:: The Constitution of Pakistan, 1973 ::

THE TRADE MARKS ORDINANCE, 2001

ORDINANCE NO. XIX OF 2001

CHAPTER 1

PRELIMINARY

Sections:

1. Short title, extent and commencement
2. Definitions
3. Goods and services when associated, etc
4. Reference to use of a trade mark, etc.-
5. Decision by tribunal regarding use of a trade mark
6. Application of other laws not barred

CHAPTER II

REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF TRADE MARKS

7. Appointment of Registrar and other officers
8. Power of Registrar to review, withdraw or transfer cases
9. Trade Marks Registry and branches thereof
10. Register of' Trade Marks
11. Evidence of entries in Register and things done by Registrar.
12. Classification of goods and services
13. Publication of an alphabetical index of classification
of goods and services
14. Absolute grounds for refusal of registration
15. Limitation as to colour
16. Use of names of chemical compounds barred
17. Relative grounds for refusal of registration
18. Meaning of "earlier trade mark"
19. Raising of relative grounds in case of honest concurrent use.-
20. Registration of parts of trade marks and of trade marks as a series
21. Registration subject to disclaimer

CHAPTER III

PROCEDURE FOR, AND DURATION OF, REGISTRATION

22. Application for registration
23. Date of filing
24. Co-ownership of trade mark
25. Meaning of Convention application, and right to priority
26. Application to provide temporary protection during exhibition
27. Examination of application
28. Publication, opposition proceedings and observations
29. Grounds of opposition
30. Circumstances in which opposition may proceed in the name of a person other than the person who filed the notice of opposition
31. Withdrawal of application
32. Definition of divisional application
33. Registration
34. Duration and renewal of registration
35. Renewal of registration
36. Effect of removal from Register for failure to pay fee for renewal
37. Alteration of registered trade mark
38. Surrender of registered trade mark

CHAPTER IV

REGISTRATION AND EFFECT THEREOF

39. Rights conferred by registration
40. Infringement of registered trade mark
41. Infringement of trade mark by breach of certain restrictions
42. When a trade mark is not infringed
43. Registration to be prima facie evidence of validity
44. Registration to be conclusive as to validity after five years
45. Saving for words used as name or description of an article or a substance

CHAPTER V

INFRINGEMENT PROCEEDINGS

46. Action for infringement
47. Order for erasure of offending mark
48. Order for delivery up of infringing goods, material or articles
49. Meaning of "infringing goods, material or articles"
50. Period after which remedy of delivery be not available
51. Order as to disposal of infringing goods, material or articles
52. Remedy for groundless threats of infringement proceedings

CHAPTER VI

IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES

53. Infringing goods, material or articles may be treated as prohibited
54. Notice for intervention by customs authorities
55. Furnishing of security or equivalent assurance to customs authority
56. Collector of Customs may seize goods bearing infringing trade mark
57. Notice of seizure
58. Forfeiture of goods
59. Release of goods
60. Action for infringement against importation of infringing goods
61. Action for infringement by licensee in relation to any seized goods
62. Disposal of forfeited goods
63. Power of the Collector of Customs to retain control of goods
64. Insufficient security
65. The Federal Government not be liable to loss, etc., suffered because of seizure
66. Power of the Collector of Customs to make regulations

CHAPTER VII

UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT

67. Definition of unfair competition and provisions relating thereto
68. Misleading and comparative advertisement

CHAPTER VIII

ASSIGNMENT AND TRANSMISSION

69. Assignment of registered trade mark
70. Registration of transactions affecting registered trade mark
71. Application for registration of trade mark as an object of property

CHAPTER IX

USE OF TRADE MARKS AND LICENSEES

72. Proposed use of trade mark by company to be formed
73. Revocation of registration
74. Use of trade mark by a person other than the proprietor thereof
75. Licensing of registered trade mark
76. Exclusive license defined
77. General provisions as to the rights of licensees in case of infringement
78. Exclusive licensee having rights and remedies of assignee
79. Surrender of registered trade mark
80. Grounds for invalidity of registration
81. Effect of acquiescence
82. Collective marks
83. Certification marks
84. Domain names

CHAPTER X

THE PARIS CONVENTION

85. Meaning of "Paris Convention" and "Convention country"
86. Protection of well known trade mark
87. National emblems of Convention countries
88. Emblems of certain international organizations
89. Notification under Article 6ter of the Paris Convention
90. Acts of agent or representative
91. Nature of goods or services to which a mark is to be applied
92. Trade name

CHAPTER XI

SPECIAL PROVISIONS FOR TEXTILE GOODS

93. Textile goods
94. Restrictions on registration of textile goods
95. Advisory Committees

CHAPTER XII

RECTIFICATION AND CORRECT OF THE REGISTER

96. Rectification or correction of Register
97. Adoption of entries to new classification

CHAPTER XIII

OFFENCES, PENALTIES AND PROCEDURE

98. Meaning of applying a trade description
99. Penalty for applying false trade description, etc
100. Enhanced penalty on second or subsequent convictions
101. Penalty for falsification of entries in Register
102. Penalty for falsely representing a trade mark as registered
103. Restraint of use of Government Arms and State emblems
104. Offences by companies
105. Powers to award compensation for offenses
106. Punishment of abetment in Pakistan of acts done out of Pakistan
107. Penalty for improperly describing a place of business as connected with the Trade Marks Registry

CHAPTER XIV

MISCELLANEOUS AND GENERAL PROVISIONS

108. Power of Registrar to require use of forms
109. Information about applications and registered trade marks
110. Costs, security for costs and fine
111. Procedure before the Registrar
112. Certificate of validity of contested registration
113. Registrar's appearance in proceedings involving the Register
114. Appeal against the decision of the Registrar
115. Procedure before the Federal Government
116. Procedure in certain cases of option to apply to the High Court, a District Court or the Registrar
117. Suits for infringement to be instituted before District Court
118. Costs of Registrar in proceedings before the High Court or a District Court
119. Burden of proving use of trade mark
120. Certain persons to be public servants
121. Documents open to public inspection
122. Death of a party to any proceedings under this Ordinance
123. Extension of time
124. Registrar and other officers not compellable to produce Register, etc
125. Power to require goods to show indication of origin
126. Address for service
127. Trade mark agents
128. Fees
129. The Federal Government and a Provincial Government to be bound
130. Power to make reciprocal arrangements with any other Government
131. Power of the High Court to make rules
132. Power of the Federal Government to make rules
133. Transitional
134. Repeal and savings

THE FIRST SCHEDULE
[See section 82(2)]

COLLECTIVE MARKS

1. General
2. Signs of which a collective mark may consist
3. Indication of geographical origin
4. Collective mark not to be misleading as to character or significance
5. Regulations governing use of collective mark
6. Approval of regulations by the Registrar
7. Procedure of acceptance or refusal of application
8. Regulations to be published
9. Regulations to be open to inspection
10. Amendment of regulations
11. Infringement of rights of authorized user
12. Infringement of a registered collective mark
13. Additional grounds for revocation of registration
14. Additional grounds for invalidity of registration

THE SECOND SCHEDULE
[See section 83(2)]

CERTIFICATION MARKS

1. General
2. Signs of which certification mark may consist
3. Indication of geographical origin
4. Nature of proprietor's business
5. Certification mark not to be misleading as to character or significance
6. Regulations governing use of certification mark
7. Approval of regulations by the Registrar
8. Procedure for acceptance or refusal of application
9. Regulations to be published
10. Regulations to be open to inspection
11. Amendment of regulations
12. Consent to assignment of registered certification mark
13. Infringement of rights of authorized user
14. The High Court or a District Court to take into account loss suffered by authorized users
15. Additional grounds for revocation of registration
16. Additional grounds for invalidity of registration

THIRD SCHEDULE
[See section 84(2)]

DOMAIN NAMES

1. General
2. Requirements for registration
3. Indication of geographical origin
4. Domain name not to be misleading as to character or significance
5. Procedure for acceptance, opposition and registration
6. Term of registration and renewal
7. Provisions of section 73 not to apply to domain names
8. Rules

THE FOURTH SCHEDULE
(See section 134)

TRANSITIONAL PROVISIONS

1. Introductory
2. Existing registered trade mark
3. Disclaimer, limitations and conditions
4. Effect of infringement
5. Infringing goods, material and articles
6. Rights and remedies of licensee or authorized user
7. Co-ownership of registered trade mark
8. Assignment of registered trade mark
9. Licensing of registered trade mark
10. Pending applications for registration
11. Conversion of pending application
12. Trade marks registered accordingly to old classification
13. Claim to priority from overseas application
14. Duration and renewal of registration
15. Pending application for alteration of registered trade mark
16. Revocation for non-use
17. Application for rectification
18. Regulations as to use of certification mark

THE TRADE MARKS ORDINANCE, 2001

ORDINANCE NO. XIX OF 2001

Islamabad, the 13th April, 2001

ORDINANCE

to amend and consolidate the law relating to trade marks

WHEREAS it is expedient to amend and consolidate the law relating to trade marks and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith;

AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of the Proclamation of the fourteenth day of October 1999, and the Provisional Constitution Order No. 1 of l999;

AND WHEREAS the President is satisfied that circumstances exist which render it necessary to take immediate action;

NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution Order No. 1 of 1999, read with the Provisional Constitution (Amendment) Order No. 9 of 1999, and in exercise of all powers enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the following Ordinance:-

CHAPTER 1.- PRELIMINARY

1. Short title, extent and commencement.- (1) This Ordinance may be called the Trade Marks Ordinance, 2001.

(2) It extends to the whole of Pakistan.

(3) This section and section 132 shall come into force at once and the remaining provisions of the Ordinance shall come into force on such date as the Federal Government may, by notification in the official Gazette, appoint in this behalf.

2. Definitions.- In this Ordinance, unless there is anything repugnant in the subject or context.-

(i) "advertising" means the making of representation in any form in connection with a trade, business or profession in order to promote the supply of goods or services;

(ii) "assignment" in relation to a trade mark, means an assignment in writing by act of the parties concerned;

(iii) "authorized user" means a person authorised to use a trade mark in relation to goods or services under the control of the owner of the trade mark and includes a licensee;

(iv) "certification mark" means a certification mark as defined in sub-section (1) of' section 83;

(v) "collective mark" means a collective mark as defined in sub-section (1) of section 82;

(vi) "comparative advertisement" means an advertisement which explicitly or by implication identifies a competitor or goods or services offered by a competitor;

(vii) "Convention application" means an application as defined in sub-section (1) of section 25;

(viii) "Convention country" means a Convention country as defined in clause (b) of section 85;

(ix) "counterfeit trade mark goods" means any goods including packaging bearing without authorization a trade mark which is identical to the trade mark validly registered in respect of such goods or which cannot be distinguished in its essential aspects from such a trade mark and thereby infringes the rights of the owner of the trade mark under this Ordinance;

(x) "date of filing" means-

(a) in relation to an application for the registration of a trade mark, the day on which the application is filed pursuant to sub-section (1) of section 23; or

(b) in relation to a divisional application for the registration of a trade mark, the day on which the initial application within the meaning of sub-section (1) of section 32 is filed; or

(c) in relation to an application to provide temporary protection during exhibition, the day referred to in sub-section (1) of section 26; or
(d) in relation to a Convention application, the day referred to in clause (a) of sub-section (2) of section 25;

(xi) "date of registration", in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade mark in respect of those goods or services is taken to have had effect under sub-section (3) of section 33:

(xii) "deceptively similar" in relation to a trade mark, means such near resemblance between it and another trade mark that it is likely to deceive or cause confusion;

(xiii) "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;

(xiv) "District Court" has the meanings assigned to that expression by the Code of Civil Procedure, 1908 (Act V of 1908);

(xv) "divisional application" means a divisional application as defined in sub-section (1) of section 32;

(xvi) "domain name" means the domain name as defined in sub-section (1) of section 84;

(xvii) "earlier trade mark" means an earlier trade mark as defined in sub-section (1) of section 18;

(xviii) "false trade description" means-

(a) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied;

(b) any alteration of a trade description as regards the goods or services to which it is applied whether by way of addition, effacement or otherwise where that alteration makes the description untrue or misleading in a material respect;

(i) to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are; or

(ii) in relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some person other than the person whose services they really are;

(d) any false name or initials of a person applied to goods or services in such a manner as if such name or initials were a trade description in any case where the name or initials,-

(i) is or are not a trade mark or part of a trade mark;

(ii) is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorized the use of such name or initials; and

(iii) is or are either the name or initials of a fictitious person or of some person not bona fide carrying on business in connection with such goods or services; and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Ordinance; or

(e) to any false name, initials or description of a person used in relation to goods or services in a manner to suggest that the said person authenticates or guarantees the nature or fitness for the purpose of the goods or services;

(xix) "geographical indication", in relation to goods originating in a particular country or in a region or locality of that country, means a mark recognized in that country as a mark indicating that the goods-

(a) originated in that country, region or locality; and

(b) have a quality, reputation or other characteristic attributable to then geographical region;

(xx) "goods" means anything which is subject of trade, commerce or manufacture;

(xxi) "Journal" means the Trade Marks Journal published under the authority of the Registrar;

(xxii) "licensee" means a person using a registered trade mark by virtue of a transaction;

(xxiii) "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;

(xxiv) "mark" includes, in particular, a device, brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, figurative element, colour, sound or any combination thereof;

(xxv) "misleading advertising" means any advertising which in any way, including its presentation, deceives or is likely to deceive the persons to whom it is addressed or whom it reaches and which, by reason of its deceptive nature, is likely to affect their behaviour or which, for those reasons, injures or is likely to injure a competitor;

(xxvi) "name" includes any abbreviation of name;

(xxvii) "notify" means to notify in the Journal;

(xxviii) "opponent" in relation to the registration of a trade mark, means the person who has filed under sub-section (2) of section 28, a notice of opposition to the registration of the trade mark;

(xxix) "packaging" includes, in particular, any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, band, reel, frame, capsule, cap, lid, stopper and cork;

(xxx) ''Paris Convention" means the Paris Convention as defined in clause (a) of section 85;

(xxxi) "permitted use", in relation to a trade mark, means the use of the trade mark by an authorized user;

(xxxii) "predecessor in title", in relation to a person who claims to be the proprietor of a trade mark, means-

(a) if the trade mark was assigned or transmitted to one or more than one persons before it was assigned or transmitted to the first-mentioned person, that other person or any of those other persons; or

(b) if sub-clause (a) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted to the first-mentioned person;

(xxxiii) "prescribed" means prescribed by rules made, in relation to proceedings before a High Court, and in other cases, made under this Ordinance;

(xxxiv) "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;

(xxxv) "proprietor of earlier right", in relation to a trade mark, means a person entitled to prevent the use of a trade mark;

(xxxvi) "Register" means the Register of Trade Marks maintained under sub-section (1) of section 10;

(xxxvii) "Registrar" means the Registrar of Trade Marks appointed under section 7;

(xxxviii) "registered", with its grammatical various, means registered under this Ordinance or the Trade Marks Act, 1940 (V of 1940);

(xxxix) "registered trade mark" means a trade mark which is actually on the Register;

(xl) "rules" means the rules made under this Ordinance;

(xli) "Schedule" means a Schedule to this Ordinance;

(xlii) "seized goods" means goods seized under section 56;

(xliii) "service" means service of any description which is made available to users or potential users and includes the provision for services in connection with business of any industrial or commercial nature, and without limitation, includes banking, retailing, communication including telecommunication, education, law, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of goods including electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;

(xliv) "similar goods" includes goods which are of the same description;

(xlv) "similar services" include services which are of the same description;

(xlvi) "trade description" means any description, statement or other indication, direct or indirect-

(a) as to the number, quantity, measure, gauge or weight of any goods; or

(b) as to the standard of quality of any goods or services according to classification commonly used or recognized in the trade; or

(d) as to the place or country in which or the time at which any goods or services were made, produced or provided, as the case may be; or

(e) as to the name and address or other indication of the identity of the manufacturer or of the person providing the services or of the persons for whom the goods are manufactured or services provided; or

(f) as to the mode of manufacture or producing any goods or providing services; or

(g) as to the material of which any goods are composed; or

(h) as to any goods being the subject of an existing patent, privilege or copyright, and includes-

(a) any description as to the use of any mark which according to the custom of the trade is commonly taken to be an indication of any of the above matters;

(b) any description as to any imported goods contained in any bill of entry or shipping bill; and

(xlvii) "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;

(xlviii) "Trade Marks Registry" means the Trade Marks Registry established under section 9;

(xlix) "trade names" means names used by a person to denote his trade or calling and includes

firms' and companies names;

(l) "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;

(li) "tribunal" means the Registrar or, as the case may be, the High Court or a District Court before which the proceedings concerned are pending;

(lii) "unfair competition" means an unfair competition as defined in section 67; and

(liii) "word" includes an abbreviation of a word.

3. Goods and services when associated, etc.- (1) For the purposes of this Ordinance-

(a) goods and services shall be associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services;

(b) a trade mark shall be taken used on goods if the trade mark is used on any goods including second-hand goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to the goods, material or thing.

(c) a trade mark shall be taken used in relation to goods or services if the trade mark is used-

(i) on any covering, packaging, document, label, band, ticket, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade;

(ii) in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services;

(iii) on a signboard or in an advertisement; or

(iv) in an invoice, list, catalogue, business letter, business paper, price list or other commercial document.

(2) Where the owner of a trade mark exercises quality control over goods or services-

(a) dealt with or provided in the course of trade by another person; and

(b) in relation to which the trade mark is used.

the other person shall be taken to use the trade mark in relation to the goods or services under the control of the owner.

(3) Where another person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used and the owner of the trade mark exercises financial control over the other person's relevant trading activities, the other person shall be taken to use the trade mark in relation to the goods or services under the control of the owner.

4. Reference to use of a trade mark, etc.- In this Ordinance, unless the context otherwise requires, any reference-

(a) to use of a trade mark shall include reference to use of the trade mark in relation to goods, as well as, on goods;

(b) to use of a trade mark in relation to goods shall include reference to use of the trade mark on goods, or vice versa;

(c) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 7; and

(d) to the Trade Marks Registry shall be construed as including a reference to any branch of the Trade Marks Registry.

5. Decision by tribunal regarding use of a trade mark.- (1) A tribunal may, having regard to the circumstances of a case, if it thinks fit, decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Explanation.- For removal of doubts, it is clarified that if a trade mark consists of any combination of any letter, word, name or numeral, any aural representation of the trade mark shall be, for the purposes of this Ordinance, a use of the trade mark.

(2) The application in Pakistan of a trade mark to goods or services to be exported from Pakistan and any other act done in Pakistan in relation to goods or services to be so exported which, if done in relation to goods or services to be sold or otherwise traded in within Pakistan would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods or services for any purpose for which such use is material under this Ordinance or any other law for the time being in force.

(3) The use of a registered trade mark in relation to goods or services between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods or services between which and the person using the mark or any predecessor in his business different from of connection in the course of trade subsisted or subsists.

6. Application of other laws not barred.- The provisions of this Ordinance shall be in addition to, and not in derogation of any other law for the time being in force.

CHAPTER 11.- REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION
OF TRADE MARKS

7. Appointment of Registrar and other officers.- (i) The Federal Government may by notification in the official Gazette, appoint an officer who shall be called the Registrar of Trade Marks.

(2) The Federal Government may appoint such other officers with such designations as it deems fit for performing under the superintendence and direction of the Registrar, such function of the Registrar, under this Ordinance as he may, from time to time, authorise them to discharge.

8. Power of Registrar to review, withdraw or transfer cases.- The Registrar may, by order in writing-

(a) review any function, matter, case or decision of any officer; or

(b) withdraw any function, matter or case from any officer or staff.

and deal with such function, matter or case himself either de novo or from the stage it was so withdraw, or transfer the same to another officer or staff at any stage.

9. Trade Marks Registry and branches thereof.- (1) For the purposes of this Ordinance, there shall be established a Trade Marks Registry;

The Trade Marks Registry established under the Trade Marks Act, 1940 (V of 1940), shall be the Trade Marks Registry for the purposes of this Ordinance.

(2) For the purpose of facilitating registration of trade marks, there may be established at such places, as the Federal Government may think fit, branch offices of the Trade Marks Registry.

(3) There shall be a seal of the Trade Marks Registry.

10. Register of' Trade Marks.- (1) For the purposes of this Ordinance, a record called the Register of Trade Marks shall be kept at the Trade Marks Registry wherein shall be entered particulars of all registered trade marks with the names, addresses and description of the proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of licensees, disclaimers, conditions, limitations and such other matters relating to registered trade marks as may be prescribed, but there shall not be entered in the Register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar;

(2) Subject to the superintendence and direction of the Federal Government, the Register shall be kept under the control and management of the Registrar.

(3) The Register may be kept in whole, or in part, by using a computer any bona fide record of a particular or other matter made by using a computer for the purposes of keeping the Register shall, for the purposes of this Ordinance, constitute an entry in the Register.

(4) There shall be kept at each branch office of the Trade Marks Registry, a copy of the Register and such of the other documents as the Registrar may, by notification in the Journal, direct:

Provided that if the Register in whole, or any part thereof, is kept by using a computer and access to a computer terminal from which a person in a branch office can read a screen, or obtain a printed copy of, the particulars or other matters recorded in the Register or that part of the Register, requirement under this sub-section of keeping a copy of the Register at that branch office shall be satisfied.

(5) The Register shall at all convenient times be open to the inspection of the public subject to such conditions and restrictions as may be prescribed.

(6) If the Register in whole or any part thereof, is kept by using a computer, the requirements of sub-section (5) shall be satisfied if a person who wants to inspect the Register or that part of the Register is given access to a computer terminal from which he can read a screen, or obtain a printed copy of, the particulars or other matters recorded in the Register or that part of the Register.

11. Evidence of entries in Register and things done by Registrar.- (1) A printed, written or computer generated copy of any entry in the Register, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all High Courts or District Courts in Pakistan and in all proceedings without further proof or production of the original.

(2) A certificate purporting to be issued under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Ordinance or the rules to make or do shall be prima facie evidence of the entry having been made and of the contents thereof, or of the matter or thing having been done or not done.

12. Classification of goods and services.- (1) A trade mark may be registered in accordance with the provisions of this Ordinance in respect of-

(a) goods;

(b) services; or

(c) both goods and services,
comprised in the prescribed classification of goods or services in accordance with the international classification of goods and services.

(2) Any question arising as to the class within which any goods or services fall shall be determined by the Registrar whose decision in the matter shall be final.

13. Publication of an alphabetical index of classification of goods and services.- (1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services.

(2) Where any goods or services are not specified in the alphabetical index of goods and services, published under sub-section (1), the classification of goods and services shall be determined by the Registrar in accordance with sub-section (2) of section 12.

14. Absolute grounds for refusal of registration.- (1) The following shall not be registered, namely:-

(a) marks which do not satisfy the requirements of clause (xlvii) of section 2;

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of marks or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and

(d) trade mark which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if, before the date of application for registration, it has, in fact, acquired a distinctive character as a result of the use made of it or is a well known trade mark.

(2) A mark shall not be registered as a trade mark if it consists exclusively of-

(a) the shape which results from the nature of the goods themselves;

(b) the shape of goods which is necessary to obtain a technical result; or

(3) No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-

(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a High Court or a District Court;

(b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, per se, or in terms of goods or services it is intended to be so registered; or

(4) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

15. Limitation as to colour.- (1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of colour it shall be deemed to be registered for all colours.

16. Use of names of chemical compounds barred.- (1) No word which is the commonly used and accepted name of any single chemical element or single chemical compound as distinguished from a mixture or which is declared by the World Health Organization and notified in the prescribed manner by the Registrar, from time to time, as an international non-proprietary name shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding anything in section 44, be deemed for the purposes of section 98 to be an entry made in the Register without sufficient cause or an entry wrongly remaining on the Register, as the circumstances may require.

(2) This section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a licensee of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

17. Relative grounds for refusal of registration.- (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.

(2) A trade mark shall not be registered because-

(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is registered; or

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is registered.

and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.

(3) A trade mark which-

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered.

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

(4) A trade mark shall not be registered if, or to the extent that, its use in 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), (2) and (3) or clause (a) of this sub-section, in particular by virtue of the law of copyright, design right or registered designs.

(5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

(6) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar, if thinks fit, may refuse to register any of them until their rights have been determined by the High Court or a District Court.

18. Meaning of "earlier trade mark".- (1) In this Ordinance, "earlier trade mark" means-

(a) a registered trade mark or a Convention trade mark as per the Paris Convention which has a date of application for registration earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;

(b) a trade mark filed under sub-section (1) of section 26; or

(c) a trade mark which, on the date of application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application was entitled to protection under the Paris Convention as a well known trade mark.

(2) References in this Ordinance to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of clause (a) or (b) of sub-section (1) subject to its being so registered.

(3) A trade mark shall, within clause (a) or (b) of sub-sections (1), whose registration expires, continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the Registrar is satisfied that there was no bona fide use of the mark during two years immediately preceding the expiry.

19. Raising of relative grounds in case of honest concurrent use.- (1) Where on application for the registration of a trade mark it appears to the Registrar that there is-

(a) an earlier trade mark in relation to which the conditions set out in sub-section (1), (2) or (3) of section 17 obtaining; or

(b) an earlier right in relation to which the condition set out in sub-section (4) of section 17 is satisfied.

but the applicant proves to the satisfaction of the Registrar that there has been honest concurrent use of the trade mark for which registration is sought, the Registrar shall not refuse the application by reason of the earlier trade mark or other right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(2) For the purposes of this section, "honest concurrent use" means such use in Pakistan, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of sub-section (2) of section 10 of the Trade Marks Act, 1940 (V of 1940).

(3) Nothing in this section shall affect-

(a) the refusal of registration on the grounds mentioned in section 14; or

(b) the making of an application for a declaration of invalidity under sub-section (2) of section 80.

20. Registration of parts of trade marks and of trade marks as a series.- (1) Where the proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.

(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark.

(3) Where a person claiming to be the proprietor of several trade marks in respect of the same goods or services or description of goods or description of services which while resembling each other in the material particulars thereof are yet different in respect of-

(a) statements or representations as to the goods or services in relation to which the trade marks are respectively used or proposed to be used;

(b) statements or representations as to number, price, quality or names of places;

(d) the colour or any part of the trade mark.

seeks to register those trade marks, they may be registered as a series in one registration.

21. Registration subject to disclaimer.- If a trade mark contains-

(a) any part not separately registered as a trade mark in the name of the proprietor;

(b) any part for the separate registration of which no application has been made; or

the tribunal, in deciding whether the trade mark shall be entered or shall remain on the Register, may require, as a condition of its being on the Register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration:

Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

CHAPTER III.- PROCEDURE FOR, AND DURATION OF, REGISTRATION

22. Application for registration.- (1) An application for registration of a trade mark shall be made in writing to the Registrar in the prescribed manner.

(2) Without limiting the particulars that may be included in an application, the application shall contain-

(a) a request for registration of a trade mark;

(b) full name and address of the applicant;

(d) international classification of goods or services;

(e) a representation of the trade mark; and

(f) full name, address and contact details of agent, in case the application, on behalf of the applicant, if made by his agent.

(3) The application shall state that the trade mark is being used by the applicant, or with his consent, in relation to goods or services, or that he has a bona fide intention that it should be used.

(4) The Registrar may refuse to admit an application if it does not contain all the particulars required under sub-sections (2) and (3).

(5) The application shall be subject to the payment of the application fee as may be prescribed.

23. Date of filing.- (1) The date of filing of an application for registration of a trade mark shall be the date on which documents containing particulars specified in section 22 are furnished to the Registrar.

(2) References in this Ordinance to the date of application for registration shall be to the date of filing of the application.

24. Co-ownership of trade mark.- (1) Where the relations between two or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except-

(a) on behalf of both or all of them; or

(b) in relation to goods or services or both with which all of them are connected in the course of trade.

the persons may jointly apply for its registration under section 22.

(2) Where a trade mark is registered in the name of two or more persons jointly, each of them shall be entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.

(3) The following provisions shall apply where two or more persons are co-proprietors of a registered trade mark, by virtue of sub-section (2) or otherwise.

(4) Subject to any agreement to the contrary, each co-proprietor shall be entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the others, any act which would otherwise amount to an infringement of the registered trade mark.

(5) One co-proprietor may not, without the consent of the other or others.

(i) grant a licence to the use of the registered trade mark; or

(ii) assign or charge his share in the registered trade mark.

(6) Infringement proceedings may be brought by any co-proprietor but he may not, without the leave of the High Court or District Court, proceed with the action unless the other, or each one of the others, is either joined as a plaintiff or added as a defendant.

(7) A co-proprietor who is thus arraigned as a defendant shall not be made liable for any costs in the action unless he takes part in the proceedings.

(8) Nothing in sub-sections (6) and (7) shall affect the granting of interlocutory relief on the application of a single co-proprietor.
(9) Nothing in this section shall affect the mutual rights and obligations of trustees or personal representatives or their rights and obligations as such.

25. Meaning of Convention application, and right to priority.- (1) A "Convention application" means an application duly made by a person for registration of a trade mark in one or more than one Convention country.

(2) If-

(a) a person has duly made a "Convention application"; and

(b) within six months from the date on which the Convention application or first of the Convention applications was made, that person or another person hereinafter referred to as the "successor in title" of whom that person is a predecessor in title applies to the Registrar in the prescribed manner for the registration of the same trade mark under this Ordinance in respect of some or all of the same goods or services or both in respect of which registration was sought in that Convention country or those Convention countries,

that person or that person's successor in title may, when filing the application under this Ordinance, or within the prescribed period after filing the application under this Ordinance, but before the application is accepted, has a right to priority for the registration of the trade mark.

(3) If the application for registration under this Ordinance is made within the prescribed priority period mentioned in sub-section (2)-

(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application; and

(b) the registrability of the trade mark shall not be affected by any use of the mark in Pakistan in the period between that date and the date of the application under this Ordinance.

(4) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.

Explanation.- For the purposes of this sub-section, a "regular national filing" means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.

(5) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application of which the date of filing is the starting date of the period of priority, if at the time of the subsequent application-

(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and

(b) it has not yet served as a basis for claiming a right of priority.

(6) The previous application referred to in sub-section (5), may not thereafter serve as a basis for claiming a right of priority.

(7) The manner of claiming a right to priority on the basis of Convention application shall be such as may be prescribed.

(8) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.

(9) The reference in sub-section (2) to the applicants "successor in title" shall be construed accordingly.

26. Application to provide temporary protection during exhibition.- (1) The applicant for registration of a trade mark who has exhibited goods bearing the mark or has rendered services under the trade mark at an official or officially recognized exhibition and who applies for registration of that trade mark, within six months from the day on which the goods bearing the trade mark or the services rendered under the trade mark were first exhibited in the exhibition, shall, on his request, be deemed to have applied for registration of the trade mark on that day.

(2) Evidence of the exhibition of goods bearing the trade mark or services rendered under the trade mark must be given by a certificate issued by the competent authorities of the exhibition, stating the date on which the trade mark was first used in connection with goods or services included in the exhibition.

(3) The provision of this section shall not extend any other priority rights to the applicant in respect of the same trade mark.

(4) The grant of temporary protection in respect of goods or services during exhibition shall be subject to such conditions as may be prescribed.

27. Examination of application.- (1) The Registrar shall, as soon as practicable, examine whether an application for registration of a trade mark satisfies the requirements prescribed under this Ordinance.

(2) For the purposes of sub-section (1), the Registrar shall carry out a search, to the extent as he considers necessary, of earlier trade marks.

(3) If it appears to the Registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representation or to amend the application.

(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse to accept the application.

(5) If it appears to the Registrar that the requirements for registration are met, he shall accept the application absolutely or subject to such conditions or limitations, if any, as he may think fit.

(6) In the case of a refusal or conditional acceptance, the Registrar shall state in writing the grounds of his decision and the materials used by him in arriving thereat.

(7) If the tribunal is of opinion that it is fair and reasonable in all the circumstances of the case to do so, may at any time, whether before or after acceptance, correct any error in, or in connection with the application or may permit the applicant to amend his application upon such terms as it may think fit:

Provided that no amendment or correction shall be permitted in the application which substantially affects the identify of the trade mark or extends the goods or services covered by the application:

Provided further that if the amendment or correction in the application is permitted after the application has been advertised, the amendment or correction shall also be published.

28. Publication, opposition proceedings and observations.- (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the Journal, and for all legal purposes, advertisement of the trade mark in the Journal shall constitute sufficient notice of acceptance of the trade mark:

Provided that the Registrar may cause an application to be advertised before acceptance where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do:

Provided further that where an application is advertised by reason of any special circumstances under the above proviso, the Registrar shall simultaneously notify the exceptional circumstances which led him so to do.

(2) Any person may, within two months from the date of the advertisement or re-advertisement of an application for registration or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the registration.

(3) The notice under sub-section (2), shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

(4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within one month from the receipt by the applicant of such copy of the notice of opposition or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and, if he does not do so he shall be deemed to have abandoned his application.

(5) If the applicant sends the counter-statement referred to in sub-section (4), the Registrar shall serve in the prescribed manner a copy of the counter-statement on the opponent. If the opponent deems necessary, he may within one month from the receipt of such copy of the counter-statement, or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, send to the Registrar in the prescribed manner a rejoinder.

(6) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of the rejoinder to the applicant.

(7) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.

(8) The Registrar shall, unless the proceedings are discontinued or dismissed, after giving to the opponent and to the applicant an opportunity of being heard, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(9) If the Registrar is of opinion that it is fair and reasonable in all circumstances of the case to do so, he may, on request made in the prescribed manner, permit correction of any error in, or any amendment of, a notice of opposition, a counter-statement, or a rejoinder on such terms as he thinks just.

29. Grounds of opposition.- (1) The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Ordinance except the ground that the trade mark cannot be represented graphically.

(2) The registration of a trade mark may be opposed on the ground that the applicant does not intend-

(a) to use, or authorize the use of, the trade mark in Pakistan; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Pakistan.

in relation to goods, services or both specified in the application.

(3) The registration of a trade mark may be opposed on any of the following grounds that:

(a) the applicant is not the proprietor of the trade mark;

(b) the application, or a document filed in support of the application, was amended contrary to the provisions of this Ordinance;

(c) the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars; or

(d) the pre-acceptance advertisement of the application under exceptional circumstances is without sufficient cause or reason.

(4) The registration of trade mark in respect of particular goods or services may be opposed on the grounds that-

(a) it is substantially identical with, or deceptively similar to, a well known trade mark, or a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would cause dilution or would be likely to deceive or cause confusion.

(5) The registration of a trade mark in respect of particular goods may be opposed on the ground that the trade mark contains or consists of a mark that is a geographical indication for goods originating in-

(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated.

(6) The provisions of clause (b) of sub-section (2) of section 17 shall remain in abeyance if the earlier trade mark application is under opposition.

30. Circumstances in which opposition may proceed in the name of a person other than the person who filed the notice of opposition.- If -

(a) after a person has given a notice of opposition, the right or interest on which the person relies while giving the notice of opposition becomes vested in another person; and

(b) the other person-

(i) notifies the Registrar in the prescribed manner that the right or interest is vested in him; and

(ii) does not withdraw the opposition.

the opposition may proceed as if the notice of opposition had been given in that other person's name.

31. Withdrawal of application.- (1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.

(2) In case the application has been advertised, the withdrawal or restriction under sub-section (1) shall also be published.

32. Definition of divisional application.- (1) A divisional application means an other application by a person who has already made an application under section 22 for registration of a trade mark in respect of certain goods, services or