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Also available in MS Word format (500K) An act to make new provisions, 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. WHEREAS it is expedient to make new provisions, 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: It is hereby enacted as follows:- CHAPTER I PRELIMINARY Short title, extent and commencement. 1. (1) This Act may be called the Trade Marks Act, 1998. (2) It extends to the whole of Pakistan. (3) It shall come into force with immediate effect. Definitions and interpretation. 2. (1) In this Act, unless there is anything repugnant in the subject or context,- (a) "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; (b) "assignment" in relation to a trade mark, means an assignment in writing by act of the parties concerned; (c) "authorised 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; (d) "certification mark" shall have a meaning given by sub-section (1) of section 81; (e) "collective mark" shall have a meaning given by sub-section (1) of section 80; (f) "comparative advertisement" means any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor; (g) "Convention" means the Paris Convention; (h) "Convention application" means any application as defined in section 23(1)(a), (i) "Convention country" shall have a meaning given by section 83(1)(b); (j) "date of filing" means,- (i) in relation to an application of a trade mark other than an application referred to in another clause of this definition, the day on which the application is filed pursuant to sub-section (1) of section 21; or (ii) 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 30) was filed; or (iii) in relation to an application to provide temporary protection during exhibition, the day referred to in sub-section (1) of section 24; or (iv) in relation to a Conventional application, the day referred to in section 23(2)(a); (k) "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 31. (l) "deceptively similar" in relation to a trade mark means so near resemblance between it and another trade mark that it is likely to deceive or cause confusion; (m) "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; (n) "District Court" means the Court of the District Judge and includes the Court of an Additional District Judge or an Additional Judge or a Joint Judge; (o) "divisional application" shall have the meaning given by sub-section (1) of section 30; (p) "Domain name" shall have the meaning given by sub-section (1) of section 82; (q) "earlier trade mark" shall have the meaning given by sub-section (1) of section 16. (r) "false trade description" means,- (i) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied; or (ii) 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; or (iii) any mark or arrangement or combination thereof when applied,- (a) 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 (b) 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; or (iv) any false name or initials of a person applied to goods or services in such manner as if such name or initials were a trade description in any case where the name or initials,- (a) is or are not a trade mark or part of a trade mark;
(b) 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 authorised the use of such name or initials; and (c) 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 Act; or (v) 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; (s) "geographical indication" in relation to goods originating in a particular country or in a region or locality of that country, means a mark recognised in that country as a mark indicating that the goods: (i) originated in that country, region or locality; and (ii) have a quality, reputation or other characteristic attributable to their geographical region; (t) "goods" means any thing which is subject of trade, commerce or manufacture; (u) "Journal" means the Trade Marks Journal published under the authority of the Registrar; (v) "licensee" means a person using a registered trade mark by virtue of a transaction; (w) "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; (x) "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; (y) "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 behaviors or which, for those reasons, injures or is likely yo injure a competitor. (z) "name" includes any abbreviation of name; (aa) "notify" means to notify in the Journal; (bb) "opponent", in relation to the registration of a trade mark, means the person who has filed (under sub-section (2) of section 26) a notice of opposition to the registration of the trade mark; (cc) "packaging" includes, in particular, any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, band, reel, frame, capsule, cap, lid, stopper and cork; (dd) "permitted use", in relation to a trade mark, means the use of the trade mark by an authorised user; (ee) "predecessor in title", in relation to a person who claims to be the proprietor of a trade mark means,- (i) 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 (ii) if clause (i) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first-mentioned person; (ff) "prescribed" means prescribed by rules made, in relation to proceedings before a High Court by such High Court, and in other cases, by the Federal Government; (gg) "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; (hh) "register" means the Register of Trade marks referred to in sub-section 1 of section 6; (ii) "registered" (with its grammatical variations) means registered under this Act or registered under the Trade Marks Act, 1940; (jj) "registered trade mark" means a trade mark which is actually on the register; (kk) "seized goods" means goods seized under section 52; (ll) "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 tele-communication), 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; (mm) "similar goods" shall include goods which are of the same description; (nn) "similar services" shall include services which are of the same description; (oo) "the Paris Convention" means the Paris Convention for the Protection of Industrial Property dated March 20th., 1883, as revised or amended from time to time; (pp) "this Act" includes rule made under this Act; (qq) "trade description" means any description, statement or other indication, direct or indirect,- (i) as to the number, quantity, measure, gauge or weight of any goods; or (ii) or as to the standard of quality of any goods or services according to classification commonly used or recognised in the trade; or (iii) as to fitness for the purpose, strength, performance or behavior of any goods, being drugs or foods; or (iv) 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 (v) 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 (vi) as to the mode of manufacture or producing any goods or providing services; or (vii) as to the material of which any good are composed; or (viii) as to any goods being the subject of an existing patent, privilege or copyright, and includes,- (a) any description as 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) the description as to any imported goods contained in any bill of entry or shipping bill; (c) any other description which is likely to be misunderstood or mistaken for all or any of the said matters; (rr) "trade name" means names used by a person to denote his trade or calling, and includes firms' and companies' names; (ss) "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; (tt) "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; (uu) "tribunal" means the Registrar or, as the case may be, the Court before which the proceeding concerned is pending; (vv) "unfair competition" has the meaning given by section 65; (ww) "word" includes an abbreviation of a word. (2) For the purposes of this Act,- (i) goods and services are 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; (ii) 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; (iii) a trade mark shall be taken used in relation to goods or services if the trade mark is used,- (a) 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; or (b) in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; or (c) on a signboard or in an advertisement; or (d) in an invoice, list, catalogue, business letter, business paper, price list or other commercial document.
(iv) If,- the owner of a trade mark exercises quality control over goods or services: (i) dealt with or provided in the course of trade by another person; and (ii) in relation to which the trade mark is used, the other person is taken to use the trade mark in relation to the goods or services under the control of the owner; or if,- (i) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and (ii) the owner of the trade mark exercises financial control over the other person's relevant trading activities, the other person is taken to use the trade mark in relation to the goods or services under the control of the owner. (3) In this Act, 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 or 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 5; (d) to the Trade Marks Registry shall be construed as including a reference to any branch of the Trade Marks Registry. Use of trade mark. 3. (1) Any tribunal, having regard to the circumstances of a case, if thinks fit, may 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. (2) To avoid any doubts, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) 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 Act or any other law. (4) 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. Application of other laws not barred. 4. The provision of this Act shall be in addition to, and not in derogation of the provision of any other law for the time being in force. CHAPTER II THE REGISTER AND CONDITIONS FOR REGISTRATION Appointment of Registrar and other officers. 5. (1) For the purposes of this Act the Federal Government shall, by notification in the Official Gazette, appoint an officer who shall be called the Registrar of Trade Marks. The Registrar of Trade Marks, is in this Act, referred to as the Registrar. (2) The Federal Government shall appoint such other officers with such designations as it deems fit for performing under the superintendence, direction and review of the Registrar, any function of the Registrar, which the Registrar may from time to time authorise these officers to discharge. Power of Registrar to review, withdraw or transfer cases. 6. The Registrar may, by order in writing,- (a) review any function, matter, case or decision of any officer; or (a) 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. Trade Marks Registry and branches thereof. 7. (1) For the purpose of this Act, there shall be established a trade marks registry and the Trade Marks Registry established under the Trade Marks Act, 1940 shall remain the Trade Marks Registry under this Act. (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 for the Trade Marks Registry. The Register of Trade Marks. 8. (1) For the purposes of this Act, a record called the Register of Trade Marks (in this Act referred to as the register) 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, notification of assignment 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, will for the purposes of this Act, 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, however, if the register in whole, or any part of the register, 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, or any part of the register, is kept by using a computer, requirement of sub-section (5) is 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. Evidence of entries in register and things done by Registrar. 9. (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 under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act 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. Classification of goods and services. 10. (1) A trade mark may be registered in accordance with this Act in respect of,- (a) goods; or
(b) services; or (c) both goods and services; comprised in 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. Publication of alphabetical indexes of classification of goods and services. 11. (1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in section 10. (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 10. Absolute Grounds for refusal of registration. 12. (1) The following shall not be registered,- (a) marks which do not satisfy the requirements of clause (ss) of sub-section (1), 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; (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) above 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 part of a trade mark 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 of justice; or (b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan; or (c) be contrary to any law for the time being in force or to morality. (4) No trade mark nor part thereof shall be registered in respect of any goods or services the use of which goods or services is contrary to any law for the time being in force or is likely to hurt the religious susceptibilities of any class of citizens of Pakistan. (5) A trade mark shall not be registered if or to the extent that the application is made in bad faith. Limitation as to colour 13. (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. Use of names of chemical compounds barred. 14. 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 any thing in section 42, be deemed for the purposes of section 96 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require: Provided that 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. Relative Grounds for refusal of registration. 15. (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 protected. (2) A trade mark shall not be registered if 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 protected; 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 protected; 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 protected, 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 Pakistan is liable to be prevented,- (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) to (3) or clause (a) above, in particular by virtue of the law of copyright, design right or registered designs. A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an "earlier right" in relation to the trade mark. (5) Nothing in this section prevents 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 he 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. Meaning of "earlier trade mark" 16. (1) In this Act an "earlier trade mark" means,- (a) a registered trade mark or a Convention trade mark 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 24; or (c) a trade mark which, at the date of application for registration of the trade mark in questions, or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Convention as a well-known trade mark. (2) References in this Act 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 sub-section (1)(a) or (b), subject to its being so registered. (3) A trade mark shall within sub-sections (1)(a) or (b) whose registration expires shall 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. Raising of relative grounds in case of honest concurrent use. 17. (1) This section applies where on application for the registration of a trade mark it appears to the Registrar,- (a) that there is an earlier trade mark in relation to which the conditions set out in sub-section (1), (2) or (3) of section 15 obtain; or (b) that there is an earlier right in relation to which the condition set out in sub-section (4) of section 15 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. (2) In that case 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. (3) 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 section 10(2) of the Trade Marks Act, 1940. (4) Nothing in this section shall effect,- (a) the refusal of registration on the grounds mentioned in section 12; or (b) the making of an application for a declaration of invalidity under sub-section (2) of section 78. Registration of parts of trade marks and of trade marks as a series. 18. (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, 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; or (b) statements or representations as to number, price, quality, or names of places; or (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. Registration subject to disclaimer. 19. If a trade mark contains,- (a) any part not separately registered as a trade mark in the name of the proprietor, or for the separate registration of which no application has been made; or (b) 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 Application for Registration 20. (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, is 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 the above sub-sections (2) and (3). (5) The application shall be subject to the payment of the application fee as may be prescribed. Date of filing. 21. (1) The date of filing of an application for registration of a trade mark is the date on which documents containing everything required by section 20 are furnished to the Registrar. (2) References in this Act to the date of application for registration are to the date of filing of the application. Co-ownership of trade marks. 22. (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 and/or services with which all of them are connected in the course of trade, the persons may jointly apply for its registration under section 20. (2) Where a trade mark is registered in the name of two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark. (3) The following provisions 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 is 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 license 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 of the others, is either joined as a plaintiff or added as a defendant. A co-proprietor who is thus added as a defendant shall not be made liable for any costs in the action unless he takes part in the proceedings. Nothing in this sub-section affects the granting of interlocutory relief on the application of a single co-proprietor. (7) Nothing in this section affects the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such. Priority 23. (1) If: (a) a person has duly made an application for registration of a trade mark in one or more than one Convention country (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 (the "successor in title") of whom that person is a predecessor in title applies to the Registrar in prescribed manner for the registration of the same trade mark under this Act in respect of some or all of the same goods and/or services 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 Act, or within the prescribed period after filing the application under this Act, but before the application is accepted, has a right to priority for the registration of the trade mark. (2) If the application for registration under this Act is made within the prescribed priority period mentioned in sub-section (1),- (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 Pakistan in the period between that date and the date of the application under this Act. (3) 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. 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. (4) 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. The previous application may not thereafter serve as a basis for claiming a right of priority. (5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application. (6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently. The reference in sub section (1) to the applicants "successor in title" shall be construed accordingly. Applications to provide temporary protection during exhibition. 24. (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 recognised 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 prescribed. Examination of applications. 25. (1) The Registrar, as soon as practicable, shall examine whether an application for registration of a trade mark satisfies the requirements of this Act including any requirements imposed by rules. (2) For that purpose he 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 representations 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 the 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 however no amendment or correction shall be permitted in the application which substantially affect 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. Publication, opposition proceedings and observations. 26. (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. 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 lead 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. The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition. (3) 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. (4) If the applicant sends such counter-statement, 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. (5) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of the rejoinder to the applicant. (6) 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. (7) 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. (8) If the Registrar is of the opinion that it is fair and reasonable in all circumstances of the case to do so, he may, on request made in 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. Grounds of opposition. 27. (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 Act 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 is not the proprietor of the trade mark. (3) The registration of a trade mark may be opposed on the ground that the applicant does not intend,- (a) to use, or authorise the use of, the trade mark in Pakistan; or (b) to assign the trade mark to a body corporate for use by the body corporate in Pakistan; in relation to goods and/or services specified in the application. (4) The registration of a trade mark may be opposed on any of the following grounds: (a) that the application, or a document filed in support of the application, was amended contrary to this Act; or (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars; or (c) that the pre-acceptance advertisement of the application under exceptional circumstances is without sufficient cause or reason. (5) The registration of trade mark in respect of particular goods or services may be opposed on the ground 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; (6) 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 then 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. (7) Provisions of clause (b) of sub-section (2) of section 5 shall suspend if the earlier trade mark application is under opposition. Circumstances in which opposition may proceed in name of a person other than the person who filed the notice of opposition. 28. 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 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.
Withdrawal of application. 29.- The applicant may at any time withdraw his application or restrict the goods or services covered by the application. If the application has been advertised, the withdrawal or restriction shall also be published. Divisional applications, definition of. 30. (1) A person who has made an application (the "initial application") for registration of a trade mark in respect of certain goods and/or services may, in accordance with this section, make another application (the "divisional application"): (a) for the registration of a part only of the trade mark in respect of any or all those goods and/or services; or (b) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the initial application; (2) A divisional application for registration of a trade mark or a part of a trade mark may be made only if the initial application for registration of the trade mark is pending. (3) A divisional application shall proceed as an ordinary application made under section 20. Provided however a divisional application shall be taken to have been filed on the day on which the initial application was filed. Registration. 31. (1) Where an application has been accepted and,- (a) no notice of opposition is given within the period referred to in section 26(2); or (b) all opposition proceedings have been withdrawn or decided in favor of the applicant, the Registrar shall, within the period prescribed by rules, 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 that 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 Act 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. Duration and renewal of registration. 32. (1) A trade mark shall be registered for a period of ten years from the date of registration. (2) Registration may be renewed in accordance with section 33 for further periods of ten years. Renewal of Registration. 33. (1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of a renewal fee. (2) Provisions shall be made by the rules for the Registrar to 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. (3) A request for renewal must be made, and the renewal fee paid, before the expiry of the registration. Failing this, the request may be made and the fee paid within such further period (of not less than six months) as may be prescribed, in which case an additional renewal fee must 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 Pakistan. (6) If the registration is not renewed in accordance with the above provisions, the Registrar shall remove the trade mark from the register. Provisions may be made by rules for the restoration of 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. Effect of removal from register for failure to pay fee for renewal. 34. Where a trade mark has been removed from the register under this Act, 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. Alteration of registered trade mark. 35. (1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal. (2) Nevertheless, 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) Provisions shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it. Surrender of registered trade mark. 36. (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) Provisions may be made by rules,- (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 Rights conferred by registration. 37. (1) A registered trade mark is a personal property. (2) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in Pakistan without his consent. (3) Without prejudice to the rights of the proprietor of a registered trade mark to obtain any relief under any other laws of Pakistan, the proprietor also has the right to obtain relief under this Act if the trade mark is infringed. (4) References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor. (5) The rights of the proprietor have effect from the date of registration (which according to sub-section (3) of section 31 is the date of filing of the application for registration): Provided that no infringement proceedings may begin before the date on which the trade mark is in fact registered. (6) Rights conferred by registration of trade marks under this Act shall extent to trade marks registered under the Trade Marks Act, 1940. (7) The acts amounting to infringement of a registered trade mark, if done without the consent of the proprietor of the trade mark, are specified in section 38. Infringement of registered trade marks. 38. (1) A person infringes a registered trade mark if the 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 infringes a registered trade mark if the 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 infringes 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; or (b) services that are closely related to goods in respect of which the trade mark is registered; or (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 infringes 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 Pakistan, and the use of the mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. (5) A person infringes 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 infringes 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 labelling 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,- (a) that, having taken all reasonable precautions, he had no reasons to suspect the genuineness of the mark; and (b) that, 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) that otherwise he had acted innocently. Infringement of trade mark by breach of certain restrictions. 39. Subject to the provisions of section 40, if the proprietor of a registered trade mark or a licensee having power to do so, has caused to be displayed on goods ("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 act: (a) to 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 authorises someone to do any of the foregoing prohibited acts infringes the trade mark. Provided however 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. When a trade mark is not infringed. 40. (1) A person does 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; or (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; or (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 37 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 does not infringe the trade mark by using disclaimed part of the trade mark. Registration to be prima facie evidence of validity. 41. In all legal proceedings relating to a trade mark registered under this Act or under the Trade Marks Act, 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. Registration to be conclusive as to validity after seven years. 42. 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 section 12(3). Saving for words used as name or description of an article or substance. 43. (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 or words which the trade mark contains or of which it consists as the name or description of an article or 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 or 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 section, that a period of two years or more after the cesser of the patent has elapsed and that the said words are 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 clause (b) of the proviso to sub-section (1) are proved with respect to any words, then,- (a) for the purposes of any proceeding under section 94 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 requires, shall be deemed to be an entry wrongly remaining on the register; (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 Act or any other law 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 requires, 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 Action for Infringement. 44. (1) Save as otherwise provided in this Act, an infringement of a registered trade mark is 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 is available to him as is available in respect of the infringement of any other property right. (3) Nothing in this Act 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. Order for erasure and of offending marks. 45. (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) if is not reasonably practicable for the offending trade mark to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question. (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. Order for delivery up of infringing goods, material or articles. 46. (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 end of the period specified in section 48; 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 49. (3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 49 is not 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 affects any other power of the Court. Meaning of "infringing goods, material or articles" 47. (1) In this Act the expression "infringing goods", "infringing material" and "infringing articles" shall be construed as follows. (2) Goods are "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; or (b) the goods are proposed to be imported into Pakistan and the application of the mark in Pakistan to them or their packaging would be an infringement of the registered trade mark; or (c) the mark has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark. (3) Nothing in sub-section (2) shall be construed as affecting the importation of goods which may lawfully be imported into Pakistan. (4) Material is "infringing material" in relation to a registered trade mark if it bears a mark identical or deceptively similar to that mark and either,- (a) it is used for labelling 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) it is intended to be so used and such use would infringe the registered trade mark. (5) "Infringing articles", in relation to a registered trade mark, means articles,- (a) which are specifically designed or adapted for making copies of a mark identical or similar to that mark; and (b) which 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. Period after which remedy of delivery up not available. 48. (1) An application for an order under section 46 may not be made after the end of the period 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 mentioned in the following provisions. (2) If during the whole or part of that period 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 end of the period 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. (3) In sub-section (2) "disability" has the same meaning as in the Limitation Act, 1908. Order as to disposal of infringing goods, material or articles. 49. (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 46, 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 is more than one person 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, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return. Remedy for groundless threats of infringement proceedings 50. (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 proceeding for relief under this section against the person making the threat. (2) The relief which may be applied for is any of the following,- (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,- and the plaintiff is entitled to such relief 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. (3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade marks is invalid or liable to be revoked in a relevant respect. (4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section. (5) This section does not make a lawyer, advocate or attorney liable to an action for an act done in a professional capacity on behalf of a client. CHAPTER VI IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES Infringing goods material or articles may be treated as prohibited. 51. (1) The proprietor of the registered trade mark may give notice in writing to the Collector of Customs,- (a) that he is the proprietor of the registered trade mark; and (b) that, 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 within the meaning of Customs Act, 1969; and (c) that he requests the Collector of Customs to treat such goods as prohibited goods. Collector of Customs may seize goods bearing infringing trade marks. 52. If goods to which section 51 applies,- (a) have applied to them, or in relation to them, a trade mark that, 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 must seize the goods unless he is satisfied that there are no reasonable grounds of believing that the trade mark is infringed by the importation of the goods. The seized goods must be kept in a secure place as directed by the Collector of Customs. Notice for intervention by Customs authority. 53. When any notice to the Collector of Customs is made under section 51 it shall be accompanied by an undertaking by the person sending the notice to indemnify the Customs authorities and to compensate any importer, consignee, or owner of the goods for loss or damage resulting from the wrongful suspension of clearance of goods. Furnishing of security or equivalent assurance to customs. 54. The Collector of Customs shall have authority to require an applicant to provide a security or equivalent assurance sufficient to protect the importer, consignee, or owner of the goods. However, such security or equivalent assurance shall not be such as to unreasonably deter recourse to these procedures. Notice of seizure. 55. The Collector of Customs must, as soon as practicable: (a) give (either personally or by urgent post) to the importer, consignee, or owner of the goods a seizure notice in writing identifying the goods and stating that they have been seized under section 52; and (b) give to the applicant a notice in writing: (i) identifying the goods and stating that they have been seized under section 52; (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 will 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 10 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 58, within the extended period. Forfeiture of goods. 56. If the importer, consignee, or owner of any seized goods may, 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. Release of goods. 57. (1) The Collector of Customs must 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 must 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 of 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) the Collector of Customs, having regard to information that has come to his knowledge after the goods were seized, is satisfactory 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 the Collector of Customs of such an action. Action for infringement against importation of infringing goods. 58. (1) The applicant may bring an action for infringement of a registered trade mark in respect of the seize goods and give notice of it to the Collector of Customs,- (a) subject to the provisions of clause (b) hereof, within 10 working days specified in the notice given to the applicant in respect of the goods under section 55; or (b) if,- (i) the applicant has, before the end 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 10; 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) must allow the Collector of Customs or his duly authorised officer to appear and be heard. (3) In addition to any relief that the Court may grant apart from this section, the Court may,- (i) at any time, if it thinks it just, order that the seized goods be released to their designated owner subject to any conditions, that the Court considers fit to impose; or (ii) order that the seized goods be forfeited,- Provided, however, no order shall be made which may facilitate,- (a) re-exporting of the counterfeit goods; (b) removing of the trade marks which have been affixed to the counterfeit goods without authorisation; and (c) local sales. (4) 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 damages 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. (5) If, after 3 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 must release the goods to their designated importer, consignee, or owner. (6) If the Court orders that the goods be released, the Collector of Customs must, subject to section 61, comply with the order. Action for infringement by licensee in relation to any seized goods. 59. 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 being the action. Forfeited goods, how to be disposed. 60. Goods forfeited under this Chapter shall be disposed off by the Collector of Customs in the manner as if the goods were forfeited under the Customs Act, 1969. Provided, however, goods shall not be disposed off in a manner which may facilitate,- (a) re-exporting of the counterfeit goods; (b) removing of the trade marks which have been affixed to the counterfeit goods without authorisation; and (c) local sales. Power of the Collector of Customs to retain control of goods. 61. Notwithstanding anything contained in this Chapter, the Collector of Customs must not,- (a) release, or dispose off, any goods; or (b) take any action in relation to the goods to give effect to any order of a Court under section 58; if the Collector of Customs is required or allowed to retain control of the goods under any law of the land. Insufficient security. 62. If security given under section 54 by the applicant who gave notice in respect of a registered trade mark under section 51 or section 59 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 between those expenses and the amount of security,- (a) is a debt due by the applicant to the Federal Government; and (b) shall be recovered by the Federal Government by an action taken in a Court of competent jurisdiction. Federal Government not liable to loss etc. suffered because of seizure. 63. The Federal Government shall not be liable to any loss, damage or delays suffered by a person,- (a) because the Collector of Customs seized, failed to seize, goods under this Chapter; or (b) because of release of any seized goods. Power of Collector of Customs to make regulation. 64. The Collector of Customs may make regulations prescribing the form in which notices are to 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 & COMPARATIVE ADVERTISEMENT Definition and provisions related to unfair competition. 65. (1) Unfair competition means any act of competition contrary to honest 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, the goods, the services or the industrial or commercial activities, of a competitor; (b) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, the services or the 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, the characteristics, the constituents, the 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 lawful in control of that information, in a manner contrary to honest industrial or commercial practice, so long as such information relate 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; Explanation - For the purpose of sub-sections (a), (b), (c) and (d) of this section, "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. (e) making of false or deceptive statements in the course of trade; or (f) misleading advertising; or (g) fraudulently registering or applying for registration of a trade mark. (2) Any act of unfair competition shall be unlawful. (3) An action against unfair competition may be brought before a Court of competent jurisdiction. Provisions related to misleading and comparative advertisement. 66. (1) Comparative advertisement shall, as far as comparison is concerned, be lawful, provided following conditions are met: (a) it is not misleading according to Section 2(1)(y) and sub-section (2) hereof; and (b) it compares goods or services meeting the same needs or intended for the same purpose; and (c) it objectively compares one or more material, relevant, verifiable and representative features of those goods and services, which may include price; and (d) 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; and (e) it does not discredit or disparage the trade marks, trade names, other distinguishing marks, goods services, activities or circumstances of a competitor; and (f) for products with designation of origin, it relates in each case to products with same designation; and (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; and (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. (2) Any person having a legitimate interest in prohibiting misleading advertisement or regulating comparative advertising may take legal action against such advertising before the tribunal. (3) For all complaints made to the tribunal under sub-section (2), 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; or (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. (4) This section does not exclude voluntary control of misleading or comparative advertisement by self-regulatory bodies and recourse to such bodies by the persons referred to in sub-section (2) if proceedings before such bodies are in addition to the tribunal proceedings referred to in the said sub-section. CHAPTER VIII ASSIGNMENT AND TRANSMISSION Assignment of registered trade marks. 67. (1) A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same was as other personal or movable property. It is also transmissible either in connection with the goodwill of a business or independently. (2) As 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. (3) An assignment of a registered trade mark, or an assent relating to a registered trade mark is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.
(4) The above provisions apply to assignment by way of security as in relation to any other assignment. (5) 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. (6) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business. Registration of transactions affecting registered trade mark. 68. (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 are registrable transactions,- (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; (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 registrable transaction,- (a) the transaction is 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 does not have the protection of sections 59, 75 or 76. (4) Provision may be made by rules as to,- (a) the amendment of registered particulars relating to a license so as to reflect any alteration of the terms of the license; and (b) the removal of such particulars from the register,- (i) where it appears from the registered particulars that the license 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 notified 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. Application for registration of trade mark as an object of property. 69. (1) The provisions of sub-section (1) of section 37, sub-sections (2) to (7) of section 22 and section 67 and section 68 (which relates to a registered trade mark as an object of property) apply, with the necessary modifications, in relation to an application for the registration of a trade mark as in relation to a registered trade mark. (2) In section 68 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 Proposed use of trade mark by company to be formed. 70. (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 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 71 shall have effect, in relation to a trade mark registered under the powers conferred by 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 an 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. Revocation of registration. 71. (1) The registration of a trade mark may be revoked on any of the following grounds,- (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 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 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; (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 purpose of sub-section (1) use of a trade mark includes 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 mentioned in clause (a) or (b) of sub-section (1) if such use as it referred to in that clause 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 year 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 of revocation may be made by an interested party to the Registrar, expect that,- (b) if proceedings concerning the trade mark in question are pending in the Court, the application must 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. Use of trade marks by persons other than the proprietor thereof. 72. (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 Act or any other law. (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,- (a) to the proprietor of the trade mark, if the trade mark is registered; or (b) to the owner of the trade mark, if the trade mark is entitled to protection under the Convention as a well-known trade mark. Licensing of registered trade marks. 73. (1) A license to use a registered trade mark may be general or limited. 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. (2) A license is not effective unless it is in writing signed by or on behalf of the grantor. (3) Unless the license provides otherwise, it is binding on a successor in title to the grantor's interest.
References in this Act to doing any thing with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly. (4) Where the license so provides, a sub-license may be granted by the licensee; and references in this Act to a license or licensee include a sub-license or sub-licensee. Exclusive licenses. 74. (1) In this Act an "exclusive license" means a license (whether general or limited) authorising 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. The expression "exclusive licensee" shall be construed accordingly. (2) An exclusive licensee has the same rights against a successor in title who is bound by the license as he has against the person granting the license.
General provisions as to the rights of licensees in case of infringement. 75. (1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark. The provisions of this section do not apply where or to the extent that, by virtue of sub-section (1) of section 76, the licensee has a right to bring proceedings in his own name. (2) Save as provided in section 59, a licensee is entitled, unless his license, or any license 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. (3) 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. (4) Where infringement proceedings are brought by a licensee by virtue of 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. This does not affect the granting of interlocutory relief on an application by a licensee alone. (5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) 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 is to hold the proceeds of any pecuniary remedy on behalf of licensees.
(7) The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of sub-section (1) of section 76, the rights and remedies of an assignee as if he were the proprietor of the registered trade mark. Exclusive licensee having rights and remedies of assignee. 76. (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 is 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 are concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act 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.
This does 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 favor 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 the Court considers just, subject to any agreement between them.
The provisions of this sub-section apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(7) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 46; 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. (8) The provisions of sub-sections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor. Surrender of registered trade marks. 77. (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 effect of a surrender; and (b) for protecting the interests of other persons having right in the registered trade mark. Grounds for invalidity of registration. 78. (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 12 or any of the provisions referred to in that section. Where the trade mark was registered in breach of clauses (b), (c) or (d) of sub-section (1) of section 12, 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. (2) The registration of a trade mark may be declared invalid on the ground,- (a) that there is an earlier trade mark in relation to which the condition set out in sub-sections (1), (2) or (3) of section 5 obtain; or (b) that there is an earlier right in relation to which the condition set out in sub-section (4) of section 5 is salified, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration. (3) An application for declaration of invalidity may be made by an interested party, and may be made 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 must be made to the Court; and (b) if in any other case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the Court. (4) In the case of bad faith in the registration of a trade mark, the Registrar himself may apply to the Court for a declaration of the invalidity of the registration. (5) 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. (6) Where the registration of a trade mark declared invalid to any extent, the registration shall to that extent deem never to have been made: Provided that this shall not affect transactions past and closed. Effect of acquiescence. 79. (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 is not 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.
Collective marks. 80. (1) A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of undertakings. (2) The provisions of this Act apply to collective mark subject to the provisions of Schedule 1. Certification marks 81. (1) A certification mark is 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 Act apply to certification marks subject to the provisions of Schedule 2. Domain names. 82. (1) Domain name shall have the meaning as given to it from time to time by the World Intellectual Property Organization or any other relevant international intellectual property body or trade mark association; (2) The provisions of this Act apply to domain names subject to the provisions of Schedule 3. CHAPTER X THE PARIS CONVENTION The Paris Convention. 83. (1) In this Act,- (a) "The Paris Convention" means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time, and (b) a "Convention country" means a country other than Pakistan, which is a party of that convention. (2) The Federal Government may by order make such amendments of this Act, and rules made under this Act, as deem appropriate in consequence of any revision or amendment of the Paris Convention after the passing of this Act.
Protection of well-known trade marks: Article 6bis. 84. (1) References in this Act to a trade mark which is entitled to protection as a well-known trade mark are 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 Pakistan. References to the proprietor of such a mark shall be construed accordingly. Explanation - For the purposes of this Act, the tribunal while determining whether a trade mark is well-known, without having to require registration and/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,- (i) the amount of Pakistan or worldwide recognition of the trade mark; (ii) the degree of inherent or acquired distinctiveness of the trade mark; (iii) the Pakistan or worldwide duration of the use and advertising of the trade mark; (iv) the Pakistan or worldwide commercial value attributed to the trade mark; (v) the Pakistan or worldwide geographical scope of the use and advertising of the trade mark; (vi) the Pakistan or worldwide quality and image that the trade mark has acquired; and (vii) the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and 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. (2) 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. (3) Rights conferred under sub-section (2) are subject to section 79 and nothing in the said sub-section affects the continuation of any bona fide use of a trade mark begun before the commencement of this section. National emblems of Convention countries: Article 6ter. 85. (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 authorisation. (2) A trade mark which consist of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention shall not registered without the authorisation of the competent authorities of that country. (3) A trade mark which consist of or contains official mark or hallmark adopted by a Convention country and indicating control and warranty shall not, where the mark, 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 authorisation 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, 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 prevents the registration of a trade mark on the application of the national of a country who is authorised 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 authorisation of competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use of the mark in Pakistan without their authorisation. Emblems of certain international organisations: Article 6ter. 86. (1) This section applies to,- (a) the armorial bearings, flags or other emblems; and (b) the abbreviations and names, of international intergovernmental organisations of which one or more Convention countries are members. (2) 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 authorisation of the international organisation 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 exist between the organisation 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 organisation. (3) The provisions of this section as to emblem of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem. (4) Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitle to restrain by injunction any use of the mark in Pakistan without its authorisation. (5) Nothing in this section affect the rights of a person whose bona fide use of the trade mark in question began before the commencement of this section. Notification under Article 6ter of the Convention. 87. (1) For the purpose of section 85 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 Pakistan in accordance with Article 6ter(3) or the Convention that it desires to protect that emblem, mark or hallmark; (b) the notification remains in force; and (c) Pakistan has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn. (2) For the purpose of section 86 the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that,- (a) the organisation in question has notified Pakistan in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation and name; (b) the notification remains in force; and (c) Pakistan has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn. (3) Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for registration made more than two month after the receipt of the 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 emblem and official marks or hallmarks; and (b) the emblems, abbreviations and names of international organisations, which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter(3). Acts of agents or representatives: Article 6septies. 88. (1) The following provisions apply where an application for registration of a trade mark made by a person who is an importer, agent (not an agent under the meaning of section 126) or representative of a person who is the proprietor of the mark in a Convention country. (2) If the proprietor opposes the application, registration shall be refused. (3) If the application (not being so opposed) is granted, the proprietor may,- (a) apply for the declaration of the invalidity of the registration; or (b) apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark. (4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) by injunction restrain any use of the trade mark in Pakistan which is not authorised by him. (5) Sub-sections (2), (3) or (4) do not apply if, or to the extent that, the agent or representative justifies his action. (6) An application under sub-section (3)(a) or (b) must be made within three years of the proprietor becoming aware of the registration, and no injunction shall be granted under sub-section (4) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more. Nature of Goods to which the mark is applied: Article 7. 89. For the purposes of registration of a trade mark under this Act, 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. Trade Names: Article 8. 90. A trade name shall be protected without the obligation of filing or registration under this Act, whether it forms part of a trade mark or not. CHAPTER XI SPECIAL PROVISIONS FOR TEXTILE GOODS Textile goods. 91. 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 Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods. Restrictions on registration of textile goods. 92. (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; (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.
Advisory committees. 93. (1) The Federal Government may in the prescribed manner constitute one or more Advisory Committees of persons versed in the usages of the textile trade for the purpose of this section. (2) The Registrar shall consult any such 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 such Committees shall be determined by rules made under this Act. CHAPTER XII RECTIFICATION AND CORRECTION OF THE REGISTER Rectification or correction of register. 94. (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 must 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 is that the error or omission in question shall be deemed never to have been made. (4) The Registrar may, on request made in the prescribed manner by the proprietor of the registered trade mark, or a licensee, enter any change in his name or address as recorded in the register. (5) The Registrar may remove from the register matter appearing to him to have ceased to have effect. Adaption of entries to new classification. 95. (1) Provisions may be made by rules empowering the Registrar to do such things as he considers necessary to implement any amended substituted classification of goods or services for the purposes of the registration of trade marks. (2) Provisions may in particular be made for the amendment of existing entries on the register so as to record with the new classification. (3) Any such power of amendment 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 rules may empower the Registrar,- (a) to 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) to cancel or refuse to renew the registration of the trade mark in the event of his failing to do so. (5) Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed. CHAPTER XIII OFFENSES, PENALTIES & PROCEDURES Meaning of applying trade description. 96. (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; or (b) applies a trade description to any packages 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; or (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; or (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, other-wise worked into, or annexed or affixed to, the goods or to any packaging or other thing. Penalty for applying false trade description, etc. 97. 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 124, 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 124; or (d) causes any of the things above-mentioned in this section 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 extent to two years, or with fine which shall not be less than fifty thousand rupees, or with both. Enhanced penalty on second or subsequent convictions. 98. Whoever having already been convicted of an offence under section 96 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 extent to three years, or with fine which shall not be less than one lakh rupees, or with both. Penalty for falsification of entries in register. 99. If any person 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. Penalty for falsely representing a trade mark as registered. 100. (1) No person shall make any representation,- (a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or (b) with respect to a part of 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; or (c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered; or (d) to the effect that 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 punished 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 outside Pakistan, being a country under the law of which the registration referred to is in fact in force; or (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 outside Pakistan and in relation solely to goods or services to be exported to that country. (4) The Registrar suo moto, or upon a complaint in writing made to him, may call upon any person who is allegedly contravening any of the clauses (a) to (d) of sub-section (1) to show cause as to why an action should not be taken against him. Provided however 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. Restraint of use of Royal Arms and State emblems. 101. If a person, without due authority, uses in connection with any trade, business, calling or profession,- (a) the flag of Pakistan in such manner as to be misleading; or (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; or (c) name, title and semblance of Quaid-i-Azam Mohammad Ali Jinnah or Allama Dr. Mohammad Iqbal and 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 United Nations or any subsidiary body set up by the United Nations or of the World Health Organisation or of the World Intellectual Property Organisation or of the World Trade Organisation in such manner as is to be calculated to lead to the belief that he is duly authorized by the competent authorities of these organisations to use the emblem, seal or name, he may, at the suit of any person who is authorised to use such Arms or such device, emblem or title or of the Registrar, 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. Offenses by companies. 102. (1) If the person committing an offence under this Act is a company, the company as well as every person incharge of, and responsible to, the company for the conduct of its business as 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. Powers to award compensation for offenses under this Act. 103. (1) In any prosecution under this Act, 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) 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 proceeding which may be instituted, or may be pending in a Court, in relation to the same matter. Punishment of abetment in Pakistan of acts done out of Pakistan. 104. If any person, being within Pakistan, abets the commission, without Pakistan of any act which, if committed in Pakistan, would, under this Act, 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.
Penalty for improperly describing a place of business as connected with the Trade Marks Registry. 105. 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 punishable for a term which may extend to two years, or with fine, or with both. CHAPTER IVX MISCELLANEOUS AND GENERAL PROVISIONS Power of Registrar to require use of forms. 106. (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 proceeding before him under this Act. (2) The forms and any directions of the Registrar with respect to their use, shall be notified in the prescribed manner. Information about applications and registered trade marks. 107. (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, however, to any prescribed restrictions. Any request must be made in the prescribed manner and be accompanied by the appropriate fee (if any). (2) Before publication of an application for registration of a trade mark, documents 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 as follows. (3) Where a person has been notified 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. Costs and security for costs and fine. 108. (1) Provisions may be made by rules empowering the Registrar, in any proceedings before him under this Act,- (i) to award any party such costs as he may consider reasonable; (ii) to impose fine as he may consider reasonable; and (iii) to direct how and by whom costs or fines are to be paid. (2) Any such order of the Registrar may be executable in the same way as a decree of a Civil Court. (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. Procedure before the Registrar. 109. In all proceedings under this Act 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; (c) the Registrar shall not exercise any powers vested in him by this Act or the rules made thereunder adversely to any party duly appearing before him without (if required in writing within the prescribed time so to do) giving such party an opportunity of being heard; Certificate of validity of contested registration. 110. If in any legal proceeding in which the validity of the registration of a trade mark comes into question and a decision is given in favor 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 proceeding in which the said validity comes into question, the said proprietor on obtaining a final order or judgement in his favor 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.
Registrar's appearance in proceedings involving the register. 111. (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 is entitle 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 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 authorised or require to do under this section may be done on his behalf by a duly authorised officer. The Court. 112. In this Act, unless the context otherwise requires, "the Court" means the High Court. Appeals from the Registrar. 113. (1) Save as otherwise expressly provided in this Act, an appeal shall lie, within the prescribed period from any decision of the Registrar under this Act or rules made thereunder to the High Court having jurisdiction: Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, the appeal shall be made 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 19 or section 20 or section 26, 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 Act and of rules made thereunder, the provisions of the Code of Civil Procedure, 1908, shall apply to appeals before a High Court under this Act. Procedure before Federal Government. 114. In all proceedings under this Act before the Federal Government, evidence shall be given by affidavit, providing 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 109.
Procedure in certain cases of option to apply for a Court or the Registrar. 115. Where under this Act 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 must be made to the Court; and (b) if in any other case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the Court. Suits for infringement to be instituted before District Court. 116. 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. Costs of Registrar in proceedings before a Court. 117. In all proceedings under this Act 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. Burden of proving use of trade mark. 118. If in any Civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it. Certain persons to be public servants. 119. Every person appointed under this Act shall be deemed to be a public servant within the meaning of section 21 of the Pakistan Penal Code, 1860. Documents open to public inspection. 120. (1) Save as otherwise provided in this Act,- (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). Death of a party to a proceeding. 121. If a person who is a party to a proceeding under this Act (not being a proceeding before the Court) dies pending the proceeding, the Registrar may, on request, and on proof to his satisfaction of the transmission of the interest of the deceased person substitute in the proceeding 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 proceeding to continue without the substitution of his successor in interest. Extension of time 122. (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 the Act), 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. Registrar and other officers not compellable to produce register etc. 123. 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 Act or to appear as a witness to prove the matters therein recorded unless by order of the Court made for special cause. Power to require goods to show indication of origin. 124. (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 in to Pakistan, or which are made or produced within the limits of Pakistan, shall from such date as my 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 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 shall apply to the issue of a notification under this section 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 this section 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. Address for service 125. (1) Every applicant or opponent in any proceeding under the Act, 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 proceeding 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 post to the address for service of the applicant or opponent, as the case may be.
Agents. 126. (1) Where by or under this Act any act, other than the making of an affidavit, is required to be done by any person, the act may, subject to prescribed conditions 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 shall make rules for prescribing qualification, registration and conduct of trade mark agents. Fees. 127. (1) There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Federal Government. (2) Provisions may be made by rules,- (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. Government to be bound. 128. The provisions of this Act shall be binding on the Government. Power to make, reciprocal arrangements with other Government. 129. 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 Act. Power to Courts to make rules. 130. A Court may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it. Power of Federal Government to make rules. 131. (1) The Federal Government may, subject to the condition of previous publication by notification in the official Gazette, make rules to carry out the purposes of this Act. (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 of Trade Marks under sub-section (1) of section 8; (ii) conditions and restrictions subject to which the Register of Trade Marks shall be open to the inspection of the public under sub-section (5) of section 8; (iii) classification of goods and services in accordance with the international classification of goods and services under sub-section (1) of section 10; (iv) publication of alphabetical index of classification of goods and services under sub-section (2) of section 10; (v) the manner in which the Registrar may notify a word as an international non-proprietary name under section 14; (vi) the manner of making an application for registration of a trade mark under sub-section (1) of section 20; (vii) the manner and period for making a Convention application under clause (b) of sub-section (1) of section 23; (viii) the matters related to the manner of claiming a right to priority on the basis of a Convention application under sub-section (5) of section 23; (ix) conditions for grant of temporary protection in respect of goods or services during exhibition under sub-section (4) of section 24; (x) the manner of giving notice to the Registrar under sub-section (2) of section 26 for opposing an application for registration advertised or re-advertised under sub-section (1) of section 26 and the fee payable for such application, making an application for extension of time under sub-section (2) of section 26 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 (3) of section 26 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 (4) of section 26 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 (5) of section 26; (xiv) the manner of submitting any evidence under sub-section (6) of section 26 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 (8) of section 26; (xvi) the manner of notifying the Registrar under clause (b)(i) of section 28; (xvii) the time within which an application shall be registered under sub-section (1) of section 31; (xviii) the fee payable and the time within which such fee is payable under sub-section (2) of section 31; (xix) the manner of publication of the registration and the form of certificate of registration under sub-section (4) of section 31; (xx) the manner of giving notice under sub-section (5) of section 31; (xxi) the manner of informing the proprietor of a registered trade mark of the date of expiry and in which the registration may be renewed under sub-section (2) of section 33; (xxii) the further period in which in which additional renewal fee is to be paid under sub-section (3) of section 33; (xxiii) the manner and conditions for restoration of the registration which has been removed from the register under sub-section (6) of section 33; (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 35; (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 36; (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 57; (xxvii) the particulars of the transaction which are to be entered in the register under sub-sections (1) and (3) of section 68; (xxviii) the matters listed under sub-section (4) and(5) of section 68; (xxix) the manner of making application and the fee payable for such application under sub-section (4) of section 70; (xxx) the classes of goods under section 91; (xxxi) the conditions and restrictions subject to which registrations of letters or numerals, or any combination thereof in respect of textile goods may be allowed under sub-section (2) of section 92; (xxxii) the manner of constituting one or more Advisory Committees under sub-section (1) of section 93 and matters related to the place of meeting and conduct of business of such Committees under sub-section (3) of section 93; (xxxiii) the manner of making a request under sub-section (4) of section 94; (xxxiv) the matter relating to empowering the Registrar to do such things as he considers necessary to implement any amended substituted classification of goods or services for the purposes of the registration of trade marks under sub-section (1) of section 95; (xxxv) the time within which a proposal for amendment could be made under clause (a) of sub-section (4) of section 95; (xxxvi) the manner of opposition under sub-section (5) of section 95; (xxxvii) the manner of notification of the forms and any directions of the Registrar in respect to their use under sub-section (2) of section 106; (xxxviii) the restrictions imposed, manner of making application and fee payable under sub-section (1) of section 107; (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 (2) of section 107; (x (x Li) 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 108;(x Lii) the period within which an appeal from any decision of the Registrar under this Act or rules made thereunder may lie to the High Court having jurisdiction under sub-section (1) of section 113;(x Liii) the manner of giving notice under sub-section (2) of section 113;(x Liv) the conditions under which documents listed in sub-section (1) of section 120 may be open to public inspection under the said sub-section;(x Lv) the fee payable for obtaining a certified copy under sub-section (2) of section 120;(x Lvi) the manner of making an application and the fee payable therefor under sub-section (1) of section 122;(x Lvii) the conditions under which any act, other than the making of an affidavit may be done by duly authorised agent under sub-section (1) of section 126;(x Lviii) the matters related to qualification, registration and conduct of trade mark agents under sub-section (2) of section 126;(x Lix) the fees payable for making applications, registrations and other matters under sub-section (1) of section 127;( 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 127;( Li) the making of further requirements with which the regulations may have to comply under paragraph 5(2) of Schedule - 1;( Lii) the making of further requirements with which the regulations may have to comply under paragraph 6(2) of Schedule - 2;(L iii) the procedure for identification and classification of computer related services associated with Internet under paragraph 2(3) of Schedule 3;(Liv) the making of procedure for putting entries under paragraph 2(2) and 9(2) of schedule 4; (Lv) the manner of making application and the fee payable for such application under paragraph 11(2) of schedule 4; ( Lvi) the entry of additional information in the register;( Lvii) the regulation of awarding of costs by the Registrar under this Act;( Lviii) the matters related to establishment of branches of the Trade Marks Registry;( Lix) the manner in which, in proceedings under this Act 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 Act 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 Act placed under the discretion of the Registrar or the Federal Government;( Lxii) any other matter which is required to be, or may be prescribed.Transitional provisions. 132. The provisions of Schedule 4 shall have effect witH respect to transitional matters, including the treatment of TRADE marks registered under the Trade Marks Act, 1940, and applications for registration and other proceedings pending under that Act, on the commencement of this Act. Repeal and savings. 133. (1) The Trade Marks Act, 1940 is hereby repealed. (2) The Trade Marks Registry and its branch(es) existing at the commencement of this Act shall be continued as if they had been established under this Act. (3) The Registrar, other officers and any other person appointed to the Trade Marks Registry shall be deemed to have been appointed to the Trade Marks Registry by virtue of this Act.
Drfat Act Ends. Schedules 1 to 4 Start .SCHEDULE - 1 COLLECTIVE MARKS General. 1.- The provisions of this Act apply to collective marks subject to the following provisions. Signs of which a collective mark may consist. 2.- In relation to a collective mark the reference in clause (ss) of sub-section (1) of section 2 to distinguish goods or services of one under taking form those of other under takings 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. Indication of geographical origin. 3.- (1) Notwithstanding clause (c) of sub-section (1) of section 12, 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) However, the proprietor of such a mark is not 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). Mark not to be misleading as to character or significance. 4.- (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. Notwithstanding sub-section (7) of section 25, an application may be amended so as to comply with any such requirement. Regulation governing use of collective mark. 5.- (1) An applicant for registration of a collective mark must file with the Registrar regulations governing the use of the mark. (2) The regulations must specify the persons authorised 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. Further requirements with which the regulation have to comply may be imposed by rules. Approval of regulations by Registrar. 6.- (1) A collective mark shall not be registered unless the regulations governing the use of the mark,- (a) comply with paragraph 5(2) and any further requirements imposed by rules; and (b) are not contrary to public policy or to accepted principles of morality. (2) Before the end of the prescribe period after the date of the publication for registration of a collective mark, the applicant must file the regulations with the Registrar and pay the prescribed fee. If he does not do so, the application shall be deemed to be withdrawn. Procedure of acceptance or refusal of application. 7.- (1) The Registrar shall consider whether the requirements mentioned in paragraph 6(1) are met. (2) If it appears to the Registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations. (3) If the applicant fails to satisfy the Registrar that those 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 those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 26.
Regulations to be published. 8.- The regulations shall be published and notice of opposition may be given, and observation may be made, relating to the matters mentioned in paragraph 6(1). This is in addition to any other grounds on which the application may be opposed or observations made. Regulations to be open to inspection. 9.- The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register. Amendment of regulations. 10.- (1) An amendment of the regulations governing the use of a registered collective mark is not 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, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1). Infringement: rights of authorised user. 11.- The following provision apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark,- (a) sub-section (7) of section 38; (b) sub-section (2) of section 49; (c) section 51. Provisions in case of infringement. 12.- (1) The following provision have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark. (2) An authorised user is 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 authorised user may bring the proceedings in his own name as if he were the proprietor. (4) Where infringement proceedings are brought by virtue of this paragraph, the authorised 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. This does not affect the granting of interlocutory relief on an application by an authorised user alone. (5) A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) 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 is to hold the proceeds of any pecuniary remedy on behalf of such users. Grounds for revocation of registration. 13.- Apart from the grounds of revocation provided for in section 71, the registration of a collective mark may be revoked on the ground,- (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 paragraph 4(1); or (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 has been made so that the regulations,- (i) no longer comply with paragraph 5(2) and any further conditions imposed by rules; or (ii) are contrary to public policy or to accepted principles of morality. Grounds for invalidity of registration. 14.- A part from the grounds of invalidity provided for in section 78, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4(1) or 6(1). SCHEDULE - 2 CERTIFICATION MARKS General. 1.- The provisions of this Act apply to certification marks subject to the following provision. Signs of which certification mark may consist. 2.- In relation to a certification mark the reference in clause (ss) of sub-section (1) 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. Indication of geographical origin. 3.- (1) Notwithstanding clause (c) of sub-section (1) of section 12, 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) However, the proprietor of such a mark is not 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). Nature of proprietor's business. 4.- 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. Mark not to be misleading as to character or significance. 5.- (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 is made for registration include some indication that it is a certification mark. Notwithstanding sub-section (7) of section 25, an application may be amended so as to comply with any such requirement.
Regulations governing use of certification mark. 6.- (1) An application for registration of a certification mark must file with the Registrar regulations governing the use of the mark. (2) The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes. Further requirements with which the regulations have to comply may be imposed by rules. Approval of regulations. 7.- (1) A certification mark shall not be registered unless,- (a) the regulations governing the use of the mark,- (i) comply with paragraph 6(2) and any further requirements imposed by rules; (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 must file the regulations with the Registrar and pay the prescribed fee. If he does not do so, the application shall be deemed to be withdrawn. Procedure of acceptance or refusal of application. 8.- (1) The Registrar shall consider whether the requirements mentioned in paragraph 7(1) are met. (2) If it appears to the Registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations. (3) If the applicant fails to satisfy the Registrar that those 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 those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 26. Regulations to be published. 9.- The regulations shall be published and notice of opposition may be given, and observation may be made, relating to the matters mentioned in paragraph 7(1). This is in addition to any other grounds on which the application may be opposed or observations made. Regulations to be open to inspection. 10.- The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register. A mendment of regulations.11.- (1) An amendment of the regulations governing the use of a registered certification mark is not 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, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1). Consent to assignment of registered certification mark. 12.- The assignment or other transmission of a registered certification mark is not effective without the consent of the Registrar. Infringement: rights of authorised user 13.- The following provision apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark,-
(a) sub-section (7) of section 38; (b) sub-section (2) of section 49; (c) section 51. Court to take into account loss suffered by authorised users. 14.- 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 is to hold the proceeds of any pecuniary remedy on behalf of such users. Grounds for revocation of registration. 15.- Apart from the grounds of revocation provided for in section 71, the registration of a certification mark may be revoked on the ground,- (a) that the proprietor has begun to carry on such a business as is mentioned in paragraph 4; or (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 paragraph 5(1); or (c) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or (d) that an amendment of the regulations has been made so that the regulations,- (i) no longer comply with paragraph 6(2) and any further conditions imposed by rules; 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. Grounds for invalidity of registration. 16.- A part from the grounds of invalidity provided for in section 78, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5(1) or 7(1). SCHEDULE - 3 DOMAIN NAMES General. 1. The provisions of this Act apply to domain names subject to the following provisions. Registration Requirements. 2. (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 must show that it 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 purpose of paragraphs 2(1) and 2(2), 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, however, 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. Indication of geographical origin. 3.- (1) Notwithstanding clause (c) of sub-section (1) of section 12, 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) However, the proprietor of such a mark is not 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). Mark not to be misleading as to character or significance. 4.- (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 is made for registration include some indication that it is a domain name. Notwithstanding sub-section (7) of section 25, an application may be amended so as to comply with any such requirement. Procedure for acceptance, opposition and registration. 5.- Provisions of this Act for acceptance, registration and opposition as they apply to trade marks shall also apply to the domain names. Term of registration and renewal. 6.- Not withstanding section 32 and 33 of this Act, 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. Provisions of section 71 not to apply to domain names. 7.- Provisions of section 71 of this Act shall not apply to domain names. Rules. 8.- Provisions may be made by rules for further identification and classification of computer related services associated with Internet. SCHEDULE - 4 TRANSITIONAL PROVISIONS Introductory. 1.- (1) In this Schedule,- (a) "existing registered mark" means a trade mark or certification mark registered under the 1940 Act immediately before the commencement of this Act; (b) "the 1940 Act" means the Trade Mark Act 1940; and (c) "the old law" means that Act and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act. (2) For the purpose of this Schedule,- (a) an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement; and (b) the date on which it was made shall be taken to be the date of filing under the 1940 Act. Existing registered marks. 2.- (1) Existing registered marks shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to the provisions of this Schedule, as if registered under this Act. (2) Existing registered marks registered as a series under section 11(3) of the 1940 Act shall be similarly registered in the new register. Provisions may be made by rules for putting such entries in the same form as is required for entries under this Act. (3) In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect on the commencement of this Act. Disclaimer, limitations and conditions. 3.- A disclaimer, limitation or condition entered on the former register in relation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new register and have effect as if entered on the register in pursuance of section 13 of this Act. Effect of registration: infringement. 4.- (1) Section 37 to 40 of this Act apply in relation to an existing registered mark as from the commencement of this Act and section 44 of this Act applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2) below. The old law continues to apply in relation to infringement committed before commencement. (2) It is not 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 commencement any use which did not amount to infringement of the existing registered mark under the old law. Infringing goods, material and articles. 5.- Section 46 of this Act applies to infringing goods, material or articles made before or after the commencement of this Act. Rights and remedies of licensee or authorised user. 6.- (1) Section 75 of this Act applies to licenses granted before the commencement of this Act, but only in relation to infringements committed after commencement. (2) Paragraph 14 of Schedule 2 of this Act applies only in relation to infringement committed after commencement. Co-ownership of registered mark. 7.- The provisions of section 22 of this Act applies as from the commencement of this Act to an existing registered mark of which two or more persons were immediately before commencement registered as joint proprietors. But so long as the relations between the joint proprietors remain such as are described in section 17(2) of the 1940 Act there shall be taken to be an agreement to exclude the operation of sub-sections (2) and (3) of section 22 of this Act. Assignment of registered mark 8.- (1) Section 67 of this Act applies to transactions and events occurring after the commencement of this Act in relation to an existing registered mark; and the old law continues to apply in relation to transactions and events occurring before commencement. (2) Existing entries under section 35 of the 1940 Act shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 68 of this Act. (3) An application for registration under section 35 of the 1940 Act which is pending before the Registrar on the commencement of this Act shall be treated as an application for registration under section 68 of this Act and shall proceed accordingly. The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act. (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 Act shall be dealt with under the old law; and sub-paragraph (2) shall apply in relation to any resulting entry in the register. (5) Whether before the commencement of this Act a person has become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration after commencement shall be made under section 68 of this Act. (6) In cases to which sub-paragraph (3) or (5) applies section 35(2) of the 1940 Act continues to apply (and section 68(3) of this Act do not apply) as regards the consequences of failing to register. Licensing of registered mark. 9.- (1) Sections 73 and 74(2) of this Act apply only in relation to licenses granted after the commencement of this Act; and the old law continues to apply in relation to licenses granted to authorised users before the commencement of this Act. (2) Existing entries under section 39 of the 1940 Act shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 68 of this Act. Provision may be made by rules for putting such entries in the same form as is requires for entries made under this Act. (3) An application for registration as a registered user which is pending before the Registrar on the commencement of this Act shall be treated as an application for registration of a license under section 68(1) of this Act and shall proceed accordingly. The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act. (4) An application for registration as a registered user which has been determined by the Registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register. (5) Any proceedings pending on the commencement of this Act under section 42 of the 1940 Act shall be dealt with under the old law and any necessary alteration made to the new register. Pending applications for registration. 10.- (1) An application for registration of a mark under the 1940 Act which is advertised under section 15(1) or Proviso of this section or an order has been made for its advertisement before the commencement of this Act shall be dealt with under the old law, subject a mentioned below, and if registered the mark shall be treated for the purpose of this Schedule as an existing registered mark. (2) Section 12 of 1940 Act shall be disregarded in dealing after the commencement of this Act with an application for registration.
Conversion of pending application. 11.- (1) In the case of pending application for registration which has been not advertised under section 15(1) or 15(1) Proviso of the 1940 Act neither an order has been made for such advertisement before the commencement of this Act, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act. (2) The notice must be the prescribe form, be accompanied by the appropriate fee and be given no later than twelve months after the commencement of this Act. (3) Notice duly given is irrevocable and has the effect that the application shall be treated as if made immediately after the commencement of this Act. Trade marks registered accordingly to old classification. 12.- The Registrar may exercise his powers to secure that any existing registered marks which do not conform to the system of classification prescribed under section 10 of this Act are brought under conformity with that system. Claim to priority from overseas application. 13.- Section 23 of this Act applies to an application for registration under this Act made after the commencement of this Act notwithstanding that the Convention application was made before commencement. Duration and renewal of registrati |
