors of a registered trade mark, by virtue of sub-section (2)
or otherwise.
(4) Subject to any agreement to the contrary, each co-proprietor shall
be entitled, by himself or his agents, to do for his own benefit and without
the consent of or the need to account to the others, any act which would
otherwise amount to an infringement of the registered trade mark.
(5) One co-proprietor may not, without the consent of the other or others,
(i) grant a licence to the use of
the registered trade mark; or
(ii) assign or charge his share in the registered
trade mark.
(6) Infringement proceedings may be brought by any co-proprietor but he
may not, without the leave of the Court, proceed with the action unless
the other, or each one of the others, is either joined as a plaintiff
or added as a defendant.
(7) A co-proprietor who is thus arraigned as a defendant shall not be
made liable for any costs in the action unless he takes part in the proceedings.
(8) Nothing in sub-sections (6) and (7) shall affect the granting
of interlocutory relief on the application of a single co-proprietor.
(9) Nothing in this section shall affect the mutual rights and obligations
of trustees or personal representatives, or their rights and obligations
as such.
25. Meaning
of Convention application, and right to priority.- (1) A “Convention
application” means an application duly made by a person for registration
of a trade mark in one or more than one Convention country.
(2) If-
(a) a person has duly made a "Convention application";
and
(b) within six months from the date on which the Convention
application or first of the Convention applications was made, that person
or another person hereinafter referred to as the "successor in title"
of whom that person is a predecessor in title applies to the Registrar
in the prescribed manner for the registration of the same trade mark under
this Ordinance in respect of some or all of the same goods or services
or both in respect of which registration was sought in that Convention
country or those Convention countries,
that person or
that person's successor in title may, when filing the application under
this Ordinance, or within the prescribed period after filing the application
under this Ordinance, but before the application is accepted, has a right
to priority for the registration of the trade mark.
(3) If the application for registration under this Ordinance is made within
the prescribed priority period mentioned in sub-section (2) -
(a) the relevant date for the purposes of establishing which
rights take precedence shall be the date of filing of the first Convention
application; and
(b) the registrability of the trade mark shall not be affected
by any use of the mark in
(4) Any filing which in a Convention country is equivalent to a regular
national filing, under its domestic legislation or an international agreement,
shall be treated as giving rise to the right of priority.
Explanation.- For the purposes of this sub-section, a "regular
national filing" means a filing which is adequate to establish the
date on which the application was filed in that country, whatever may
be the subsequent fate of the application.
(5) A subsequent application concerning the same subject as the first
Convention application, filed in the same Convention country, shall be
considered the first Convention application of which the date of filing
is the starting date of the period of priority, if at the time of the
subsequent application-
(a) the previous application has been withdrawn, abandoned
or refused, without having been laid open to public inspection and without
leaving any rights outstanding; and
(b) it has not yet served as a basis for claiming a right
of priority.
(6) The previous application referred to in sub-section (5), may
not thereafter serve as a basis for
claiming
a right of priority.
(7) The manner of claiming a right to priority on the basis of a Convention
application shall be such as may be prescribed.
(8) A right to priority arising as a result of a Convention application
may be assigned or otherwise transmitted, either with the application
or independently.
(9) The reference in sub-section (2) to the applicants "successor
in title" shall be construed
accordingly.
26. Application
to provide temporary protection during exhibition.- (1) The applicant
for registration of a trade mark who has exhibited goods bearing the mark
or has rendered services under the trade mark at an official or officially
recognized exhibition and who applies for registration of that trade mark,
within six months from the day on which the goods bearing the trade mark
or the services rendered under the trade mark were first exhibited in
the exhibition, shall, on his request, be deemed to have applied for registration
of the trade mark on that day.
(2) Evidence of the exhibition of goods bearing the trade mark or services
rendered under the trade mark must be given by a certificate issued by
the competent authorities of the exhibition, stating the date on which
the trade mark was first used in connection with goods or services included
in the exhibition.
(3) The provision of this section shall not extend any other priority
rights to the applicant in respect of the same trade mark.
(4) The grant of temporary protection in respect of goods or services
during exhibition shall be subject to such conditions as may be prescribed.
27. Examination
of application.-(1) The Registrar shall, as soon as practicable, examine
whether an application for registration of a trade mark satisfies the
requirements prescribed under this Ordinance.
(2) For the purposes of sub-section (1), the Registrar shall carry out
a search, to the extent as he considers necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registration
are not met, he shall inform the applicant and give him an opportunity,
within such period as the Registrar may specify, to make representation
or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements
are met, or to amend the application so as to meet them, or fails to respond
before the end of the specified period, the Registrar shall refuse to
accept the application.
(5) If it appears to the Registrar that the requirements for registration
are met, he shall accept the application absolutely or subject to such
conditions or limitations, if any, as he may think fit.
(6) In the case of a refusal or conditional acceptance, the Registrar
shall state in writing the grounds of his decision and the materials used
by him in arriving thereat.
(7) If the tribunal is of opinion that it is fair and reasonable
in all the circumstances of the case to do so, may at any time, whether
before or after acceptance, correct any error in, or in connection with,
the application or may permit the applicant to amend his application upon
such terms as it may think fit:
Provided that no
amendment or correction shall be permitted in the application which substantially
affects the identity of the trade mark or extends the goods or services
covered by the application:
Provided further
that if the amendment or correction in the application is permitted after
the application has been advertised, the amendment or correction shall
also be published.
28. Publication,
opposition proceedings and observations.- (1) When an application
for registration of a trade mark has been accepted, whether absolutely
or subject to conditions or limitations, the Registrar shall, as soon
as may be after acceptance, cause the application as accepted, together
with the conditions and limitations, if any, subject to which it has been
accepted, to be advertised in the Journal, and for all legal purposes,
advertisement of the trade mark in the Journal shall constitute sufficient
notice of acceptance of the trade mark:
Provided that the
Registrar may cause an application to be advertised before acceptance
where it appears to him that it is expedient by reason of any exceptional
circumstances so to do, and where an application has been so advertised
the Registrar may, if he thinks fit, advertise it again when it has been
accepted, but shall not be bound so to do:
Provided further
that where an application is advertised by reason of any special
circumstances under
the above proviso, the Registrar shall simultaneously notify the exceptional
circumstances which
led him so to do.
(2) Any person may, within two months from the date of the advertisement
or re-advertisement of an application for registration or within such
further period not exceeding two months in the aggregate, as the Registrar,
on application made to him in the prescribed manner and on payment of
the prescribed fee, may allow, give notice to the Registrar of opposition
to the registration.
(3) The notice under sub-section (2), shall be given in writing in the
prescribed manner, and
shall include a
statement of the grounds of opposition.
(4) The Registrar shall serve in the prescribed manner a copy of the notice
on the applicant, and within one month from the receipt by the applicant
of such copy of the notice of opposition, or within such further period
not exceeding two months in the aggregate, as the Registrar, on application
made to him in the prescribed manner and on payment of the prescribed
fee, may allow, the applicant shall send to the Registrar in the prescribed
manner a counter-statement of the grounds on which he relies for his application,
and, if he does not do so he shall be deemed to have abandoned his application.
(5) If the applicant sends the counter-statement referred to in sub-section
(4), the Registrar shall serve in the prescribed manner a copy of
the counter-statement on the opponent. If the opponent deems necessary,
he may within one month from the receipt of such copy of the counter-statement,
or within such further period not exceeding two months in the aggregate,
as the Registrar, on application made to him in the prescribed manner
and on payment of the prescribed fee, may allow, send to the Registrar
in the prescribed manner a rejoinder.
(6) If the opponent sends a rejoinder, the Registrar shall send in the
prescribed manner a copy of the rejoinder to the applicant.
(7) Any evidence upon which the opponent and the applicant may rely shall
be submitted in the prescribed manner and within the prescribed time to
the Registrar, and the Registrar shall give an opportunity to them to
be heard, if they so desire.
(8) The Registrar shall, unless the proceedings are discontinued or dismissed,
after giving to the opponent and to the applicant an opportunity of being
heard, decide whether, and subject to what conditions or limitations,
if any, registration is to be permitted.
(9) If the Registrar is of opinion that it is fair and reasonable
in all circumstances of the case to do so, he may, on request made in
the prescribed manner, permit correction of any error in, or any amendment
of, a notice of opposition, a counter-statement, or a rejoinder on such
terms as he thinks just.
29. Grounds
of opposition.- (1) The registration of a trade mark may be opposed
on any of the grounds on which an application for the registration of
a trade mark may be rejected under this Ordinance except the ground
that the trade mark cannot be represented graphically.
(2) The registration of a trade mark may be opposed on the ground that
the applicant does not intend-
(a) to use, or authorize the use of, the trade mark
in
(b) to assign
the trade mark to a body corporate for use by the body corporate in
in relation to
goods, services or both specified in the application.
(3) The registration of a trade mark may be opposed on any of the following
grounds that;
(a) the applicant
is not the proprietor of the trade mark;
(b) the application, or
a document filed in support of the application, was amended contrary to
the provisions of this Ordinance;
(c) the
Registrar accepted the application for registration on the basis of evidence
or representations that were false in material particulars; or
(d) the
pre-acceptance advertisement of the application under exceptional circumstances
is without sufficient cause or reason.
(4) The registration of trade mark in respect of particular goods
or services may be opposed on the grounds that-
(a) it is substantially identical with, or deceptively similar
to, a well known trade mark, or a trade mark that, before the priority
date for the registration of the first-mentioned trade mark in respect
of those goods or services, had acquired a reputation in Pakistan; and
(b) because of the reputation of that other trade mark, the
use of the first-mentioned trade mark would cause dilution or would be
likely to deceive or cause confusion.
(5) The registration of a trade mark in respect of particular goods may
be opposed on the ground that the trade mark contains or consists of a
mark that is a geographical indication for goods originating in-
(a)
a country, or in a region or locality in a country, other than the country
in which the relevant goods originated; or
(b)
a region or locality in the country in which the relevant goods originated
other than the region or locality in which the relevant goods originated.
(6) The provisions of clause (b) of sub-section (2) of section 17 shall
remain in abeyance if the earlier trade mark application is under opposition.
30. Circumstances
in which opposition may proceed in the name of a person other than the
person who filed the notice of opposition.- If-
(a)
after a person has given a notice of opposition, the right or interest
on which the person relies while giving the notice of opposition becomes
vested in another person; and
(b)
the other person-
(i)
notifies the Registrar in the prescribed manner that the right or interest
is vested in him; and
(ii)
does not withdraw the opposition,
the opposition
may proceed as if the notice of opposition had been given in that other
person's name.
31. Withdrawal
of application.-(1) The applicant may at any time withdraw his application
or restrict the goods or services covered by the application.
(2) In case the application has been advertised,
the withdrawal or restriction under
sub-section (1)
shall also be published.
32. Definition
of divisional application.- (1) A divisional application means
an other application by a person who has already made an application under
section 22 for registration of a trade mark in respect of certain goods,
services or both and made, in accordance with this section for -
(a) the registration of a part only of the trade mark in respect
of any or all those goods, services or both; or
(b)
the registration of the trade mark in respect of some only of the goods,
services or both in respect of which registration is sought under the
application made under section 22.
(2) A divisional application for registration of a trade mark or
a part of a trade mark may be made only if the application under section
22 for registration of the trade mark is pending.
(3) A divisional application shall proceed as an application made under
section 22:
Provided that a
divisional application shall be taken to have been filed on the day on
which the application under section 22 was filed.
33. Registration.-(1)
Where an application has been accepted and-
(a) no notice of opposition has been given within the period
referred to in sub-section (2) of section 28; or
(b) all opposition proceedings have been withdrawn or decided
in favour of the applicant,
the Registrar
shall, within such period as may be prescribed, register the trade mark,
unless it appears to him having regard to matters coming to his notice
since he accepted the application that it was accepted in error.
(2) A trade mark shall not be registered unless any fee prescribed
for the registration is paid within the prescribed period. If the fee
is not paid within the prescribed period, the application shall
be deemed to have been withdrawn.
(3) A trade mark when registered shall be registered as of the date of
filing of the application for registration and that date shall be deemed
for the purposes of this Ordinance to be the date of registration.
(4) On the registration of a trade mark the Registrar shall publish the
registration in the prescribed manner and issue to the applicant a certificate
in the prescribed form of registration, sealed with the seal of the Trade
Marks Registry.
(5) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the part
of the applicant, the Registrar may, after giving notice to the applicant
in the prescribed manner, treat the application as abandoned unless it
is completed within the time specified in that behalf in the notice.
34. Duration
and renewal of registration.- (1 ) A trade mark shall be registered
for a period of ten years from the date of registration.
(2) The registration may be renewed under section 35 for a further
period of ten years.
35. Renewal
of registration.-(1) The registration of a trade mark may be renewed
at the request of the proprietor subject to payment of such renewal fee
as may be prescribed.
(2) The Registrar shall inform the proprietor of a registered trade mark,
before the expiry of the registration, of the date of expiry and the manner
in which the registration may be renewed as may be prescribed.
(3) A request for renewal shall be made, along with the renewal
fee, before the expiry of the registration, as may be prescribed, failing
which the request may be made and the renewal fee paid within such further
period of not less than six months as may be prescribed in which case
an additional renewal fee shall be paid within that period.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) Except at the time of first renewal, the Registrar may require that
request for renewal be accompanied with evidence of use of the trade mark
in
(6) If the registration is not renewed in accordance with the provisions
of this section, the Registrar shall remove the trade mark from the Register:
Provided that the Registrar may restore
the registration of a trade mark which has been removed from the Register,
subject to such conditions, if any, as may be prescribed.
(7) The renewal or restoration of the registration of a trade mark shall
be published in the Journal.
36. Effect of
removal from Register for failure to pay fee for renewal.- Where a
trade mark has been removed from the Register, under this Ordinance, for
failure to pay the fee for renewal, it shall nevertheless, for the purposes
of any application for the registration of another trade mark during one
year next after the date of the removal, be deemed to be a trade mark
already on the Register, unless the tribunal is satisfied either‑
(a)
that there has been no bona fide use of the trade mark which has
been removed during the two years immediately preceding its removal; or
(b)
that no deception or confusion would be likely to arise from the use of
the trade mark which is the subject of the application for registration
by reason of any previous use of the trade mark which has been removed.
37. Alteration
of registered trade mark.- (1) Subject to sub-section (2), a
registered trade mark shall not be altered in the Register, during the
period of registration or on renewal.
(2) The Registrar may, at the request of the proprietor, allow the alteration
of a registered trade mark where the mark includes the proprietor's name
or address and the alteration is limited to alteration of that name or
address and does not substantially affect the identity of the mark.
(3) In case any alteration is made under sub-section (2), the Registrar
shall publish such alteration and the objections by any person claiming
to be affected by it, in such manner as may be prescribed.
38. Surrender
of registered trade mark.- (1) A registered trade mark may be surrendered
by the proprietor in respect of some or all of the goods or services for
which it is registered.
(2) The Federal Government may by rules to published
in the official gazette, provide-
(a) as to manner and effect of a surrender, and
(b) for protecting the interests of other persons having a
right in the registered trade mark.
CHAPTER IV
REGISTRATION
AND EFFECT THEREOF
39. Rights conferred by registration.-
(1) A registered trade mark shall be a personal property.
(2) The proprietor of a registered trade mark shall have exclusive rights
in the trade mark which are infringed by use of the trade mark in
(3) Without prejudice to the rights of the proprietor of a registered
trade mark to obtain any relief under any other law for the time being
in force, the proprietor shall also have the right to obtain relief
under this Ordinance if the trade mark is infringed.
(4) References in this Ordinance to the infringement of a registered trade
mark shall be to any such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration:
Provided that no infringement proceedings
shall begin before the date on which the trade mark is in fact registered.
(6) The rights conferred by registration of trade marks under this
Ordinance shall extend to trade marks registered under the Trade Marks
Act, 1940 (V of 1940).
40. Infringement
of registered trade mark.- (1) A person shall infringe a registered
trade mark if such person uses in the course of trade a mark which is
identical with the trade mark in relation to goods or services which are
identical with those for which it is registered.
(2) A person shall infringe a registered trade mark if such person uses
in the course of trade a mark where because-
(a)
the mark is identical with the trade mark and is used in relation to goods
or services similar to the goods or services for which the trade mark
is registered; or
(b)
the mark is deceptively similar to the trade mark and is used in relation
to goods or services identical with or similar to the goods or services
for which the trade mark is registered,
there exists a
likelihood of confusion on the part of public, which includes the likelihood
of association with the trade mark.
(3) A person shall infringe a registered trade mark if the person uses
in the course of trade a mark which is identical with, or deceptively
similar to, the trade mark in relation to-
(a) goods of the same description as that of goods in respect
of which the trade mark is registered;
(b) services that are closely related to goods in respect
of which the trade mark is registered;
(c) services of the same description as that of services in
respect of which the trade mark is registered; or
(d) goods that are closely related to services in respect
of which the trade mark is registered.
(4) A person shall infringe a registered trade mark if the person
uses in the course of trade a mark which-
(a)
is identical with or deceptively similar to the trade mark; and
(b)
is used in relation to goods or services which are not similar to those
for which the trade mark is registered,
where the trade
mark is a well known trade mark, or has a reputation in
(5) A person shall infringe a registered trade mark if the person
uses such registered trade mark as his trade name or part of his trade
name.
(6) A person shall infringe a registered trade mark if the person
uses such registered trade mark as his domain name or part of his domain
name or obtains such domain name without the consent of the proprietor
of the registered trade mark, with the intention of selling such domain
name to another including the proprietor of the registered trade mark.
(7) A person who applies a registered trade mark to material intended
to be used for labeling or packaging goods shall be treated as a party
to any use of the material which infringes the registered trade mark if
when he applied the mark he knew or had reason to believe that the application
of the mark was not duly authorised by the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes
goods for sale, or puts them on the market or has in possession for sale
or any purpose of trade or manufacture any goods bearing a mark which
infringes a registered trade mark shall be treated as a party to infringement
of a registered trade mark, unless he proves that -
(a) having taken all reasonable precautions, he had no reasons
to suspect the genuineness of the mark; and
(b) on demand made by tribunal, he gave all the information
in his power with respect to the persons from whom he obtained such goods;
or
(c) he had ,otherwise acted innocently.
41. Infringement
of trade mark by breach of certain restrictions.- Subject to
the provisions of section 42, if the proprietor of a registered trade
mark or a licensee having power to do so, has caused to be displayed on
goods the words "registered goods" in respect of which a trade
mark is registered, or on their packaging, or on the container in
which they are offered to the public, a notice prohibiting any of the
following acts-
(a) apply the trade mark to registered goods or using the trade
mark in physical relation to them, after the state, condition, get-up
or packaging in which they were originally offered to the public has been
altered;
(b) altering, or partially removing or obliterating, any representation
of the trade mark applied to registered goods and used in physical relation
to them;
(c) if the trade mark has been applied to registered goods, or used
in physical relation to them, together with other matter indicating that
the proprietor or the licensee has dealt with the goods, removing or obliterating,
totally or in part, any representation of the trade mark without totally
removing or obliterating the other matters;
(d) applying another trade mark to registered goods or using another
trade mark in physical relation to them; or
(e) if the trade mark has been applied to registered goods, or used
in physical relation to them, using on the goods, or on the packaging
or container of the goods, any matter that is likely to injure the repute
of the trade mark,
a person who does
or authorizes someone to do any of the foregoing prohibiting acts shall
be liable for infringement of the trade mark:
Provided that the
trade mark shall not be infringed if the owner of the goods acquired them
in good faith and without being aware of the notice of prohibition, or
became the owner of the goods by virtue of a title derived from a person
who has so acquired them.
42. When
a trade mark is not infringed.- (1) A person shall not infringe a
registered trade mark when-
(a) the person uses in good faith-
(i) the person's name or the name of the person's place
of business, so long as such use does not result in a likelihood of confusion
or otherwise interfere with an existing trade mark or other property right;
or
(ii) the name of the predecessor in business of the
person or the name of the predecessor's place of business;
(b) the person uses a mark in good faith to indicate-
(i) the kind, quality, quantity, intended purpose, value,
geographical origin, or some other characteristic, of goods or services;
or
(ii) the time of production of goods or of the rendering
of services;
(c) the person uses the trade mark in good faith to indicate
the intended purpose of goods, in particular as accessories or spare parts,
or services; or
(d) the person uses the trade mark for the purposes of comparative
advertising.
(2) If the right to the use of a trade mark given under section 39 by
registration is subject to any conditions or limitations entered on the
Register, such right shall not be deemed to be infringed by the use of
any such trade mark as aforesaid in any mode, in relation to goods to
be sold or otherwise traded in or in relation to services provided by,
in any place, or in relation to goods or services to be exported to any
market, or in any other circumstances, to which, having regard to any
such limitations the registration does not extend.
(3) Where registration of a trade mark is subject to a disclaimer, a person
shall not infringe the trade mark by using disclaimed part of the trade
mark.
43. Registration
to be prima facie evidence of validity.- In all legal proceedings
relating to a trade mark registered under this Ordinance or under the
Trade Marks Act, 1940 (V of 1940), the fact that a person is registered
as proprietor thereof shall be prima facie evidence of the validity
of the original registration of the trade mark and of all subsequent assignments
and transmissions thereof.
44. Registration
to be conclusive as to validity after five years.- In all legal
proceedings relating to a registered trade mark, the original registration
of the trade mark shall, after the expiration of five years from the date
of its original registration, be taken to be valid in all respects unless
such registration was obtained by fraud, or unless the trade mark offends
against the provisions of sub-section (3) of section 14.
45. Saving for
words used as name or description of an article or a substance.- (1)
The registration of a trade mark shall not be deemed to have become invalid
by reason only of any use after the date of the registration of any word
which the trade mark contains or of which it consists as the name or description
of an article, substance or service:
Provided that if it is proved either-
(a) that there is a famous and established use of the said
word as the name or description of the article, substance or service by
a person or persons carrying on trade therein, not being use in relation
to goods or services connected in the course of trade with the proprietor
or a licensee of the trade mark or in the case of a certification trade
mark in relation to goods or services certified by the proprietor; or
(b) that the article or substance has been manufactured under
a patent in force at or granted after the commencement of this Ordinance,
that a period of two years or more after the cesser of the patent has
elapsed and that the said word is the only practicable name or description
of the article or substance,
the provisions
of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or (b) of the proviso to sub-section
(1) are proved with respect to any words, then-
(a) for the purposes of any proceedings under section 96,
if the trade mark consists solely of such words, the registration of the
trade mark, so far as regards registration in respect of the article or
substance in question or of any goods of the same description, or of the
service or of any services of the same description, as the case may be
, shall be deemed to be an entry wrongly remaining on the Register; or
(b) for the purposes of any other legal proceedings relating
to the trade mark-
(i)
if the trade mark consists solely of such words, all rights of the proprietor
under this Ordinance or any other law for the time being in force
to the use of the trade mark; or
(ii)
if the trade mark contains such words and other matter, all such rights
of the proprietor to the use of such words,
in relation to
the article or substance or to any goods of the same description, or to
the
service or to any
services of the same description, as the case may be, shall be deemed
to
have ceased on
the date on which the use mentioned in clause (a) of the proviso to sub-
section (1) first
became famous and established or at the expiration of the period of two
years
mentioned in clause
(b) of the said proviso.
CHAPTER V
INFRINGEMENT
PROCEEDINGS
46. Action for
infringement.- (1) Save as otherwise provided in this Ordinance, an
infringement of a registered trade mark shall be actionable by the proprietor
of the trade mark.
(2) In an action for infringement all such relief by
way of damages, injunctions, accounts or otherwise shall be available
to the proprietor of the trade mark as is available in respect of the
infringement of any other property right.
(3) Nothing in this Ordinance shall be deemed to affect
rights of action against any person for passing off goods as the goods
of another person or services as services provided by another person,
or the remedies in respect thereof.
47. Order for
erasure of offending mark.- (1) Where a person is found to have infringed
a registered trade mark, the Court may make an order requiring him-
a)
to cause the offending trade mark to be erased, removed or obliterated
from any infringing goods, material or articles in his possession, custody
or control; or
b)
to secure the destruction of the infringing goods, material or articles,
if is not reasonably practicable for the offending trade mark to be erased,
removed or obliterated.
(2) If an order under sub-section (1) is not complied with, or it appears
to the Court likely that such an order would not be complied with, the
Court may order that infringing goods, material or articles be delivered
to such person as the Court may direct for erasure, removal or obliteration
of the mark, or for destruction, as the case may be.
48. Order for
delivery up of infringing goods, material or articles.- (1) The proprietor
of a registered trade mark may apply to the Court for an order for the
delivery up to him, or such other person as the Court may direct, of any
infringing goods, material or articles which a person has in his possession,
custody or control in the course of a business.
(2) An application shall not be made after the expiry of the period specified
in section 50, and no order shall be made unless the Court also makes,
or it appears to the Court that there are grounds for making, an order
under section 51.
(3) A person to whom any infringing goods, material or articles are delivered
in pursuance of an order under this section shall, if an order under section
51 has not been made, retain them pending the making of an order,
or the decision not to make an order, under that section.
(4) Nothing in this section shall affect any other power
of the Court.
49. Meaning
of "infringing goods, material or articles".- (1) Subject
to sub-section (2), goods shall be "infringing goods"
in relation to a registered trade mark, if they or their packaging bear
a mark identical or deceptively similar to that mark and-
(a) the application of the mark to the goods or their packaging
was an infringement of the registered trade mark;
(b) the goods are proposed to be imported into
(c) the mark has otherwise been used in relation to the goods
in such a way as to infringe the registered trade mark.
(2) Nothing in sub-section (1) shall be construed as affecting the importation
of goods which may be lawfully imported into
(3) Material shall be "infringing material" in relation to a
registered trade mark, if it bears a mark identical or deceptively similar
to that mark and either it is-
(a) used for labeling
or packaging goods, as a business paper, or for advertising goods or services,
in such a way as to infringe the registered trade mark; or
(b) intended to be so used and such use would infringe the
registered trade mark.
(4) "Infringing articles" in relation to a registered trade
mark, means such articles which-
(a) are specifically designed or adapted for making copies
of a mark identical or similar to that mark; and
(b) a person has in his possession, custody or control, knowing
or having reason to believe that they have been or are to be used to produce
infringing goods or material.
50. Period after
which remedy of delivery be not available.- (1) An application for
an order under section 48 shall not be made after the expiry of
three years from,
(a) in the case of infringing goods, the date on which the
trade mark was applied to the goods or their packaging;
(b) in the case of infringing material, the date on which
the trade mark was applied to the material; or
(c) in the case of infringing articles, the date on which
they were made, except as provided in
sub-section (2).
(2) If during the whole or part of the period specified in sub-section
(1), the proprietor of the registered trade mark-
(a) is under a disability; or
(b) is prevented by fraud or concealment from discovering
the facts entitling him to apply for an order, an application may be made
at any time before the expiry of three years from the date on which he
ceased to be under a disability or, as the case may be, could with reasonable
diligence have discovered those facts.
Explanation .-In this sub-section the expression "disability"
shall have the same meaning as in the Limitation Act, 1908 (IX of 1908).
51. Order as
to disposal of infringing goods, material or articles.- (1) Where
infringing goods, material or articles have been delivered up in pursuance
of an order under section 48, an application may be made to the Court-
(a) for an order that they be destroyed or forfeited to such
person as the Court may think fit; or
(b) for a decision that no such order should be made.
(2) In considering what order, if any should be made, the Court shall
consider whether other remedies available in an action for infringement
of the registered trade mark would be adequate to compensate the proprietor
and any licensee and protect their interests.
(3) Where there are more persons than one interested in the goods,
materials or articles, the Court shall make such order as it thinks just.
(4) If the Court decides that no order should be made
under this section, then the person, in whose possession, custody or control
the goods, material or articles were before being delivered shall be entitled
to their return.
52. Remedy for
groundless threats of infringement proceedings.- (1) Where a person
threatens to bring an action against another person on the ground that
the other person has infringed-
(a) a registered trade mark; or
(b) a trade mark alleged by the person to be registered,
any person aggrieved
by the threat may bring proceedings for relief against the person making
the threat.
(2) The relief may be applied for any of the following, namely:-
(a) a declaration that the threats are unjustifiable;
(b) an injunction against the continuance of the threats;
or
(c) damages in respect of any loss he has sustained by the
threats.
(3) The plaintiff shall be entitled to any relief specified in sub-section(2)
unless the defendant shows that the acts in respect of which proceedings
were threatened constitute, or if done would constitute, an infringement
of the registered trade mark concerned.
(4) If that is shown by the defendant, as provided under sub-section
(3), the plaintiff shall be entitled to any relief specified in sub-section
(2), if he shows that the registration of the trade marks is invalid or
liable to be revoked in a relevant respect.
(5) The mere notification that a trade mark is registered, or that an
application for registration has been made, shall not constitute a threat
of proceedings for the purposes of this section.
(6) The provisions of this section shall not make a lawyer, advocate or
attorney liable to an action for an act done in his professional capacity
on behalf of a client.
CHAPTER VI
IMPORTATION
OF INFRINGING GOODS, MATERIAL OR ARTICLES
53. Infringing
goods, material or articles may be treated as prohibited.- (1) The
proprietor of the registered trade mark may give notice in writing to
the Collector of Customs that-
a)
he is the proprietor of the registered trade mark;
b)
at a time and place specified in the notice, goods which, in relation
to that registered trade mark are infringing goods, material or articles,
or bear false indications as to their source or the identity of their
manufacturer are expected to arrive in Pakistan from outside Pakistan
and that they are subject to the control of the customs authorities under
the Customs Act, 1969 (IV of 1969); and
c)
he requests the Collector of Customs to treat such goods as prohibited
goods.
54. Notice for
intervention by customs authorities.- When any notice to the Collector
of Customs is made under section 53, it shall be accompanied by an undertaking
by the person sending the notice to indemnify the customs authorities
concerned and to compensate any importer, consignee or owner of the goods
for loss or damage resulting from the wrongful suspension of clearance
of goods.
55. Furnishing
of security or equivalent assurance to customs authority.- The Collector
of Customs may require an applicant to provide a security or equivalent
assurance sufficient to protect the importer, consignee or owner of the
goods but such security or equivalent assurance shall not be such as to
unreasonably deter recourse to these procedures.
56. Collector
of Customs may seize goods bearing infringing trade mark.- If goods
to which section 53 applies-
(a) bear on them a trade mark which, in the opinion of the
Collector of Customs, is identical with, or deceptively similar to the
registered trade mark; and
(b) are goods in respect of which the trade mark is registered,
the Collector of
Customs shall seize the goods unless he is satisfied that there are no
reasonable grounds of believing that the trade mark shall be infringed
by the importation of the goods and the seized goods shall be kept in
a secure place as directed by the Collector of Customs.
57. Notice of
seizure.- The Collector of Customs shall, as soon as practicable-
(a)
give, either personally or by urgent post, to the importer, consignee
or owner of the goods a notice of seizure in writing identifying
the goods and stating that they have been seized under section 56; and
(b) give to the applicant a notice in writing-
(i) identifying the goods and stating that they
have been seized under section 56;
(ii) giving the full name and address of the importer,
consignee or owner of the goods and any information that the Collector
of Customs has and believes, on reasonable grounds, to be likely to help
the applicant to identify the importer or the owner of the goods; and
(iii) stating that the goods shall be released to the
importer, consignee or owner of the goods unless the applicant brings
an action for infringement of the registered trade mark in respect of
goods before a Court having jurisdiction in the matter and gives the Collector
of Customs notice in writing of the action, within the period of ten working
days after the applicant has been given the notice, or if the Collector
of Customs extends the period under sub-section (1) of section 60, within
such extended period.
58. Forfeiture
of goods.- If the importer, consignee or owner of any seized goods,
at any time before the applicant starts an action for infringement of
the trade mark in respect of goods, by notice in writing to the Collector
of Customs, gives consent to the goods being forfeited by the Collector
of Customs, the goods shall be so forfeited by the Collector of Customs.
59. Release
of goods.- (1) The Collector of Customs shall release the seized goods
to their designated importer, consignee or owner if, within the specified
period, the applicant has not-
(a) brought an action for infringement of the registered trade
mark in respect of the goods; and
(b) given to the Collector of Customs notice in writing of
the action.
(2) The Collector of Customs shall also release the
seized goods to their designated importer, consignee or owner if-
(a) before the end of the prescribed period, the applicant,
by notice in writing to the Collector of Customs, consented to the release
of the goods; and
(b) at that time,
(i) the applicant
has not brought an action for infringement of the registered trade mark
in respect of the goods; or
(ii) the action brought by the applicant has been withdrawn.
(3) The Collector of Customs may release the seized goods to their designated
importer, consignee or owner before the end of the specified period if,
(a) having regard to information that has come to his knowledge
after the goods were seized, he is satisfied that there are no reasonable
grounds of believing that the registered trade mark has been infringed
by the importation of the goods; and
(b) the applicant has not so far brought an action for infringement
of the registered trade mark in respect of the goods, or has not informed
him of such an action.
60. Action
for infringement against importation of infringing goods.- (1) The
applicant may bring an action for infringement of a registered trade mark
in respect of the seized goods and give a notice to the Collector
of Customs, subject to the provisions of clause (b), within ten
working days specified in the notice given to the applicant in respect
of the goods, under section 57 or if-
(i) the applicant has, before the expiry of the specified
period, applied in writing to the Collector of Customs for a extension
of the specified period; and
(ii) the Collector of Customs, being satisfied that
in the circumstances of the case it is fair and reasonable to do so, has
extended the specified period for a number of working days not exceeding
ten days,
within that period
so extended by the Collector of Customs.
(2) The Court hearing the action-
(a) may, on the application of any person, allow that person
to be joined as a defendant in the case; and
(b) shall allow the Collector of Customs, or his duly authorised
officer, to appear and be heard.
(3) Subject to sub-section (4), in addition to any relief that the Court
may grant apart from the provisions of this section, the Court may-
(a)
at any time, if it thinks it just, order that the seized goods be released
to their designated owner subject to such conditions that the Court considers
fit to impose; or
(b)
order that the seized goods be forfeited.
(4) The Court shall not make any order which may facilitate-
(a)
re-exporting of the counterfeit trade mark goods;
(b)
removing of the trade marks which have been affixed to the counterfeit
trade mark goods without authorization; and
(c)
local sale of such goods.
(5) If the Court decides that the registered trade mark was not infringed
by the importation of the goods and the designated importer, consignee
or owner of the goods, satisfies the Court that he has suffered losses
or damage because the goods were seized, the Court may order the applicant
to pay the defendant compensation, in the amount determined by the Court,
for any part of the loss or damage that is attributable to any period
beginning on or after the day on which the action was brought.
(6) If, after three weeks from the day on which the action was brought,
there is not in force at any time an order of the Court preventing the
goods from being released, the Collector of Customs shall release the
goods to their designated importer, consignee or owner.
(7) If the Court orders that the goods be released, the Collector of Customs
shall, subject to section 63, comply with the order.
61. Action
for infringement by licensee in relation to any seized goods.- If
an exclusive licensee of a registered trade mark is an applicant in relation
to any seized goods, the licensee may commence an action for the infringement
of the registered trade mark in respect of the goods within the required
period without first ascertaining whether the proprietor is willing to
bring the action.
62. Disposal
of forfeited goods.- (1) Subject to sub-section (2), any goods
forfeited under the provisions of this Chapter shall be disposed
of by the Collector of Customs in the manner as if the goods were
forfeited under the Customs Act, 1969 (IV of 1969).
(2) The Collector of Customs shall not dispose of goods in a manner which
may facilitate-
(a) re-exporting
of the counterfeit trade mark goods;
(b) removing
of the trade marks which have been affixed to the counterfeit trade mark
goods without authorization; and
(c) local
sale of such goods.
63. Power of
the Collector of Customs to retain control of goods.- Notwithstanding
anything contained in this Chapter, the Collector of Customs shall not-
(a) release, or dispose of, any goods; or
(b) take any action in relation to the goods to give effect
to any order of a Court under section 60,
and Collector of
Customs shall apply to Court to request that the goods are required and
he may be allowed to retain control of the goods under any law for the
time being in force.
64. Insufficient
security.- If security given under section 55 by the applicant who
gave notice in respect of a registered trade mark under section 53 or
section 61 is not sufficient to meet the expenses incurred by the Federal
Government as a result of the action taken by the Collector of Customs
under this Chapter, because of the notice, the amount of the difference
in the expenses and the amount of security-
(a) shall be a debt due by the applicant to the Federal Government;
and
(b) shall be recovered by the Federal Government under section 202
of the Customs Act, 1969 (IV of 1969).
65. The
Federal Government not be liable to loss, etc., suffered because of
seizure.- The Federal Government shall not be liable to any loss,
damage or delays suffered by a person-
(a) because the Collector of Customs seized or failed to seize goods
under this Chapter; or
(b) because of release of any seized goods.
66.
Power of the Collector of Customs to make regulations.- The Collector
of Customs may make regulations prescribing the form in which notices
shall be made and requiring the person making the notices to furnish evidence
as to the ownership and to comply with such other conditions as may be
specified which may include the payment of a fee to cover the administrative
costs.
CHAPTER VII
UNFAIR COMPETITION
AND COMPARATIVE ADVERTISEMENT
67. Definition
of unfair competition and provisions relating thereto.-(1) An “unfair
competition” means any act of competition contrary to honest business
practices in industrial or commercial matters and, without prejudice to
the generality of the foregoing, such acts may include-
(a) all acts of such nature as to create confusion by any
means whatsoever with the establishment, goods, services or
industrial or commercial activities of a competitor;
(b) false allegations in the course of trade of such a nature
as to discredit the establishment, goods, services or industrial or commercial
activities of a competitor;
(c) indications or allegations the use of which in the course
of trade is liable to mislead the public as to the nature, manufacturing
process, characteristics, constituents, quality or the suitability for
their purpose of the goods or services;
(d) any act or practice, in the course of industrial or commercial
matters that results in the disclosure, acquisition or use by others of
information without the consent of the person lawfully in control of that
information in a manner contrary to honest industrial or commercial practice
so long as such information relates to sale or manufacture of goods or
provision of services and-
(i)
is secret in the sense that it is not, as a body or in the precise configuration
and assembly of its components, generally known among or readily accessible
to persons within the circles that normally deal with the kind of information
in question;
(ii)
has commercial value because it is secret; and
(iii)
has been subject to reasonable steps under circumstances, by the person
lawfully in control of the information, to keep it secret;
(e) making of false or deceptive statements in the course
of trade;
(f) misleading advertising; or
(g) fraudulently registering or applying for registration
of a trade mark.
Explanation.- For the purposes of clause (d) "a
manner contrary to honest industrial or commercial practice" shall
mean, at least, practices such as breach of contract, breach of confidence
and inducement to breach, and includes the acquisition of undisclosed
information by third parties who knew, or were grossly negligent in failing
to know, that such parties were involved in the acquisition.
(2) Any act of unfair competition shall be unlawful.
(3) An action against unfair competition may be brought before a Court
of competent jurisdiction.
68. Misleading
and comparative advertisement.- (1) Comparative advertisement shall,
as far as comparison is concerned, be lawful subject to the following
conditions, namely:-
(a) it is not misleading according to clause (xxv) of
section 2, and sub-section (2);
(b) it compares goods or services meeting the same needs or
intended for the same purpose;
(b)
it objectively compares one or more material, relevant, verifiable and
representative features of those goods and services, which may include
price;
(c)
it does not create confusion in the market place between the advertiser
and a competitor or between the advertiser's trade marks, trade names,
other distinguishing marks, goods or services and those of the competitor;
(e) it does not discredit or disparage the trade marks, trade
names, other distinguishing marks, goods, services, activities or circumstances
of a competitor;
(f) for products with designation of origin, it relates
in each case to products with same designation;
(g) it does not take unfair advantage of the reputation of
a trade mark, trade name or other distinguishing marks of a competitor
or of the designation of origin of competing products; and
(h) it does not present goods or services as imitations or
replicas of goods or services bearing a protected trade mark or trade
name.
(2) In determining whether an advertising is misleading, the tribunal
shall take account of all its features, and in particular of any information
it contains concerning-
(a) the characteristics of goods or services, such as their
availability, nature, execution, composition, method and date of manufacture
or provision, fitness for purpose, uses, specification, geographical or
commercial origin or the results to be expected from their use, or the
results and material features of tests or checks carried out on the goods
or services;
(b) the price or the manner in which the price is calculated,
and the conditions on which the goods are supplied or the services provided;
and
(c) the nature, attributes and rights of the advertiser, such
as his identity and assets, his qualifications and ownership of industrial,
commercial or intellectual property rights or his awards and distinctions.
(3) Any person having a legitimate interest in prohibiting misleading
advertisement or regulating comparative advertising may institute legal
action against such advertising before the tribunal.
(4) For all complaints made to the tribunal under sub-section (3), the
tribunal shall take into account all the interests involved and in particular
the public interest before it orders-
(a) publication of a corrective statement by the advertiser;
(b) cessation of misleading advertising or unpermitted comparative
advertising; or
(c) if the misleading advertising or unpermitted comparative
advertising has not yet been published but publication is imminent, the
prohibition of such publication.
(5) This section shall not exclude voluntary control of misleading or
comparative advertisement by self-regulatory bodies and recourse to such
bodies by the persons if proceedings before such bodies are in addition
to the tribunal proceedings referred to in sub-section (3).
CHAPTER VIII
ASSIGNMENT AND
TRANSMISSION
69. Assignment
of registered trade mark.- (1) A registered trade mark shall be transmissible
by assignment, testamentary disposition or operation of law in the same
way as other personal or movable property.
(2) A registered trade mark shall also be transmissible either in connection
with the goodwill of a business or independently.
(3) An assignment or other transmission of a registered trade mark may
be partial, that is, limited so as to apply-
(a) in relation to some but not all of the goods or services
for which the trade mark is registered; or,
(b) in relation to use of the trade mark in a particular manner
or a particular locality.
(4) An assignment of a registered trade mark, or an assent relating to
a registered trade mark shall not be effective unless it is in writing
signed by, or on behalf of, the assignor or, as the case may be, a personal
representative.
(5) The provisions of sub-section (4) shall apply to assignment
by way of security as in relation to any other assignment.
(6) Assignment or other transmission of a registered trade mark shall
be the subject of charge in the same way as other personal or movable
property.
(7) Nothing in this Ordinance shall be construed as affecting the assignment
or other transmission of an unregistered trade mark as part of the goodwill
of a business.
70. Registration
of transactions affecting registered trade mark.- (1) On application
being made to the Registrar by-
(a) a person claiming to be entitled to an interest in, or
under, a registered trade mark by virtue of a registrable transaction;
or
(b) any other person claiming to be affected by such a transaction,
the prescribed
particulars of the transaction shall be entered in the Register.
(2) The following shall be registerable transactions, namely:-
(a) an assignment of a registered trade mark or any right
in it;
(b) the grant of a license under a registered trade mark;
(c) the granting of any security interest whether fixed or
floating over a registered trade mark or any right in or under it;
(d) the making by personal representatives of an assent in
relation to a registered trade mark or any right in or under it; and
(e) an order of a Court or other competent authority transferring
a registered trade mark or any right in or under it.
(3) Until an application has been made for registration of the prescribed
particulars of a registerable transaction-
(a) the transaction shall be ineffective as against a person
acquiring a conflicting interest in, or under, the registered trade mark
in ignorance of it; and
(b) a person claiming to be a licensee by virtue of the transaction
shall not have the protection of section 69, 77 or 79.
(4) Provisions may be made by rules as to-
(a) the amendment of registered particulars relating to a
licence so as to reflect any alteration of the terms of the licence; and
(b) the removal of such particulars from the Register-
(i)
where it appears from the registered particulars that the licence was
granted for a fixed period and that period has expired; or
(ii)
where no such period is indicated and, after such period as may be prescribed,
the Registrar has informed the parties of his intention to remove the
particulars from the Register.
(5) Provision may also be made by rules as to the amendment or removal
from the Register of particulars relating to a security interest on the
application of, or with the consent of, the person entitled to the benefit
of the interest.
71. Application
for registration of trade mark as an object of property.- (1) The
provisions of sub-section
(1) of section 39, sub-sections
(2) In section 70 as it applies in relation to a transaction affecting
an application for the registration of a trade mark, the references to
the entry of particulars in the Register, and to the making of an application
to register particulars, shall be construed as references to the giving
of notice to the Registrar of those particulars.
CHAPTER IX
USE OF
TRADE MARKS AND LICENSEES
72. Proposed
use of trade mark by company to be formed.-(1) No application
for the registration of a trade mark in respect of any goods or services
shall be refused, nor shall permission for such registration be withheld,
on the ground only that it appears that the applicant does not use or
propose to use the trade mark, if the Registrar is satisfied that-
(a) a company is about to be formed and registered under the
Companies Ordinance, 1984 (XLVII of 1984), or any modification thereof
and that the applicant intends to assign the trade mark to that company
with a view to the use thereof in relation to those goods or services
by the company; or
(b) the applicant intends it to be used by way of permitted
use.
(2) The provisions of section 73 shall have effect, in relation to a trade
mark registered under this sub-section, as if for the reference, in clause
(a) of sub-section (1) of that section to intention on the part of an
applicant for registration that a trade mark should be used by him there
were substituted a reference to intention on his part that it should be
used by the company or the authorised user concerned.
(3) The tribunal may, in a case to which clause (a) of sub-section (1)
applies, require the applicant to give security for the costs of any proceedings
relating to any opposition or appeal, and in default of such security
being duly given, may treat the application as abandoned.
(4) Where in a case to which clause (a) of sub-section (1) applies, a
trade mark in respect of any goods or services is registered in the name
of an applicant who relies on intention to assign the trade mark to a
company, then unless within such period as may be prescribed or within
such further period not exceeding six months as the Registrar may, on
application being made to him in the prescribed manner, allow, the company
has been registered as the proprietor of the trade mark in respect of
those goods or services, the registration shall cease to have effect in
respect thereof at the expiration of that period and the Registrar shall
amend the Register accordingly.
73. Revocation
of registration.- (1) The registration of a trade mark may be revoked
on any of the following grounds, namely:-
(a) that within the period of five years following the date
of completion of registration procedure it has not been put to bona
fide use in Pakistan by the proprietor or by an authorised user thereof,
in relation to the goods or services for which it is registered and there
are no proper reasons for its non-use;
(b) that the bona fide use has been suspended for an
uninterrupted period of five years and there are no proper reasons for
its non-use;
(c) that in consequence of acts or inactivity of the proprietor,
it has become the common name in the trade for a product or service for
which it is registered; and
(d) that in consequence of the use made of it by the proprietor
or with his consent in relation to the goods or services for which it
is registered, it is liable to mislead the public, particularly as to
the nature, quality or geographical origin of those goods or services.
(2) For the purposes of sub-section (1), use of a trade mark shall include
use in a form differing in elements which do not alter the distinctive
character of the mark in the form in which it was registered.
(3) The registration of a trade mark shall not be revoked on the grounds
specified in clause (a) or (b) of sub-section (1), if such use, as it
referred to in those clauses, is commenced or resumed after the expiry
of the five years’ period and before the application for revocation is
made:
Provided that any such commencement or resumption of use after the expiry
of five years period but only three months before the application for
revocation is made, shall only be regarded if the preparation for commencement
or resumption began before the proprietor became aware that the application
is made.
(4) An application for revocation may be made by an interested party to
the Registrar, except that-
(a) if proceedings concerning the trade mark in question are
pending in the Court, the application shall be made to the Court; and
(b) in case the application is made to the Registrar, he may at
any stage of the proceedings refer the application to the Court.
(5) Where grounds for revocation exist in respect of only some of the
goods or services for which the trade mark is registered, revocation shall
relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the
rights of the proprietor shall be deemed to have ceased to that extent
as from-
(a) the date of the application for revocation; or
(b) if the Registrar or Court is satisfied that the grounds
for revocation existed at an earlier date, that date.
(7) Where the registration of a trade mark is revoked or declared invalid
on the ground that the registration was secured in bad faith, the applicant
shall be barred from applying for registration of the identical or similar
trade mark for two years from the date of revocation or invalidation,
whatever the case may be.
74. Use of trade
mark by a person other than the proprietor thereof.- (1) The permitted
use of a trade mark shall be deemed to be use of the trade mark by the
owner of the trade mark and shall be deemed not to be use of the trade
mark by a person other than the owner for any purpose for which such use
is material under this Ordinance or any other law for the time being in
force.
(2) The tribunal while determining as to whom the benefit
of use of a trade mark be passed, shall pass the benefit to none else,
except to-
(a) the proprietor of the trade mark, if the trade mark is
registered; or
(b) the owner of the trade mark, if the trade mark is entitled
to protection under the Paris Convention as a well known trade mark.
75. Licensing
of registered trade mark.- (1) A license to use a registered
trade mark may be general or limited.
(2) A limited license may, in particular, apply-
(a)
in relation to some but not all of the goods or services for which the
trade mark is registered; or
(b)
in relation to use of the trade mark in a particular manner or a particular
locality.
(3) A license shall not be effective unless it is in writing signed by
or on behalf of the grantor.
(4) Unless the license provides otherwise, it shall be binding on a successor
in title to the grantor's interest.
(5) Where the license so provides, a sub-license may be granted by the
licensee, and references in this Ordinance to a license or licensee shall
include a sub-license or sub-licensee.
76. Exclusive
license defined. - (1) In this Ordinance, an "exclusive license
" means a license, whether general or limited, authorizing the licensee
to the exclusion of all other persons including the person granting the
license, to use a registered trade mark in the manner authorised by the
license and the expression "exclusive licensee" shall be construed
accordingly.
(2) An exclusive licensee shall have the same rights against a successor
in title who is bound by the license as he has against the person granting
the license.
77. General
provisions as to the rights of licensees in case of infringement.-
(1) Save as provided in section 61, a licensee shall be entitled,
unless his licence, or any licence through which his interest is derived,
provides otherwise, to call on the proprietor of the registered trade
mark to take infringement proceedings in respect of any matter which affects
his interests:
Provided
that if the proprietor-
(a) refuses to do so; or
(b) fails to do so within two months after being called upon, the
licensee may bring the proceedings
in his own name as if he were the proprietor.
(2) Where infringement proceedings are brought by a licensee under this
section, the licensee may not, without the leave of the Court, proceed
with the action unless the proprietor is either joined as a plaintiff
or added as a defendant:
Provided that this shall not affect the granting of interlocutory
relief on an application by a licensee alone.
(3) A proprietor who is added as a defendant as provided in sub-section
(2) shall not be made liable for any costs in the action unless he takes
part in the proceedings.
(4) In infringement proceedings brought by the proprietor of a registered
trade mark any loss suffered or likely to be suffered by licensees shall
be taken into account and the Court may give such directions as it thinks
fit as to the extent to which the plaintiff shall hold the proceeds of
any pecuniary remedy on behalf of licensees.
(5) The provisions of this section shall apply in relation to an exclusive
licensee if or to the extent that he has, under sub-section (1) of section
78, the rights and remedies of an assignee as if he were the proprietor
of the registered trade mark.
78. Exclusive
licensee having rights and remedies of assignee.- (1) An exclusive
license may provide that the licensee shall have, to such extent as may
be provided by the license, the same rights and remedies in respect of
matters occurring after the grant of the license as if the license had
been assignment. Where or to the extent that such provision is made, the
licensee shall be entitled, subject to the provisions of the license and
to the following provisions of this section, to bring infringement proceedings,
against any person other than the proprietor, in his own name.
(2) Any such rights and remedies of an exclusive licensee shall be concurrent
with those of the proprietor of the registered trade mark, and references
to the proprietor of a registered trade mark in this Ordinance relating
to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section,
a defendant may avail himself of any defence which would have been available
to him if the action had been brought by the proprietor of the registered
trade mark.
(4) Where proceedings for infringement of a registered trade mark brought
by the proprietor or an exclusive licensee relate wholly or partly to
an infringement in respect of which they have concurrent rights of action,
the proprietor or, as the case may be, the exclusive licensee may not,
without the leave of the Court, proceed with the action unless the other
is either joined as a plaintiff or added as a defendant:
Provided that this
shall not affect the granting of interlocutory relief on an application
by a proprietor or exclusive licensee alone.
(5) A person who is added as a defendant as mentioned in sub-section (4)
shall not be made liable for any costs in the action unless he takes part
in the proceedings.
(6) Where an action for infringement of a registered trade mark is brought
which relates wholly or partly to an infringement in respect of which
the proprietor and an exclusive licensee have or had concurrent rights
of action-
(a) the Court shall in assessing damages take into account-
(i)
the terms of the license; and
(ii)
any pecuniary remedy already awarded or available to either of them in
respect of the infringement;
(b) no account of profits shall be directed if an award of damages has
been made, or an account of profits has been directed, in favour of the
other of them in respect of the infringement; and
(c) the Court shall if an account of profits is directed apportion the
profits between them as it, subject to any agreement between them, considers
just.
(7) The provisions of sub-section (6) shall apply whether or not the proprietor
and the exclusive licensee are both parties to the action, the Court may
give such directions as it thinks fit as to the extent to which the party
to the proceedings shall hold the proceeds of any pecuniary remedy on
behalf of the other.
(8) The proprietor of a registered trade mark shall inform any exclusive
licensee who has a concurrent right of action before applying for an order
under section 48, and the Court may, on the application of the licensee,
make such order under that section as it thinks fit having regard to the
license.
(9) The provisions of sub-sections
79. Surrender
of registered trade mark.- (1) A registered trade
mark my be surrendered by the proprietor in respect of some, or all, of
goods or services for which it is registered.
(2) Provisions may be made by rules,
(a) as to the manner and effect of a surrender; and
(b) for protecting the interests of other persons having right
in the registered trade mark.
80. Grounds
for invalidity of registration.- (1) The registration of a trade mark
may be declared invalid on the ground that the trade mark was registered
in breach of section 14 or any of the provisions thereof.
(2) Where the trade mark was registered in breach of clause (b), (c) or
(d) of sub-section (1) of section 14, it shall not be declared invalid
if, in consequence of the use which has been made of it, it has after
registration acquired a distinctive character in relation to the goods
or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the ground
that there is-
(a) an earlier trade mark in relation to which the conditions set out
in sub-section (1), (2) or (3) of section 17 obtain; or
(b) an earlier right in relation to which the condition set out in sub-section
(4) of section 17 is satisfied,
unless the proprietor
of that earlier trade mark or other earlier right has consented to the
registration.
(4) An application for declaration of invalidity may be made by an interested
party either to the Registrar or to the Court, except that-
(a) if proceedings concerning the trade mark in question are pending in
the Court, the application shall be made to the Court; and
(b) in any other case, if the application has been made to the Registrar,
he may at any stage of the proceedings refer the application to the Court.
(5) In the case of bad faith in the registration of a trade mark, the
Registrar may apply to the Court for a declaration of the invalidity of
the registration.
(6) Where the grounds of invalidity exist in respect of only some of the
goods or services for which the trade mark is registered, the trade mark
shall be declared invalid as regards those goods or services only.
(7) Where the registration of a trade mark has been declared invalid to
any extent, the registration shall to that extent be deemed never to have
been made provided that this shall not affect the transactions past and
closed.
81. Effect of
acquiescence.- (1) Where the owner of an earlier trade mark, or other
earlier rights, has acquiesced for a continuous period of five years from
the date of registration in the use of a registered trade mark in Pakistan,
being aware of that use, there shall cease to be any entitlement on the
basis of that earlier trade mark or other right-
(a) to apply for a declaration that the registration of the later trade
mark is invalid; or
(b) to oppose the use of the later trade mark in relation to the goods
or services in relation to which it has been so used,
unless the registration
of the later trade mark was applied for or used in bad faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark
shall not be entitled to oppose the use of the earlier trade mark or,
as the case may be, the exploitation of the earlier right, notwithstanding
that the earlier trade mark or right may no longer be invoked against
his later trade mark.
82. Collective
marks.- (1) A collective mark shall be a mark distinguishing
the goods or services of members of the association which is the proprietor
of the mark from those of other undertakings.
(2) The provisions of this Ordinance shall apply to collective marks subject
to the provisions of the First Schedule.
83. Certification
marks.- (1) A certification mark shall be a mark indicating
that the goods or services in connection with which it is used are certified
by the proprietor of the mark in respect of origin, mode of manufacture
of goods or performance of services, quality, accuracy or other characteristics.
(2) The provisions of this Ordinance shall apply to certification marks
subject to the provisions of the Second Schedule.
84. Domain names.-
(1) A domain name shall be a mark which is a user friendly substitute
for an Internet address.
(2) The provisions of this Ordinance shall apply to domain names subject
to the provisions of the Third Schedule.
CHAPTER X.
THE
85. Meaning
of “
(a) " Paris Convention" means the Paris Convention for
the Protection of Industrial Property of the 20th March, 1883, as revised
or amended from time to time; and
(b) a "Convention country" means a country other than
86. Protection
of well known trade mark.- (1) References in this Ordinance to a trade
mark which is entitled to protection as a well-known trade mark shall
be to a mark which is so entitled under the Paris Convention and which
is well-known in Pakistan as being the mark of a person who-
(a) is a national of a Convention country; or
(b) is domiciled in, or has a real and effective industrial or commercial
establishment in, a Convention country, whether or not that person carries
on business, or has any goodwill, in
(2) For the purposes of this Ordinance, the tribunal while determining
whether a trade mark is well known, without having to require registration
or actual use in the form of sales of goods or services under the trade
mark in Pakistan, shall consider the following factors as relevant criteria
for establishing the well known status of the trade mark, namely:-
(i) the amount of
(ii) the degree of inherent or acquired distinctiveness
of the trade mark;
(iii) the
(iv) the
(v) the
(vi) the
(vii) the
the presence or
absence of identical or deceptively similar third party trade marks validly
registered or used in
relation to identical
or similar goods and services.
(3) The owner of a trade mark which is entitled to protection under the
Paris Convention as a well-known trade mark shall be entitled to restrain
by injunction the use in Pakistan of a trade mark which, or
the essential part of which, is identical or deceptively similar to the
well-known trade mark-
(a) in relation to identical or similar goods or services, where the use
is likely to cause confusion; or
(b) where such use causes dilution of the distinctive quality of the well-known
trade mark.
(4) Rights conferred under sub-section (3) shall be subject to the
provisions of section 81 and nothing in the said sub-section shall affect
the continuation of any bona fide use of a trade mark begun before
the commencement of this Ordinance.
87. National
emblems of Convention countries.- (1) A trade mark which consist of
or contains the flag of a Convention country shall not be registered without
the authorization of the competent authorities of that country, unless
it appears to the Registrar that use of the flag in the manner proposed
is permitted without such authorization.
(2) A trade mark which consists of, or contains, the armorial bearings
or any other state emblem of a Convention country which is protected under
the Paris Convention shall not be registered without the authorization
of the competent authorities of that country.
(3) A trade mark which consists of, or contains, official mark or hallmark
adopted by a Convention country and indicating control and warranty shall
not, where the mark or hallmark is protected under the Paris Convention,
be registered in relation to goods or services of the same, or a similar
kind, as those in relation to which it indicates control and warranty,
without the authorization of competent authorities of the country
concerned.
(4) The provisions of this section as to national flag and other state
emblem, and official mark or hallmark, shall apply equally to anything
which from a heraldic point of view imitates such flag or other emblem,
mark or hallmark.
(5) Nothing in this section shall prevent the registration of a trade
mark on the application of the national of a country who is authorized
to make use of a state emblem, or official mark or hallmark, of that country,
notwithstanding that it is similar to that of another country.
(6) Where by virtue of this section the authorization of competent authorities
of a Convention country is or would be required for the registration of
a trade mark, those authorities shall be entitled to restrain by injunction
any use of the mark in
88. Emblems of certain international organizations.-(1) A trade
mark which consists of or contains any such emblem, abbreviations or name
which is protected under the Paris Convention shall not be registered
without the authorization of the international organization concerned,
unless it is appears to the Registrar that the use of the emblem, abbreviation
or name in the manner proposed-
(a) is not such as to suggest to the public that a connection exists between
the organization and the trade mark; or
(b) is not likely to mislead the public as to the extent of a connection
between the user and the organization.
(2) The provisions of this section as to emblem of an international organization
shall apply equally to anything which from a heraldic point of view imitates
any such emblem.
(3) Where under this section the authorization of an international organization
is, or would be, required for the registration of a trade mark, that organization
shall be entitled to restrain by injunction any use of the mark in
(4) Nothing in this section shall affect the rights of a person whose
bona fide use of the trade mark in question began before the commencement
of this Ordinance.
89. Notification
under Article 6ter of the Paris Convention.- (1) For the purposes
of section 87, state emblem of a Convention country, other than the national
flag, and official marks and hallmarks, shall be regarded as protected
under the Paris Convention only if, or to the extent that-
(a) the country in question has notified
(b) the notification remains in force; and
(c)
(2) For the purposes of section 88, the emblems, abbreviations and names
of an international organization shall be regarded as protected under
the Paris Convention only if, or to the extent that-
(a) the organization in question has notified
(b) the notification remains in force; and
(c)
(3) A notification under Article 6ter(3) of the Paris Convention
shall have effect only in relation to applications for registration made
more than two months after the receipt of such notification.
(4) The Registrar shall keep and make available for public inspection
by any person, at all reasonable hours and free of charge, a list of-
(a) the state emblems and official marks or hallmarks; and
(b) the emblems, abbreviations and names of international organizations,
which are for the time being protected under the Paris Convention by virtue
of notification under Article 6ter(3) of the Paris Convention.
90. Acts
of agent or representative.-(1) Where an application for registration
of a trade mark is made by a person who is an importer, or an agent
not being an agent under section 128, or a representative of a person
who is the proprietor of the mark in a Convention country, then-
(a)
if the proprietor opposes the application, registration shall be
refused; or
(b)
if the application, not being so opposed, is granted, the proprietor
may-
(i)
apply for the declaration of the invalidity of the registration; or
(ii) apply for
the rectification of the Register so as to substitute his name as the
proprietor of the registered trade mark.
(2) The proprietor may notwithstanding the rights conferred by this
Ordinance, in relation to a registered trade mark, by injunction restrain
any use of the trade mark in
(3) The provisions of sub-section (1) or (2) shall not apply
if, or to the extent that, the agent or representative justifies his action.
(4) An application under clause (a) or (b) of sub-section
(1) shall be made within three years of the proprietor becoming aware
of the registration, and no injunction shall be granted under sub-section
(2) in respect of a use in which the proprietor has acquiesced for a continuous
period of three years or more.
91. Nature of
goods or services to which a mark is to be applied..- For the purposes
of registration of a trade mark under this Ordinance, the nature of goods
or services to which a trade mark is to be applied shall in no case form
an obstacle to the registration of the trade mark.
92. Trade name.-
A trade name shall be protected without the obligation of filing or registration
under this Ordinance whether it forms part of a trade mark or not.
CHAPTER XI
SPECIAL PROVISIONS
FOR TEXTILE GOODS
93. Textile
goods.- The Federal Government shall prescribe classes of goods, in
this Chapter referred to as textile goods, to the trade marks used in
relation to which the provisions of this Chapter shall apply, and subject
to the said provisions, the other provisions of this Ordinance shall apply
to such trade marks as they apply to trade marks used in relation to other
classes of goods.
94. Restrictions
on registration of textile goods.- (1) In respect of textile goods,
being piece goods‑
(a) no mark consisting of a line heading alone shall be registerable as
a trade mark;
(b) a line heading shall not be deemed to be adapted to distinguish; and
(c) the registration of a trade mark shall not give any exclusive right
to the use of a line heading.
(2) In respect of any textile goods, the registration of letters or numerals,
or any combination thereof, shall be subject to such conditions and restrictions
as may be prescribed.
95. Advisory
Committees.- (1) The Federal Government may, in such manner,
as may be prescribed, constitute one or more Advisory Committees of persons
well versed in the usages of the textile trade for the purposes of this
Chapter.
(2) The Registrar shall consult any such Advisory Committee with respect
to any circumstances peculiar to the textile trade arising on an application
to register a trade mark in respect of textile goods.
(3) The place of meeting and the conduct of business of any such Advisory
Committee shall be determined as may be prescribed.
CHAPTER XII
RECTIFICATION
AND CORRECTION OF THE REGISTER
96. Rectification
or correction of Register.-(1) Any person having a sufficient interest
may apply for the rectification of an error or omission in the Register:
Provided that an
application for rectification may not be made in respect of a matter affecting
the validity of the registration of a trade mark.
(2) An application for rectification may be made to
the Registrar, except that-
(a) if proceedings concerning the trade mark in question are pending in
the Court, the application shall be made to the Court; and
(b) in case the application is made to the Registrar, he may at any stage
of the proceedings refer the application to the Court.
(3) Except where the Registrar or the Court directs otherwise, the effect
of rectification of the Register shall be that the error or omission in
question shall be deemed never to have been made.
(4) The Registrar may, on application made in such manner, as may be prescribed,
by the proprietor of the registered trade mark, or a licensee, enter any
change in his name or address as recorded in the Register.
97. Adoption
of entries to new classification.-(1) The Registrar may, if he considers
it necessary, implement any amended or substituted classification
of goods or services for the purposes of the registration of trade marks
as may be prescribed.
(2) The existing entries on the Register may be amended to record any
new classification as may be prescribed.
(3) Any such power of amendment referred to in sub-sections (2) and (3),
shall not be exercised so as to extend the rights conferred by the registration
except where it appears to the Registrar that compliance with this requirement
would involve undue complexity and that any extension would not be substantial
and would not adversely affect the rights of any person.
(4) The Registrar may, -
(a) require the proprietor of a registered trade mark, within such time
as may be prescribed, to file a proposal for amendment of the Register;
and
(b) cancel or refuse to renew the registration of the trade mark in the
event of his failing to do so.
(5) Any proposal, referred to in sub-section (4), shall be advertised
and may be opposed in such manner as may be prescribed.
CHAPTER XIII
OFFENCES, PENALTIES
AND PROCEDURE
98. Meaning
of applying a trade description.-(1) A person shall be deemed to apply
a trade description to goods or services who-
(a) applies a trade description to the goods themselves or uses it in
relation to goods or services;
(b) applies a trade description to any package in or with which the goods
are sold, or exposed for sale, or had in possession for sale or for any
purpose of trade or manufacture;
(c) places, encloses or annexes any goods which are sold or exposed for
sale, or had in possession for sale or for any purpose of trade or manufacture
in or with any package or other thing to which a trade description has
been applied;
(d) uses a trade description in any manner reasonably likely to lead to
the belief that the goods or services in connection with which it is used
are designated or described by that trade description; or
(e) in relation to the goods or services uses a trade description in any
sign, advertisement, invoice, catalogue, business letter, price list or
other commercial documents, and goods are delivered or services are rendered
to a person in pursuance of a request or order made by reference to the
trade description as so used.
(2) A trade description shall be deemed to be applied to goods whether
it is woven in, impressed on, otherwise worked into, or annexed or affixed
to, the goods or to any packaging or other thing.
99. Penalty
for applying false trade description, etc.- Any person who-
(a) applies any
false trade description to goods or services;
(b) applies to
any goods to which an indication of the country or place in which they
were made or produced or the name and address of manufacturer or person
for whom the goods are manufactured is required to be applied under section
126, a false indication of such country, place, name or address;
(c) tampers with,
alters or effaces an indication of origin which has been applied to any
goods to which it is required to be applied under section 126; or
(d) causes any
of the aforementioned things to be done,
shall, unless he
proves that he acted without intent to defraud, be punished with imprisonment
of either description for a term which shall not be less than three months
but which may extend to two years, or with fine which shall not be less
than fifty thousand rupees, or with both.
100. Enhanced
penalty on second or subsequent convictions.-Whoever having already
been convicted of an offence under section 99 is again convicted of any
such offence shall be punished for the second and every subsequent offence
with imprisonment of either description for a term which shall not be
less than six months but which may extend to three years, or with fine
which shall not be less than one hundred thousand rupees, or with both.
101. Penalty
for falsification of entries in Register.-Any person who makes, or
causes to be made, a false entry in the Register, or 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, he shall be punishable with imprisonment
for a term which shall not be less than three months but which may extend
to two years, or with fine which shall not be less than fifty thousand
rupees, or with both.
102. Penalty
for falsely representing a trade mark 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;
(b) with
respect to a part of a 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;
(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 the registration of a trade mark gives an exclusive right
to the use thereof in any circumstances in which, having regard to limitations
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 shall not
be less than one month but which may extend to six months, or with fine
which shall not be less then twenty thousand rupees, or with both.
(3) For the purposes of this section, the use in Pakistan in relation
to a trade mark of the word "registered", or of any other expression
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 is used in direct association with other
words delineated in characters at least as large as those in which that
word or other expression is delineated and indicating that the reference
is to registration as a trade mark under the laws of a country other than
Pakistan, being a country under the laws of which the registration referred
to is, in fact, in force;
(b) where
that other expression 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 laws of a country other than
(4) The Registrar may, either suo moto or upon a complaint in writing
made to him, call upon any person who is allegedly contravening any of
the provisions of clauses (a) to (d) of sub-section (1) to show
cause as to why action should not be taken against him:
Provided that power
of the Registrar shall be limited to the imposition of fine as provided
under sub-section (2) or, if pending, to refusal of application for registration
of the trade mark, or if the trade mark is registered, to invalidation
of the registration, or any combination thereof, as the case may be.
103. Restraint
of use of Government Arms and State emblems.- If a person, without
due authority, uses in connection with any trade, business, calling or
profession‑
(a) the flag of
(b) Government Arms or arms so closely resembling the same as to be calculated
to deceive, in such manner as to be calculated to lead to the belief that
he is duly authorised so to use the Government Arms;
(c) name, title and semblance of Quaid‑i‑Azam Mohammad Ali
Jinnah or Allama Dr. Mohammad Iqbal or any variations thereof, or any
device, emblem or title in such manner as to be calculated to lead to
the belief that he is employed by, or supplies goods to, or is connected
with, the Federal Government or any Provincial Government or any department
of any such Government; or
(d) the emblem, the official seal and the name or any abbreviation of
the name of the United Nations or any subsidiary body set up by the United
Nations or of the World Health Organization or of the World Intellectual
Property Organization or of the World Trade Organization in such manner
as is to be calculated to lead to the belief that he is duly authorized
by the competent authorities of these organizations to use the emblem,
seal or name,
he may, at the
suit of the Registrar or of any person who is authorized to use such Arms,
device, emblem or title, be restrained by injunction from continuing so
to use the same:
Provided that noting
in this section shall be construed as affecting the right, if any, of
the proprietor of a trade mark containing such Arms, device, emblem or
title to continue to use such trade mark.
104. Offences
by companies.- (1) If the person committing an offence under
this Ordinance is a company, the company as well as every person in charge
of, and responsible to, the company for the conduct of its business at
the time of the commission of the offence shall be deemed to be guilty
of the offence and shall be liable to be proceeded against and punished
accordingly:
Provided that nothing
contained in this sub-section shall render any such person liable to any
punishment if he proves that the offence was committed without his knowledge
or that he exercised all due diligence to prevent the commission of such
offence.
(2) Notwithstanding anything contained in sub-section (1), where an offence
has been committed by a company and it is proved that the offence has
been committed with the consent or connivance of, or that the commission
of the offence is attributable to any neglect on the part of any director,
manager, secretary or other officer of the company, such director, manager,
secretary or other officer shall also be deemed to be guilty of that offence
and shall be liable to be proceeded against and punished accordingly.
Explanation. - For the purposes of this section-
(a)
"company" means any body corporate and includes a partnership,
firm or other association of individuals; and
(b)
"director" in relation to a firm, means a partner in the firm.
105. Powers
to award compensation for offenses.- (1) In any prosecution under
this Ordinance, the competent Court may, when passing a sentence of fine,
direct that an amount not exceeding fifty per cent of the fine imposed
by it but commensurate with the loss suffered by the party shall be paid
as compensation to the person whose right has been infringed or to the
heirs or legal representatives of such person.
(2) The payment of any compensation to any person under sub-section (1),
shall be without prejudice to his right to any claim in a suit or other
proceedings which may be instituted, or may be pending in a Court, in
relation to the same matter.
106. Punishment
of abetment in Pakistan of acts done out of Pakistan.- If any person,
being within Pakistan, abets the commission, without Pakistan of any act
which, if committed in Pakistan, would, under this Ordinance, be an offence,
he may be tried for such abetment in any place in Pakistan in which he
may be found and be punished therefor with the punishment to which he
would be liable if he had himself committed in that place the act which
he abetted.
107. Penalty
for improperly describing a place of business as connected with the Trade
Marks Registry.- If any person uses 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, or is officially connected
with, the Trade Marks Registry, he shall be guilty of an offence punishable
with imprisonment for a term which may extend to two years, or with fine,
or with both.
CHAPTER XIV
MISCELLANEOUS
AND GENERAL PROVISIONS
108. Power of
Registrar to require use of forms.- (1) The Registrar may require
the use of such forms as he may direct for any purpose relating to the
registration of a trade mark or any other proceedings before him under
this Ordinance.
(2) The forms and any directions of the Registrar with respect to their
use shall be notified in the manner as may be prescribed.
109. Information
about applications and registered trade marks.- (1) After publication
of an application for registration of a trade mark the Registrar shall
on request provide a person with such information and permit him to inspect
such documents relating to the application, or to any registered trade
mark resulting from it, as may be specified in the request, subject to
such restrictions, as may be prescribed.
(2) Any request under sub-section (1) shall be made in the prescribed
manner and be accompanied by the prescribed fee.
(3) Before publication of an application for registration of a trade mark,
document or information constituting or relating to the application shall
not be published by the Registrar or communicated by him to any person
except-
(a)
in such cases and to such extent as may be prescribed; or
(b)
with the consent of the applicant,
but subject to
the provisions of sub-section (4).
(4) Where a person has been informed that an application for registration
of a trade mark has been made, and that the applicant will if the application
is granted bring proceedings against him in respect of acts done after
publication of the application, he may make a request under sub-section
(1) notwithstanding that the application has not been published and that
sub-section shall apply accordingly.
110. Costs,
security for costs and fine.- (1) Provisions may be made by rules
empowering the Registrar, in any proceedings before him under this Ordinance-
(a)
to award any party such costs as he may consider reasonable;
(b)
to impose fine as he may consider reasonable; and
(c)
to direct how and by whom costs or fines shall be paid.
(2) Any such order of the Registrar may be executable in the same way
as a decree of a
(3) Provisions may be made by rules empowering
the Registrar, in such cases as may be prescribed, to require a party
to proceedings before him to give security for costs in relation to those
proceedings or to proceedings on appeal and as to the consequences if
security is not given.
111.
Procedure before the Registrar.- (1) In all proceedings under this
Ordinance before the Registrar‑
(a) the Registrar shall have all the powers of a Civil Court
for the purposes of receiving evidence, administering oaths, enforcing
the attendance of witnesses, compelling the discovery and production of
documents, issuing commissions for the examination of witnesses and granting
a certificate of contested validity;
(b) evidence shall be given by affidavit, provided that the
Registrar may, if he thinks fit, take oral evidence in lieu of, or in
addition to, such evidence by affidavit.
(2)
the Registrar shall not exercise any powers vested in him by this Ordinance
or the rules made
thereunder adversely
to any party duly appearing before him, if required in writing within
the
prescribed time
so to do, without giving such party an opportunity of being heard.
112. Certificate
of validity of contested registration.- If in any legal proceedings
in which the validity of the registration of a trade mark comes into question
and a decision is given in favour of the proprietor of the trade mark,
the tribunal may grant a certificate to that effect, and if such a certificate
is granted, then in any subsequent legal proceedings in which the said
validity comes into question, the said proprietor on obtaining a final
order or judgement in his favour shall, unless the said final order
or judgement for sufficient reason directs otherwise, be entitled to his
full costs, charges and expenses as between legal practitioner and client.
113. Registrar's
appearance in proceedings involving the Register.- (1) In all proceedings
before the Court involving application for-
(a) the revocation of the registration of a trade mark;
(b) a declaration of the invalidity of the registration
of a trade mark; or
(c) the rectification of the Register,
the Registrar shall
be entitled to appear and be heard and shall appear if so directed by
the Court.
(2) Unless otherwise directed by the Court, the Registrar may instead
of appearing submit to the Court a statement in writing signed by him,
giving particulars of-
(a) any proceedings before him in relation to the matter in issue;
(b) the grounds of any decision given by him affecting it;
(c) the practice of the
Trade Marks Registry in like cases; or
(d) such matters relevant to the issues and within his knowledge as Registrar
as he thinks fit,
and the statement
shall be deemed to form part of the evidence in the proceedings.
(3) Anything which the Registrar is or may be authorized or require to
do under this section may be done on his behalf by a duly authorized officer
by him.
114. Appeal
against the decision of the Registrar.- (1) Save as otherwise expressly
provided in this Ordinance, an appeal shall lie, within the prescribed
period, against any decision of the Registrar under this Ordinance or
rules made thereunder to the High Court having jurisdiction:
Provided that if
any suit or other proceedings concerning the trade mark in question is
pending before a High Court or a District Court, the appeal shall lie
to that High Court or, as the case may be, to the High Court within whose
jurisdiction that District Court is situated.
(2) In an appeal by an applicant for registration against a decision of
the Registrar under section 21, 22 or 28, it shall not be open, save with
the express permission of the Court, to the Registrar or any party opposing
the appeal to advance grounds other than those recorded in the said decision
or advanced by the party in the proceedings before the Registrar, as the
case may be, and where any such additional grounds are advanced, the applicant
for registration may, on giving notice in the prescribed manner, withdraw
his application without being liable to pay the costs of the Registrar
or the parties opposing his application.
(3) Subject to the provisions of this Ordinance and of rules made thereunder,
the provisions of the Code of Civil Procedure, 1908 ( Act V of 1908),
shall apply to appeals before a High Court under this Ordinance.
115. Procedure
before the Federal Government.- In all proceedings under this Ordinance
before the Federal Government, evidence shall be given by affidavit, provided
that the Federal Government may, if it thinks fit, take oral evidence
in lieu of, or in addition to, such evidence by affidavit, and shall for
that purpose have all the powers of a Civil Court referred to in clause
(a) of section 111.
116. Procedure
in certain cases of option to apply to a Court or the Registrar.-
Where under this Ordinance, an applicant has the option of making an application
either to a Court or to the Registrar-
(a) if any suit or proceedings concerning the trade mark in
question are pending before a Court, the application shall be made to
the Court; and
(b) in any other case, if the application is made to
the Registrar, he may at any stage of the proceedings refer the application
to the Court.
117. Suits for
infringement to be instituted before District Court.- No suit for
the infringement of a trade mark or otherwise relating to any right in
a trade mark shall be instituted in any Court inferior to a District Court
having jurisdiction to try the suit.
118. Costs of
Registrar in proceedings before a Court.- In all proceedings under
this Ordinance before a Court, the costs of the Registrar shall be in
the discretion of the Court, but the Registrar shall not be ordered to
pay the costs of any of the parties.
119. Burden
of proving use of trade mark.- If in any civil proceedings under this
Ordinance, if a question arises as to the use to which a registered trade
mark has been put, it shall be for the proprietor to show what use has
been made of it.
120. Certain
persons to be public servants.- Every person appointed under this
Ordinance shall be deemed to be a public servant within the meaning of
section 21 of the Pakistan Penal Code, 1860 (Act XLV of 1860).
121. Documents
open to public inspection.- (1) Save as otherwise provided in this
Ordinance-
(a) the Register and any document upon which any entry in the Register
is based;
(b) every notice of opposition to the registration of a trade mark,
application for rectification before the Registrar, counter-statement
thereto, and any affidavit or documents filed by the parties in any proceedings
before the Registrar;
(c) such other documents as the Registrar may, by notification in
the Journal specify,
shall, subject
to such conditions as may be prescribed, be open to public inspection
at the Trade Marks Registry.
(2) Any person may, on an application to the Registrar and on payment
of such fees as may be prescribed, obtain a certified copy of any entry
in the Register or any document referred to in sub-section (1).
122. Death of
a party to any proceedings under this Ordinance.- If a person who
is a party to any proceedings under this Ordinance, not being any proceedings
before a Court, dies pending the proceedings, the Registrar may, on request,
and on proof to his satisfaction of the transmission of the interest of
the deceased person, substitute in the proceedings his successor in interest
in his place, or if the Registrar is of opinion that the interest of the
deceased person is sufficiently represented by the surviving parties,
permit the proceedings to continue without the substitution of his successor
in interest.
123. Extension
of time.- (1) If the Registrar is satisfied, on application
made to him in the prescribed manner and accompanied by the prescribed
fee, that there is sufficient cause for extending the time for doing any
act not being a time expressly provided in this Ordinance, whether the
time so specified has expired or not, he may subject to such conditions
as he may think fit to impose, extend the time and inform the parties
accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar
to hear the parties before disposing of an application for extension of
time and no appeal shall lie from any order of the Registrar under this
section.
124. Registrar
and other officers not compellable to produce Register, etc.- The
Registrar or any officer of the Trade Marks Registry shall not, in any
legal proceedings to which he is not a party, be compellable to produce
the Register or any other document in his custody the contents of which
can be proved by the production of a certified copy issued under this
Ordinance or to appear as a witness to prove the matters therein recorded
unless by order of the Court made for special case.
125. Power to
require goods to show indication of origin.- (1) The Federal Government
may, by notification in the official Gazette, require that goods of any
description specified in the notification, which are made or produced
beyond the limits of Pakistan and imported into Pakistan, or which are
made or produced within the limits of Pakistan, shall from such date as
may be appointed by the notification not being less than three months
from its issue, have applied to them an indication of the county or place
in which they were made or produced, and of the name and address of the
manufacturer or the person for whom the goods were manufactured.
(2) The notification under sub-section (1) may specify the manner in which
such indication shall be applied, that is to say, whether to goods themselves
or in any other manner and the times or occasions on which the presence
of the indication shall be necessary, that is to say, whether on importation
only, or also at the time of sale, whether by wholesale or retail or both.
(3) The provisions of section 23 of the General Clauses Act, 1897 (X of
1897), shall apply to the issue of a notification under sub-section (1),
as they apply to the making of a rule or bye-law the making of which is
subject to the condition of previous publication.
(4) A notification under sub-section (1), shall not apply to goods made
or produced beyond the limits of Pakistan and imported into Pakistan,
if in respect of those goods the Collector of Customs is satisfied at
the time of importation that they are intended for exportation whether
after transhipment in or transit through Pakistan or otherwise.
126. Address
for service.- (1) Every applicant or opponent in any proceedings under
this Ordinance, who does not reside or carry on business within Pakistan,
shall give an address for service in Pakistan and such address may be
treated as the actual address of that person for all purposes connected
with the proceedings in question.
(2) The address for service shall be deemed to be address of the applicant
or the opponent and all documents in relation to the application or notice
of opposition may be served by leaving them at or sending them by registered
post to the address for service of the applicant or opponent, as the case
may be.
127. Trade mark
agents.- (1) Where by or under this Ordinance any act, other than
the making of an affidavit, is required to be done by any person, the
act may, subject to such conditions as may be prescribed, be done, in
lieu of by that person himself, by duly authorised agent whose is registered
with the Trade Marks Registry in the prescribed manner as a trade mark
agent.
(2) The Federal Government may, by notification in the official Gazette,
make rules for providing qualifications, registration and conduct of trade
mark agents.
128. Fees.-(1)
There shall be paid in respect of applications and registration and other
matters under this Ordinance such fees as may be prescribed.
(2) Provisions may be made by rules for-
(a) the payment of a single fee in respect of two or more
matters; and
(b) the circumstances if any in which a fee may be repaid
or remitted.
129. The Federal
Government and a Provincial Government to be bound.- The provisions
of this Ordinance shall be binding on the Federal Government and a Provincial
Government.
130. Power to
make reciprocal arrangements with any other Government.- Without prejudice
to the provisions of Articles 3 and 4 of the Agreement on Trade Related
Aspects of Intellectual Property Rights, 1994, the Federal Government
may, by notification in the official Gazette, enter into reciprocal arrangements
with other Governments for the purpose of this Ordinance.
131. Power of
High Court to make rules.- The High Court may make rules consistent
with the provisions of this Ordinance as to the conduct and procedure
of all proceedings under this Ordinance before it.
132. Power of
the Federal Government to make rules.- (1) The Federal Government
may, subject to the condition of previous publication, by notification
in the official Gazette, make rules for carrying out the purposes of this
Ordinance.
(2) In particular and without prejudice to the generality of the foregoing
power, such rules may provide for all or any of the following matters,
namely:-
(i) the matters
to be included in the Register under sub-section (1) of section
10;
(ii) conditions and
restrictions subject to which the Register shall be open to the inspection
of the public under sub-section (5) of section 10;
(iii) classification
of goods and services in accordance with the international classification
of goods and services under sub-section (1) of section 12;
(iv) publication
of alphabetical index of classification of goods and services under sub-section
(2) of section 12;
(v) the manner in
which the Registrar may notify a word as an international non-proprietary
name under section 16;
(vi) the manner of making
an application for registration of a trade mark under sub-section (1)
of section 22;
(vii) the manner
and period for making a Convention application under clause (b) of sub-section
(2) of section 25;
(viii) the matters
related to the manner of claiming a right to priority on the basis of
a Convention application under sub-section (7) of section 25;
(ix) conditions for
grant of temporary protection in respect of goods or services during exhibition
under sub-section (4) of section 26;
(x) the manner of
giving notice to the Registrar under sub-section (2) of section 28 for
opposing an application for registration advertised or re-advertised under
sub-section (1) of section 28 and the fee payable for such application,
making an application for extension of time under sub-section (2) of section
28 and the fee payable for such application;
(xi) the manner
of serving a copy of the notice on the applicant, an application for extension
of time under sub-section (4) of section 28 and the fee payable for such
application, sending a counter-statement of the grounds and fee payable
for such application;
(xii) the manner of serving
a copy of the counter-statement on the opponent, an application for extension
of time under sub-section (5) of section 28 and the fee payable for such
application, sending a rejoinder to the Registrar;
(xiii) the manner
of sending a copy of the rejoinder to the applicant under sub-section
(6) of section 28;
(xiv) the manner
of submitting any evidence under sub-section (7) of section 28 and time
limit for submitting such evidence;
(xv) the manner of
permitting correction of any error in, or any amendment of, a notice of
opposition, a counter-statement, or a rejoinder under sub-section (9)
of section 28;
(xvi) the manner
of notifying the Registrar under sub-clause (i) of clause (b) of
section 30;
(xvii) the time
within which an application shall be registered under sub-section (1)
of section 33;
(xviii) the fee payable
and the time within which such fee is payable under sub-section (2) of
section 33;
(xix) the manner
of publication of the registration and the form of certificate of registration
under sub-section (4) of section 33;
(xx) the manner
of giving notice under sub-section (5) of section 33;
(xxi) the manner of informing
the proprietor of a registered trade mark of the date of expiry within
which the registration may be renewed under sub-section (2) of section
35;
(xxii) the further
period in which additional renewal fee shall be paid under sub-section
(3) of section 35;
(xxiii) the manner
and conditions for restoration of the registration which has been removed
from the Register under sub-section (6) of section 35;
(xxiv) the matters
related to the publication of alteration and the making of objections
by any person claiming to be affected by it under sub-section (3) of section
37;
(xxv) the matters
related to manner and effect of a surrender, and for protecting the interests
of other persons having a right in the registered trade mark under sub-section
(2) of section 38;
(xxvi) the time period
within which the applicant, by notice in writing to the Collector of Customs,
consents to the release of the goods under clause (a) of sub-section (2)
of section 59;
(xxvii) the particulars
of the transaction which are to be entered in the Register under sub-sections
(1) and (3) of section 70;
(xxviii) the matters
specified in sub-sections (4) and(5) of section 70;
(xxix) the manner
of making application and the fee payable for such application under sub-section
(4) of section 72;
(xxx) the classes
of goods under section 93;
(xxxi) the conditions and
restrictions subject to which registration of letters or numerals, or
any combination thereof in respect of textile goods may be allowed under
sub-section (2) of section 94;
(xxxii) the manner
of constituting one or more Advisory Committees under sub-section (1)
of section 95, and matters related to the place of meeting and conduct
of business of such Committees under sub-section (3) of that section;
(xxxiii) the manner
of making an application under sub-section (4) of section 96;
(xxxiv) the matters
relating to empowering the Registrar to do such things as he considers
necessary to implement any amended or substituted classification of goods
or services for the purposes of the registration of trade marks under
sub-section (1) of section 97;
(xxxv) the time within
which a proposal for amendment could be made under clause (a) of sub-section
(4) of section 97;
(xxxvi) the manner
of opposition under sub-section (5) of section 97;
(xxxvii) the manner
of notification of the forms and any directions of the Registrar with
respect to their use under sub-section (2) of
section 108;
(xxxviii) the restrictions
imposed, manner of making application and fee payable under sub-section
(1) of section 109;
(xxxix) the cases and extent
to which application for registration of a trade mark, documents or information
constituting or relating to the application may be published by the Registrar
or communicated by him to any person under sub-section (3) of section
109;
(xl) the matters
related to empowering the Registrar for the purposes of sub-section (1)
of section 110;
(xli) the matters
related to empowering the Registrar to require a party to proceedings
before him to give security for costs, in relation to those proceedings
or to proceedings on appeal, and as to the consequences if security is
not given under sub-section (3) of section 110;
(xlii) the period
within which an appeal from any decision of the Registrar under this Ordinance
or rules made thereunder may lie to the High Court having jurisdiction
under sub-section (1) of section 114;
(xliii) the manner
of giving notice under sub-section (2) of section 114;
(xliv) the conditions under
which documents listed in sub-section (1) of section 121 may be open to
public inspection under the said sub-section;
(xlv) the fee payable
for obtaining a certified copy under sub-section (2) of section 121;
(xlvi) the manner of making
an application and the fee payable therefor under sub-section (1) of section
123;
(xlvii) the conditions
under which any act other than the making of an affidavit may be done
by duly authorized agent under sub-section (1) of section 127;
(xlviii) the matters related
to qualifications, registration and conduct of trade mark agents under
sub-section (2) of section 127;
(xlix) the fees payable
for making applications, registrations and other matters under sub-section
(1) of section 128;
(l) the matters related
to the payment of a single fee in respect of two or more matters and the
circumstances, if any, in which a fee may be repaid or remitted under
sub-section (2) of section 128;
(li) the making
of further requirements with which the regulations may have to comply
under sub-para (2) of para 5 of the First Schedule;
(lii) the making
of further requirements with which the regulations may have to comply
under sub-para (2) of para 6 of the Second Schedule;
(liii) the procedure
for identification and classification of computer related services associated
with Internet under sub-para (3) of para 2 of the Third Schedule;
(liv) the making
of procedure for putting entries under sub-para (2) of para 2, and sub-para
(2) of para 9 of the Fourth Schedule;
(lv) the manner of
making application and the fee payable for such application under sub-para
(2) of para 11 of the Fourth Schedule;
(lvi) the entry
of additional information in the Register;
(lvii) the regulation
of awarding of costs by the Registrar under this Ordinance;
(lviii) the matters
related to establishment of branches of the Trade Marks Registry;
(lix) the manner in which,
in proceedings under this Ordinance before the Registrar or the Federal
Government, application shall be made, notices given and matters advertised;
(lx) the matters
related to times or periods required by this Ordinance to be advertised;
(lxi) any matters generally
related to business of the Trade Marks Registry or its branches and for
regulating all things by this Ordinance placed under the discretion of
the Registrar or the Federal Government; and
(lxii) any other
matter which is required to be, or may be prescribed.
133. Transitional.-
The provisions of the Fourth Schedule shall have effect with respect to
transitional matters, including the treatment of trade marks registered
under the Trade Marks Act, 1940 (V of 1940), and applications for registration
and other proceedings pending under that Act, on the commencement of this
Ordinance.
134. Repeal
and savings.- (1) The Trade Marks Act,
1940 (V of 1940), is hereby repealed.
(2) The Trade Marks Registry and its branches existing at the commencement
of this Ordinance shall be continued as if they had been established under
this Ordinance.
(3) The Registrar, other officers and any other person appointed to the
Trade Marks Registry established under the Trade Marks Act, 1940 (V of
1940), shall be deemed to have been appointed to the Trade Marks
Registry established under this Ordinance.
THE FIRST SCHEDULE
[See section
82(2)]
COLLECTIVE
MARKS
1. General.-
The provisions of this Ordinance shall apply to collective marks subject
to the provisions contained in this Schedule.
2. Signs of
which a collective mark may consist.- In relation to a collective
mark the reference in clause (xlviii) of section 2 to distinguish goods
or services of one undertaking form those of other undertakings shall
be construed as a reference to distinguishing goods or services of members
of the association which is the proprietor of the mark from those of other
undertakings.
3. Indication
of geographical origin.- (1) Notwithstanding the provisions
of clause (c) of sub-section (1) of section 14, a collective mark may
be registered which consist of marks or indications which may serve, in
trade, to distinguish the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the
use of the marks or indications in accordance with honest practices in
industrial or commercial matters, in particular, by a person who is entitled
to use a geographical name.
4. Collective
mark not to be misleading as to character or significance.- (1) A
collective mark shall not be registered if the public is liable to be
mislead as regards the character or significance of the mark, in particular,
if it is likely to be taken to be something other than a collective mark.
(2) The Registrar may accordingly require that a mark in respect of which
application is made for registration include some indication that it is
a collective mark.
(3) Notwithstanding the provisions of sub-section (7) of section 27, an
application may be amended so as to comply with any such requirement.
5. Regulations
governing use of collective mark.- (1) An application for registration
of a collective mark may be filed with the Registrar along with
regulations governing the use of the mark.
(2) The regulations referred to in sub-para (1) shall specify the persons
authorized to use the mark, the conditions of membership of the association
and, where they exist, the conditions of the use of the mark, including
any sanctions against misuse.
(3) Any further requirements with which the regulations referred to in
sub-para (1) shall have to comply may be imposed as may be prescribed.
6. Approval
of regulations by the Registrar.- (1) A collective mark shall not
be registered unless the regulations governing the use of the mark-
(a) comply with the requirements of para (2) of para 5 and any further
requirements as may be prescribed; and
(b) are not contrary to public policy or to accepted principles of morality.
(2) Before the end of the prescribed period after the date of the publication
for registration of a collective mark, the applicant shall file the regulations
with the Registrar and pay the prescribed fee failing which the application
shall be deemed to have been withdrawn.
7. Procedure
of acceptance or refusal of application.- (1) The Registrar shall
consider whether the requirements specified in sub-para (1) of para
6 are duly met.
(2) If it appears to the Registrar that such requirements are not met,
he shall inform the applicant and give him an opportunity, within such
period as the Registrar may specify, to make representation or to file
amended regulations.
(3) If the applicant fails to satisfy the Registrar that such requirements
are met, or to file regulations amended so as to meet them, or fails to
respond before the end of the specified period, the Registrar shall refuse
the application.
(4) If it appears to the Registrar that such requirements, and the other
requirements for registration, are met he shall accept the application
and shall proceed in accordance with section 28.
8. Regulations
to be published.- (1) The regulations governing the use of a
collective mark shall be published and notice of opposition may
be given, and observation may be made, relating to the matters specified
in sub-para (1) of para 6.
(2) The provisions of sub-para (1) shall be in addition to any other grounds
on which the application may be opposed or observations made.
9. Regulations
to be open to inspection.- The regulations governing the use of a
registered collective mark shall be open to public inspection in the same
way as the Register.
10. Amendment
of regulations.- (1) An amendment of the regulations governing the
use of a registered collective mark shall not be effective
unless and until the amended regulations are filed with the Registrar
and accepted by him.
(2) Before accepting any amended regulations the Registrar may, in any
case where it appears to him expedient to do so, cause them to be published.
(3) If the Registrar does so, a notice of opposition may be given, and
observations may be made, relating to the matters specified in sub-para
(1) of para 6.
11. Infringement
of rights of authorized user.- The following provisions shall
apply in relation to an authorized user of a registered collective mark
as in relation to a licensee of a trade mark, namely:-
(a) sub-section (7) of section 40;
(b) sub-section (2) of section 51; and
(c) section 53.
12. Infringement
of a registered collective mark.- (1) The provisions of this para
shall have effect as regards the rights of an authorized user in relation
to infringement of a registered collective mark.
(2) An authorized user shall be entitled, subject to any agreement to
the contrary between him and the proprietor, to call on the proprietor
to take infringement proceedings in respect of any matter which affect
his interests.
(3) If the proprietor-
(a) refuses to do so; or
(b) fails to do so within two months after being called upon,
the authorized
user may bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought under this para, the authorized
user may not, without the leave of the Court, proceed with the action
unless the proprietor is either joined as a plaintiff or added as a defendant.
(5) The provisions of para (4) shall not affect the granting of interlocutory
relief on an application by an authorised user alone.
(6) A proprietor who is added as a defendant as provided in sub-para (4)
shall not be made liable for any costs in the action unless he takes part
in the proceedings.
(7) In infringement proceedings brought by the proprietor of a registered
collective mark, any loss suffered or likely to be suffered by authorised
user shall be taken into account, and the Court may give such directions
as it thinks fit as to the extent to which the plaintiff shall hold the
proceeds of any pecuniary remedy on behalf of such users.
13. Additional
grounds for revocation of registration.- Apart from the grounds of
revocation provided for in section 73, the registration of a collective
mark may be revoked on any of the following grounds, namely:-
(a) that
the manner in which the mark has been used by the proprietor has caused
it to become liable to mislead the public in the manner referred to in
sub-para (1) of para 4;
(b) that
the proprietor has failed to observe, or to secure the observance of,
the regulations governing the use of the mark; or
(c) that
an amendment of the regulations governing the use of mark has been made
so that such regulations-
(i)
no longer comply with the requirement of sub-para (2) of para 5,
and any further conditions as may prescribed; or
(ii)
are contrary to public policy or to accepted principles of morality.
14. Additional
grounds for invalidity of registration.- Apart from the grounds of
invalidity provided for in section 80, the registration of a collective
mark may be declared invalid on the ground that the mark was registered
in breach of the provisions of sub-para (1) of para 4, or sub-para (1)
of para 6.
THE SECOND SCHEDULE
[See section
83 (2) ]
CERTIFICATION
MARKS
1. General.-
The provisions of this Ordinance shall apply to certification marks subject
to the provisions contained in this Schedule.
2. Signs of
which certification mark may consist.- In relation to a certification
mark the reference in clause (xlviii) of section 2 to distinguish
goods or services of one undertaking from those of other undertakings
shall be construed as a reference to distinguishing goods or services
which are certified from those which are not.
3. Indication
of geographical origin.- (1) Notwithstanding the provisions of clause
(c) of sub-section (1) of section 14, a certification mark may be registered
which consist of signs or indications which may serve, in trade, to designate
the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the
use of the signs or indications in accordance with honest practices in
industrial or commercial matters, in particular, by a person who is entitled
to use a geographical name.
4. Nature
of proprietor's business.- A certification mark shall not be
registered if the proprietor carries on a business involving the supply
of goods or services of the kind certified.
5. Certification
mark not to be misleading as to character or significance.- (1) A
certification mark shall not be registered if the public is liable to
be misled as regards the character or significance of the mark, in particular,
if it is likely to be taken to be something other than a certification
mark.
(2) The Registrar may, accordingly, require that a mark in respect of
which application has been made for registration include some indication
that it is a certification mark.
(3) Notwithstanding the provisions of sub-section (7) of section
27, an application may be amended so as to comply with any such requirement.
6. Regulations
governing use of certification mark.- (1) An application for registration
of a certification mark may be filed with the Registrar along with regulations
governing the use of the mark.
(2) The regulations referred to in sub-para (1) shall indicate who shall
be authorized to use the certification mark, the characteristics to be
certified by the mark, how the certifying body shall test those characteristics
and supervise the use of the mark, the fee, if any, to be paid in connection
with the operation of the mark and the procedures for resolving disputes.
(3) Any further requirements with which the regulations referred
to in sub-para (1) shall have to comply may be imposed as may be
prescribed.
7. Approval
of regulations by the Registrar.- (1) A certification mark shall not
be registered unless-
(a)
the regulations governing the use of the mark-
(i)
comply with the requirements of sub-para (2) of para 6, and any
further requirements, as may be prescribed; and
(ii)
are not contrary to public policy or to accepted principles of morality;
and
(b)
the applicant is competent to certify the goods or services for which
the mark is to be registered.
(2) Before the end of the prescribed period after the date of the application
for registration of a certification mark, the applicant shall file the
regulations with the Registrar and pay the prescribed fee, failing which
the application shall be deemed to be withdrawn.
8. Procedure
for acceptance or refusal of application.- (1) The Registrar shall
consider whether the requirements specified in sub-para (1) of para
7 are met.
(2) If it appears to the Registrar that such requirements are not met,
he shall inform the applicant and give him an opportunity, within such
period as the Registrar may specify, to make representation or to file
amended regulations.
(3) If the applicant fails to satisfy the Registrar that such requirements
are met, or to file regulations amended so as to meet them, or fails to
respond before the end of the specified period, the Registrar shall refuse
the application.
(4) If it appears to the Registrar that such requirements, and the other
requirements for registration, are met, he shall accept the application
and shall proceed in accordance with section 28.
9. Regulations
to be published.- The regulations governing the use of a registered
certification mark shall be published and notice of opposition may be
given, and observations may be made, relating to the matters specified
in sub-para (1) of para 7, in addition to any other grounds on which
the application may be opposed or observations made.
10. Regulations
to be open to inspection.- The regulations governing the use of a
registered certification mark shall be open to public inspection in the
same way as the Register.
11. Amendment
of regulations.- (1) An amendment of the regulations governing the
use of a registered certification mark shall not be effective unless
and until the amended regulations are filed with the Registrar and accepted
by him.
(2) Before accepting any amended regulations the Registrar may, in any
case where it appears to him expedient to do so, cause them to be published.
(3) If he does so, a notice of opposition may be given, and observations
may be made, relating to the matters specified in sub-para (1) of para
7.
12. Consent
to assignment of registered certification mark.- The assignment or
other transmission of a registered certification mark shall not be effective
without the consent of the Registrar.
13. Infringement
of rights of authorised user.- The following provisions shall apply
in relation to an authorised user of a registered certification mark as
in relation to a licensee of a trade mark, namely:-
(a) sub-section (7) of section 40;
(b) sub-section (2) of section 51; and
(c) section 53.
14. Court to
take into account loss suffered by authorised users.- In infringement
proceedings brought by the proprietor of the registered certification
mark any loss suffered or likely to be suffered by authorised user shall
be taken into account and the Court may give such directions as it thinks
fit as to the extent to which the plaintiff shall hold the proceeds of
any pecuniary remedy on behalf of such users.
15. Additional
grounds for revocation of registration.- Apart from the grounds of
revocation provided for in section 73, the registration of a certification
mark may be revoked on any of the following grounds, namely:-
(a)
that the proprietor has begun to carry on such a business as is specified
in para 4;
(b) that the manner in which the mark has been used by the
proprietor has caused it to become liable to mislead the public in the
manner referred to in sub-para (1) of para 5;
(c) that the proprietor has failed to observe, or to secure
the observance of, the regulations governing the use of the mark;
(d) that an amendment of the regulations has been made so
that the regulations-
(i) no longer comply with the requirements of sub-para (2)
of para 6, and any further conditions as may be prescribed; or
(ii) are contrary to public policy or to accepted principles of
morality; or
(e) that the proprietor is no longer competent to certify
the goods or services for which the mark is registered.
16. Additional
grounds for invalidity of registration.- Apart from the grounds of
invalidity provided for in section 80, the registration of a certification
mark may be declared invalid on the ground that the mark was registered
in breach of the provisions of para 4, sub-para (1) of para 5 or sub-para
(1) of para 7.
THE THIRD SCHEDULE
[See section
84 (2) ]
DOMAIN NAMES
1. General.-
The provisions of this Ordinance shall apply to domain names subject to
the provisions contained in this Schedule.
2. Requirements
for registration.-(1) A domain name if used as a source identifier
may be registered as a trade mark in respect of relevant goods or services.
(2) The applicant for registration of domain name shall show that he offers
goods or services via Internet using the domain name. Such evidence shall
be in the form of specimen showing use of the domain name as a source
identifier.
Explanation. ‑ For the purposes of this para, use of
a domain name shall be taken as source identifier if it is used on Internet
to distinguish goods or services of one undertaking from the other provided
that use of a domain name as a mere directional reference, similar to
use of a telephone number or business address shall not be taken as use
of the domain name as a source identifier.
(3) Provisions may be made by rules for further identification and classification
of computer related services associated with Internet.
3. Indication
of geographical origin.- (1) Notwithstanding the provisions of clause
(c) of sub-section (1) of section 14, a domain name may be registered
which consist of marks or indications which may serve, in trade, to distinguish
the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the
use of the marks or indications in accordance with honest practices in
industrial or commercial matters, in particular, by a person who is entitle
to use a geographical name.
4. Domain name
not to be misleading as to character or significance.- (1) A domain
name shall not be registered if the public is liable to be mislead as
regards the character or significance of the mark, in particular, if it
is likely to be taken to be something other than a domain name.
(2) The Registrar may, accordingly, require that a mark in respect of
which application has been made for registration include some indication
that it is a domain name.
(3) Notwithstanding the provisions of sub-section (7) of section
27, an application may be amended so as to comply with any such requirement.
5. Procedure
for acceptance, opposition and registration.- The provisions of this
Ordinance for acceptance, registration and opposition as they apply
to trade marks shall also apply to the domain names.
6. Term of registration
and renewal.- Notwithstanding the provisions of sections 32
and 33, a domain name shall be registered for a period of five years
from the date of registration and may be renewed for further periods of
like term, as long as, the domain name is in actual use on Internet.
7. Provisions
of section 73 not to apply to domain names.- The provisions
of section 73 shall not apply to domain names.
8. Rules.-
Provisions may be made by rules for further identification and classification
of computer related services associated with Internet.
THE FOURTH SCHEDULE
(See section
134)
TRANSITIONAL
PROVISIONS
1. Introductory.-(1)
In this Schedule,-
(a) "existing registered mark" means a trade mark
or certification mark registered under the Trade Marks Act, 1940 (V of
1940), immediately before the commencement of this Ordinance;
(b) "1940 Act" means the Trade Marks Act, 1940 (V
of 1940) ; and
(c) "old law" means the 1940 Act and any law for
the time being in force, applying to existing registered marks immediately
before the commencement of this Ordinance.
(2) For the purposes of this Schedule,-
(a) an application shall be treated as pending on the commencement
of this Ordinance if it was made but not finally determined before such
commencement; and
(b) the date on which it was made shall be taken to be the
date of filing under the 1940 Act.
2. Existing
registered trade mark.- (1) The existing registered marks shall
be transferred, on the commencement of this Ordinance, to the Register,
and shall have effect, subject to the provisions of this Schedule, as
if registered under this Ordinance.
(2) The existing registered marks registered as a series under sub-section
(3) of section 11of the 1940 Act shall be similarly registered in the
new Register.
(3) Provisions may be made by rules for putting such entries in the same
form as is required for entries under this Ordinance.
(4) In any other case notes indicating that the existing registered marks
are associated with other marks shall cease to have effect on the commencement
of this Ordinance.
3. Disclaimer,
limitations and conditions.- A disclaimer, limitation or condition
entered on the register kept under the 1940 Act in relation to an existing
registered mark immediately before the commencement of this Ordinance
shall be transferred to the Register and have effect as if entered on
the Register in pursuance of section 15.
4. Effect of
infringement.- (1) The provisions of sections 39 to 42 shall
apply in relation to an existing registered mark as from the commencement
of this Ordinance and the provisions of section 46 shall apply in
relation to infringement of an existing registered mark committed after
the commencement of this Ordinance, subject to sub-para (3).
(2) The old law shall continue to apply in relation to infringement committed
before the commencement of this Ordinance.
(3) It shall not be an infringement of-
(a) an existing registered mark; or
(b) a registered trade mark of which the distinctive elements
are the same or substantially the same as those of an existing registered
mark and which is registered for the same goods or services, to continue
after the commencement of this Ordinance any use which did not amount
to infringement of the existing registered mark under the old law.
5. Infringing
goods, material and articles.- The provisions of section 48 shall
apply to infringing goods, material or articles made before or after
the commencement of this Ordinance.
6. Rights
and remedies of licensee or authorised user.- (1) The provisions
of section 75 shall apply to license granted before the commencement of
this Ordinance, but only in relation to any infringement committed after
such commencement.
(2) The provisions of para 14 of the Second Schedule shall apply
only in relation to infringement committed after the commencement of this
Ordinance.
7. Co-ownership
of registered trade mark.- The provisions of section 24 shall
apply as from the commencement of this Ordinance to an existing registered
trade mark of which two or more persons were, immediately before such
commencement, registered as joint proprietor:
Provided that so
long as the relations between the joint proprietors remain such as are
described in sub-section (2) of section 17 of the 1940 Act, there
shall be taken to be an agreement to exclude the operation of sub-sections
(2) and (3) of section 24.
8. Assignment
of registered trade mark.- (1) The provisions of section 67
shall apply to transactions and events occurring after the commencement
of this Ordinance in relation to an existing registered trade mark, and
the old law shall continue to apply in relation to transactions and events
occurring before such commencement.
(2) The existing entries under section 35 of the 1940 Act shall be transferred
on the commencement of this Ordinance to the Register, and shall have
effect as if made under section 70.
(3) An application for registration under section 35 of the 1940 Act,
which is pending before the Registrar on the commencement of this Ordinance
shall be treated as an application for registration under section 70 and
shall proceed accordingly:
Provided that the
Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(4) An application for registration under section 35 of the 1940 Act,
which has been determined by the Registrar but not finally determined
before the commencement of this Ordinance shall be dealt with under the
old law, and the provisions of sub-para (2) shall apply in relation to
any resulting entry in the Register.
(5) Whether before the commencement of this Ordinance, a person has become
entitled by assignment or transmission to an existing registered trade
mark but has not registered his title, any application for registration
after such commencement shall be made under section 70.
(6) In cases to which the provisions of sub-para (3) or (5) applies,
the provisions of sub-section (2) of section 35 of the 1940 Act
shall continue to apply, and the provisions of sub-section (3) of
section 68 shall not apply, as regards the consequences of failing to
register.
9. Licensing
of registered trade mark.- (1) The provisions of section 73 and sub-section
(2) of section 74 shall apply only in relation to licences granted after
the commencement of this Ordinance, and the old law shall continue
to apply in relation to licences granted to authorised users before the
commencement of this Ordinance.
(2) The existing entries under section 39 of the 1940 Act shall be transferred
on the commencement of this Ordinance to the Register, and shall have
effect as if made under section 70.
(3) Provisions may be made by rules for putting entries referred to in
sub-para (2) in the same form as is requires for entries made under this
Ordinance.
(4) An application for registration as a registered user which is pending
before the Registrar on the commencement of this Ordinance shall be treated
as an application for registration of a licence under sub-section (1)
of section 70 and shall proceed accordingly:
Provided that the
Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(5) An application for registration as a registered user which has
been determined by the Registrar but not finally determined before the
commencement of this Ordinance shall be dealt with under the old law,
and the provisions of sub-para (2) shall apply in relation to any resulting
entry in the Register.
(6) Any proceedings pending on the commencement of this Ordinance under
section 42 of the 1940 Act shall be dealt with under the old law and any
necessary alteration shall be made to the Register.
10. Pending
applications for registration.- (1) An application for registration
of a mark under the 1940 Act which is advertised under sub-section (1)
of section 15, or the proviso to that sub-section of the 1940 Act,
or an order has been made for its advertisement before the commencement
of this Ordinance shall be dealt with under the old law, subject as provided
in the following paras, and if registered, the mark shall be treated for
the purpose of this Schedule as an existing registered trade mark.
(2) The provisions of section 12 of the 1940 Act shall be disregarded
in dealing, after the commencement of this Ordinance, with an application
for registration.
11. Conversion
of pending application.- (1) In the case of pending application for
registration which has not been advertised under sub-section (1) of section
15, or the proviso to that sub-section of the 1940 Act, neither an order
has been made for such advertisement before the commencement of this Ordinance,
the applicant may give notice to the Registrar claiming to have the registrability
of the mark determined in accordance with the provisions of this Ordinance.
(2) The notice under sub-para (1) shall be in the prescribed form, be
accompanied by the appropriate fee and be given no later than twelve months
after the commencement of this Ordinance.
(3) The notice under sub-para (1), duly given shall be irrevocable and
have the effect that the application shall be treated as if made immediately
after the commencement of this Ordinance.
12. Trade marks
registered accordingly to old classification.- The Registrar may exercise
his powers to secure that any existing registered trade marks which do
not conform to the system of classification prescribed under section 12
are brought in conformity with that system.
13. Claim to
priority from overseas application.- The provisions of section 25
shall apply to an application for registration under this Ordinance made
after the commencement of this Ordinance notwithstanding that the Convention
application was made before such commencement.
14. Duration
and renewal of registration .-(1) The provisions of sub-section
(1) of section 32 shall apply in relation to the registration of a mark
in pursuance of an application made after the commencement of this Ordinance,
and the old law shall apply in any other case.
(2) The provisions of sub-section (2) of section 32 and section 33 shall
apply where the renewal falls due on or after the commencement of this
Ordinance, and the old law shall continue to apply in any other case.
(3) In either case referred to in sub-para (2) or (3), it shall be immaterial
when the fee is paid.
15. Pending
application for alteration of registered trade mark.- An application
under section 48 of the 1940 Act, which is pending on the commencement
of this Ordinance shall be dealt with under the old law and any necessary
alteration shall be made in the Register.
16. Revocation
for non-use.- (1) An application under section 37 of the 1940 Act,
which is pending on the commencement of this Ordinance shall be dealt
with under the old law and any necessary alteration shall be made to the
Register.
(2) An application made under clause (a) or (b) of sub-section (1) of
section 73 may be made in relation to an existing registered mark at any
time after the commencement of this Ordinance:
Provided that no
such application for the revocation of the registration of an existing
registered mark under section 38 of the 1940 Act may be made until more
than five years after the commencement of this Ordinance.
17. Application
for rectification.- (1) An application under section 46 or 47 of 1940
Act, which is pending on the commencement of this Act shall be dealt with
under the old law and any necessary alteration shall be made to
the Register.
(2) For the purpose of proceedings under section 80 as it applies in relation
to an existing registered mark, the provisions of this Ordinance shall
be deemed to have been in force at all material times:
Provided that no
objection to the validity of the registration of an existing registered
mark may be taken on the grounds specified in sub-section (3) of
section 17 in conflict with earlier mark registered for different
goods.
18. Regulations
as to use of certification mark.- (1) Regulations governing the use
of an existing registered certification mark deposited at the Trade Marks
Registry under the 1940 Act shall be treated after the commencement of
this Ordinance as if filed under para 6 of the Second Schedule.
(2) Any request for amendment of the regulations which was pending on
the commencement of this Ordinance shall be dealt with under the old law.
MUHAMMAD RAFIQ
TARAR,
President.
