Ordinance XIX of 2001 · 91 pages
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THE TRADE MARKS ORDINANCE, 2001
CONTENTS
CHAPTER I. __ PRELIMINARY
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
10A. Validity of electronic documents
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
Page 1 of 91
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
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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
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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
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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 XA
INTERNATIONAL REGISTRATION OF TRADE MARKS
92A. International registration under Madrid Protocol
92B. Definitions
92C. Trade Marks Registry to deal with international applications
92D. International application originating from Pakistan
92G. Duration and renewal of international registration
92H. Transformation
92I. Extracts from the international register
CHAPTER XI.__SPECIAL PROVISIONS FOR TEXTILE GOODS
93. Textile goods
94. Restrictions on registration of textile goods
95. Advisory Committees
CHAPTER XII.__RECTIFICATION AND CORRECTION OF THE REGISTER
96. Rectification or correction of Register
97. Adoption of entries to new classification
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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 IP Tribunal
118. Costs of Registrar in proceedings before the High Court or an IP Tribunal
119. Burden of proving use of trade mark
120. Certain persons to be public servants
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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
THE SECOND SCHEDULE
THIRD SCHEDULE
THE FOURTH SCHEDULE
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THE TRADE MARKS ORDINANCE, 2001
ORDINANCE NO. XIX OF 2001
[13th April, 2001]
AN
ORDINANCE
to amend and consolidate the law relating to trade marks
WHEREAS it is expedient to amend and consolidate the law relating to trade marks and
unfair competition and to provide for registration and better protection of trade marks and for the
prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith;
AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of
the Proclamation of the fourteenth day of October, 1999, and the Provisional Constitution Order
No. 1 of 1999;
AND WHEREAS the President is satisfied that circumstances exist which render it
necessary to take immediate action;
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth
day of October, 1999 and the Provisional Constitution Order No. 1 of 1999, read with the
Provisional Constitution (Amendment) Order No. 9 of 1999, and in exercise of all powers
enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to
make and promulgate the following Ordinance:—
CHAPTER I.__ PRELIMINARY
1. Short title, extent and commencement.___(1) This Ordinance may be called the Trade
Marks Ordinance, 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. Definations.—In this Ordinance, unless there is anything repugnant in the subject or
context,__
1
[(i) “Act” means the Intellectual Property Organization of Pakistan Act, 2012 (Act
No. XXII of 2012);
(ia) “administrative division” means the division to which business of this
Ordinance stands allocated;]
1
Ins. by Act No. LVIII of 2023, s.2.
Page 8 of 91
1
[(ib)] “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;
1
[(ix) “Counterfeit trade mark goods” means any goods including packaging bearing
without authorization a trade mark which is identical or deceptively similar 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 infringes
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 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:
1
Renumbered and Subs. by Act No. LVIII of 2023, s.2.
Page 9 of 91
(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;
1
(xiv) [* * * * * * *]
(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 subsection (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;
(c) any mark or arrangement or combination thereof when applied__
(i) to goods in such a manner as to be likely to lead persons to
believe that the goods are the manufacture of 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 service 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,__
1
Omitted by Act No. LVIII of 2023, s.2.
Page 10 of 91
(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;
1
[(xix) “geographical indication” shall have the same meaning as assigned thereto in
the Geographical Indications (Registration and Protection) Act, 2020 (XVIII
of 2020);]
(xx) “goods” means anything which is subject of trade, commerce or manufacture;
1
[(xxa) “IP Tribunal” means the Tribunal established under section 16 of the Act;
(xxb) “international application” means an application for the international
registration of trademarks in accordance with Madrid Protocol;]
(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;
1
[(xxiiia) “Madrid Protocol” means the Protocol as defined in section 92B;]
(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;
1
Subs. and Ins. by Act No. LVIII of 2023, s.2.
Page 11 of 91
(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;
1
[(xxviia) “Organization” means the Intellectual Property Organization of Pakistan
established under section 3 of the Act;]
(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 authorised 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 persons;
(xxxiii) “prescribed” means prescribed by rules made, in relation to proceedings
before a High Court, by such High Court, and in other cases, made under
this Ordinance;
(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;
1
Ins. by Act No. LVIII of 2023, s.2.
Page 12 of 91
(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 to 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 variations, 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” included 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
(c) as to-fitness for the purpose strength, performance or behaviour of
any goods, being drugs or foods; or
(d) as to the place or country in which or the time at which any goods or
services were made, produced or provided, as the case may be; or
(e) as to the name and address or other indication of the identity of the
manufacturer or of the person providing the services or of the persons
Page 13 of 91
for whom the goods are manufactured or services provided; or
(f) as to the mode of manufacture or producing any goods or providing
services; or
(g) as to the material of which any goods are composed; or
(h) as to any goods being the subject of an existing patent, privilege or
copyright, and includes―
(a) any description as to the use of any mark which according to
the custom of the trade is commonly taken to be an
indication of any of the above matters;
(b) any description as to any imported goods contained in any bill
of entry or shipping bill; and
(c) any other description which is likely to be misunderstood or
mistaken for all or any of the said matters;
(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;
1
[(ii) “Tribunal” means the Registrar, as the case may be, the High Court or
IP Tribunal 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___
1
Subs. by Act No. LVIII of 2023, s.2.
Page 14 of 91
(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 the 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;
Page 15 of 91
(c) to the Registrar shall be construed as including a reference to any officer when
discharging the functions of the Registrar in pursuance of sub-section (2) of
section 7; and
(d) to the Trade Marks Registry shall be construed as including a reference to any
branch of the Trade Marks Registry.
5. Decision by tribunal regarding use of a trade mark.___(1) A tribunal may, having regard
to the circumstances of a case, if it thinks fit, decide that a person has used a trade mark if it is
established that the person has used the trade mark with additions or alterations that do not
substantially affect the identity of the trade mark.
Explanation.___For removal of doubts, it is clarified that if a trade mark consists of any
combination of any letter, word, name or numeral, any aural representation of the trade mark shall
be, for the purposes of this Ordinance, a use of the trade mark.
(2) The application in Pakistan of a trade mark to goods or services to be exported from
Pakistan and any other act done in Pakistan in relation to goods or services to be so exported which,
if done in relation to goods or services to be sold or otherwise traded in within Pakistan would
constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation
to those goods or services for any purpose for which such use is material under this Ordinance or any
other law for the time being in force.
(3) The use of a registered trade mark in relation to goods or services between which and the
person using the mark any form of connection in the course of trade subsists shall not be deemed to
be likely to cause deception or confusion on the ground only that the mark has been or is used in
relation to goods or services between which and the person using the mark or any predecessor in his
business different form of connection in the course of trade subsisted or subsists.
6. Application of other laws not barred.___The provisions of this Ordinance shall be in
addition to, and not in derogation of any other law for the time being in force.
CHAPTER II.__REGISTRAR, TRADE MARKS REGISTRY AND
REGISTRATION OF TRADE MARKS
Appointment of Registrar and other officers.__(1) The Organization may, by
1[7.
notification in the official Gazette, appoint in the prescribed manner an officer as Registrar of Trade
Marks.
(2) The Organization may appoint such other officers with such designations as it deem fit for
performing under superintendence and direction of the Registrar, such functions of the Registrar
under this Ordinance as he may, from time to time, authorise them to discharge.]
1
Subs. by Act No. LVIII of 2023, s.3.
Page 16 of 91
8. Power of Registrar to review, withdraw or transfer cases.___The Registrar may, by
order in writing___
(a) review any function, matter, case or decision of any officer; or
(b) withdraw any function, matter or case from any officer or staff,
and deal with such function, matter or case himself either de novo or from the stage it was so
withdrawn, or transfer the same to another officer or staff at any stage.
9. Trade Marks Registry and branches thereof.___(1) For the purposes of this Ordinance,
there shall be established a Trade Marks Registry;
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 1[the IPO Policy Board] 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 1[Organization], 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.
1
Subs. by Act No. LVIII of 2023, ss. 4-5.
Page 17 of 91
(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.
1
[10A. Validity of electronic documents.___The electronic receipts and issuance of all the
documents under this Ordinance shall be valid and accepted for the purposes of evidence.]
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 1[the High
Court or IP Tribunal] and in all proceedings is 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.
1
Ins. and subs. by Act No. LVIII of 2023, ss. 6-7
Page 18 of 91
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 bone fide and established
practices of the trade;
Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d)
if, before the date of application for registration, it has, in fact, acquired a distinctive character as a
result of the use made of it or is a well known trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively of___
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape of which gives substantial value to the goods.
(3) No trade mark on 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 1[the High 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
(c) be contrary to any law, for the time being in force, or morality.
(4) A trade mark shall not be registered if or to the extent that the application is made in bad
faith.
1
Subs. by Act No. LVIII of 2023, s.8.
Page 19 of 91
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 license 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 or 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___
Page 20 of 91
(a) by virtue of any law, in particular, the law of passing off, protecting an un-
registered 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-section (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 arc 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, 1[or services or description of services] the Registrar, if thinks fit, may
refuse to register any of them until their rights have been determined by the High Court 1[* * *].
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-section (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___
1
Ins. and Omitted by Act No. LVIII of 2023, s.9.
Page 21 of 91
(a) an earlier trade mark in relation to which the conditions set out in sub-section
(1), (2) or (3) of section 17 obtain; or
(b) an earlier right in relation to which the condition set out in sub-section (4) of
section 17 is satisfied.
but the applicant proves to the satisfaction of the Registrar that there has been honest concurrent use
of the trade mark for which registration is sought, the Registrar shall not refuse the application by
reason of the earlier trade mark or other right unless objection on that ground is raised in opposition
proceedings by the proprietor of that earlier trade mark or other earlier right.
(2) For the purposes of this section, “honest concurrent use” means such use in Pakistan, by
the applicant or with his consent, as would formerly have amounted to honest concurrent use for the
purposes of sub-section (2) of section 10 of the Trade Marks Act, 1940 (V of 1940).
(3) Nothing in this section shall affect___
(a) the refusal of registration on the grounds mentioned in section 14; or
(b) the making of an application for a declaration of invalidity under sub-section
(2) of section 80.
20. Registration of parts of trade marks and of trade marks as a series. ___(1) Where the
proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he
may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the
incidents of an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same
goods or services or description of goods or description of services which while resembling each
other in the material particulars thereof are yet different in respect of___
(a) statements or representations as to the goods or services in relation to which
the trade marks are respectively used or proposed to be used;
(b) statements or representations as to number, price, quality or names of places;
(c) other matter of a non-distinctive character which does not substantially affect
the identity of the trade mark; or
(d) the colour or any part of the trade mark.
seeks to register those trade marks, they may be registered as a series in one registration.
21. Registration subject to disclaimer.___If a trade mark contains___
(a) any part not separately registered as a trade mark in the name of the proprietor;
(b) any part for the separate registration of which no application has been made;
or
Page 22 of 91
(c) any matter common to the trade, or otherwise of a non-distinctive character.
the tribunal, in deciding whether the trade mark shall be entered or shall remain on the Register, may
require, as a condition of its being on the Register, that the proprietor shall either disclaim any right
to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the
exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the
tribunal may consider necessary for the purpose of defining the rights of the proprietor under the
registration;
Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except
such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
CHAPTER III.__PROCEDURE FOR AND DURATION OF REGISTRATION
22. Application for registration.___(1) An application for registration of a trade mark shall
be made in writing to the Registrar in the prescribed manner.
(2) Without limiting the particulars that may be included in an application, the application
shall contain___
(a) a request for registration of a trade mark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the
trade mark;
(d) international classification of goods or services;
(e) a representation of the trade mark; and
(f) full name, address and contact details of agent, in case the application, on
behalf of the applicant, if made by his agent.
(3) The application shall state that the trade mark is being used by the applicant, or with his
consent, in relation to goods or services, or that he has a bona fide intention that it should be used.
(4) The Registrar may refuse to admit an application if it does not contain all the particulars
required under sub-sections (2) and (3).
(5) The application shall be subject to the payment of the application fee as may be
prescribed.
23. Date of filing.___(1) The date of filing of an application for registration of a trade mark
shall be the date on which documents containing particulars specified in section 22 are furnished to
the Registrar.
(2) References in this Ordinance to the date of application for registration shall be to the date
of filing of the application.
Page 23 of 91
24. Co-ownership of trade mark.___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 it 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 1[IP Tribunal], 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 the 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.
1
Subs. by Act No. LVIII of 2023, s.10.
Page 24 of 91
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.
Page 25 of 91
(6) The previous application referred to in sub-section (5), may not thereafter serve as a basis
for claiming a right of priority.
(7) The manner of claiming a right to priority on the basis of a Convention application shall
be such as may be prescribed.
(8) A right to priority arising as a result of a Convention application may be assigned or
otherwise transmitted, either with the application or independently.
(9) The reference in sub-section (2) to the applicants “successor in title” shall be construed
accordingly.
26. Application to provide temporary protection during exhibition.__ (1) The applicant for
registration of a trade mark who has exhibited goods bearing the mark or has rendered services under
the trade mark at an official or officially recognized exhibition and who applies for registration of
that trade mark, within six months from the day on which the goods bearing the trade mark or the
services rendered under the trade mark were first exhibited in the exhibition, shall, on his request, be
deemed to have applied for registration of the trade mark on that day.
(2) Evidence of the exhibition of goods bearing the trade mark or services rendered under the
trade mark must be given by a certificate issued by the competent authorities of the exhibition,
stating the date on which the trade mark was first used in connection with goods or services included
in the exhibition.
(3) The provision of this section shall not extend any other priority rights to the applicant in
respect of the same trade mark.
(4) The grant of temporary protection in respect of goods or services during exhibition shall
be subject to such conditions as may be prescribed.
27. Examination of application.___(1) The Registrar shall, as soon as practicable, examine
whether an application for registration of a trade mark satisfies the requirements prescribed under
this Ordinance.
(2) For the purposes of sub-section (1), the Registrar shall carry out a search, to the extent as
he considers necessary, of earlier trade marks.
(3) if it appears to the Registrar that the requirements for registration are not met, he shall
inform the applicant and give him an opportunity, within such period as the Registrar may specify, to
make representation or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend
the application so as to meet them, or fails to respond before the end of the specified period, the
Registrar shall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registration are met, he shall accept
the application absolutely or subject to such conditions or limitations, if any, as he may think fit.
(6) In the case of a refusal or conditional acceptance, the Registrar shall state in writing the
grounds of his decision and the materials used by him in arriving thereat.
Page 26 of 91
(7) If the tribunal is of opinion that it is fair and reasonable in all the circumstances of the
case to do so, may at any time, whether before or after acceptance, correct any error in, or in
connection with, the application or may permit the applicant to amend his application upon such
terms as it may think fit:
Provided that no amendment or correction shall be permitted in the application which
substantially affects the identity of the trade mark or extends the goods or services covered by the
application:
Provided further that if the amendment or correction in the application is permitted after the
application has been advertised, the amendment or correction shall also be published.
28. Publication, opposition proceedings and observations.___(1) When an application for
registration of a trade mark has been accepted, whether absolutely or subject to conditions or
limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted,
together with the conditions and limitations, if any, subject to which it has been accepted, to be
advertised in the Journal, and for all legal purposes, advertisement of the trade mark in the Journal
shall constitute sufficient notice of acceptance of the trade mark:
Provided that the Registrar may cause an application to be advertised before acceptance
where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and
where an application has been so advertised the Registrar may, if he thinks fit, advertise it again
when it has been accepted, but shall not be bound so to do:
Provided further that where an application is advertised by reason of any special
circumstances under the above proviso, the Registrar shall simultaneously notify the exceptional
circumstances which led him so to do.
(2) Any person may, within two months from the date of the advertisement or re-
advertisement of an application for registration or within such further period not exceeding two
months in the aggregate, as the Registrar, on application made to him in the prescribed manner and
on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the
registration.
(3) The notice under sub-section (2), shall be given in writing in the prescribed manner, and
shall include a statement of the grounds of opposition.
(4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant,
and within one month from the receipt by the applicant of such copy of the notice of opposition, or
within such further period not exceeding two months in the aggregate, as the Registrar, on
application made to him in the prescribed manner and on payment of the prescribed fee, may allow,
the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds
on which he relies for his application, and, if he does not do so he shall be deemed to have
abandoned his application.
(5) If the applicant sends the counter-statement referred to in sub section (4), the Registrar
shall serve in the prescribed manner a copy of the counter-statement on the opponent. If the opponent
deems necessary, he may within one month from the receipt of such copy of the counter-statement,
or within such further period not exceeding two months in the aggregate, as the Registrar, on
Page 27 of 91
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
Page 28 of 91
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 contain 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 provision 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.
s
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 (l) shall also be published.
32. Definition of divisional application.___(1) A divisional application means an other
application by a person who has already made an application under section 22 for registration of a
trade mark in respect of certain goods, services or both and made, in accordance with this section
for__
(a) the registration of a part only of the trade mark in respect of any or all those
goods, services or both; or
Page 29 of 91
(b) the registration of the trade mark in respect of some only of the goods,
services or both in respect of which registration is sought under the application
made under section 22.
(2) A divisional application for registration of a trade mark or a part of a trade mark may
be made only if the application under section 22 for registration of the trade mark is pending.
(3) A divisional application shall proceed as an application made under section 22:
Provided that a divisional application shall be taken to have been filed on the day on which
the application under section 22 was filed.
33. Registration. ___(1) Where an application has been accepted and___
(a) no notice of opposition has been given within the period referred to in
sub-section (2) of section 28; or
(b) all opposition proceedings have been withdrawn or decided in favour
of the applicant.
the Registrar shall, within such period as may be prescribed, register the trade mark, unless it appears
to him having regard to matters coming to his notice since he accepted the application that it was
accepted in error.
(2) A trade mark shall not be registered unless any fee prescribed for the registration is paid
within the prescribed period. If the fee is not paid within the prescribed period, the application shall
be deemed to have been 1[abandoned as per procedure prescribed under the rules].
(3) A trade mark when registered shall be registered as of the date of filing of the application
for registration and that date shall be deemed for the purposes of this Ordinance to be the date of
registration.
(4) On the registration of a trade mark the Registrar shall publish the registration in the
prescribed manner and issue to the applicant a certificate in the prescribed form of registration,
sealed with the seal of the Trade Marks Registry.
(5) Where registration of a trade mark is not completed within twelve months from the date
of the application by reason of default on the part of the applicant, the Registrar may, after giving
notice to the applicant in the prescribed manner, treat the application as abandoned unless it is
completed within the time specified in that behalf in the notice.
1
Subs. by Act No. LVIII of 2023, s.11.
Page 30 of 91
34. Duration and renewal of registration.___(1) A trade mark shall be registered for a period
of ten years from the date of registration.
(2) The Registration may be renewed under section 35 for a further period of ten years.
35. Renewal of registration.___(1) The registration of a trade mark may be renewed at the
request of the proprietor subject to payment of such renewal fee as may be prescribed.
(2) The Registrar shall inform the proprietor of a registered trade mark, before the expiry of
the registration, of the date of expiry and the manner in which the registration may be renewed as
may be prescribed.
(3) A request for renewal shall he made, along with the renewal fee, before the expiry of the
registration as may be prescribed, failing which the request may be made and the renewal fee paid
within such further period of not less than six months as may be prescribed in which case an
additional renewal fee shall be paid within that period.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) Except at the time of first renewal, the Registrar may require that request for renewal be
accompanied with evidence of use of the trade mark in Pakistan.
(6) If the registration is not renewed in accordance with the provisions of this section, the
Registrar shall remove the trade mark from the Register:
Provided that the Registrar may restore the registration of a trade mark which has been
removed from the Register, subject to such conditions, if any, as may be prescribed.
(7) The renewal or restoration of the registration of a trade mark shall be published in the
Journal.
36. Effect of removal from Register for failure to pay fee for renewal. ___Where a trade
mark has been removed from the Register, under this Ordinance, for failure to pay the fee for
renewal, it shall nevertheless, for the purposes of any application for the registration of another trade
mark during one year next after the date of the removal, be deemed to be a trade mark already on the
Register, unless the tribunal is satisfied either___
(a) that there has been no bona fide use of the trade mark which has been removed
during the two years immediately preceding its removal; or
(b) that no deception or confusion would be likely to arise from the use of the
trade mark which is the subject of the application for registration by reason of
any previous use of the trade mark which has been removed.
37. Alteration of registered trade mark.___(1) Subject to sub-section (2), a registered trade
mark shall not be altered in the Register, during the period of registration or on renewal.
(2) The Registrar may, at the request of the proprietor, allow the alteration of a registered
trade mark where the mark includes the proprietor’s name or address and the alteration is limited to
alteration of that name or address and does not substantially affect the identity of the mark.
Page 31 of 91
(3) In case any alteration is made under sub-section (2), the Registrar shall publish such
alteration and the objections by any person claiming to be affected by it, in such manner as may be
prescribed.
38. Surrender of registered trade mark.___(1) A registered trade mark may be surrendered
by the proprietor in respect of some or all of the goods or services for which it is registered.
(2) The Federal Government may by rules to published in the official Gazette, provide___
(a) as to manner and effect of a surrender; and
(b) for protecting the interests of other persons having a right in the registered
trade mark.
CHAPTER IV.___REGISTRATION AND EFFECT THEREOF
39. Rights conferred by registration.___(1) A registered trade mark shall be a personal
property.
(2) The proprietor of a registered trade mark shall have exclusive rights in the trade mark
which are infringed by use of the trade mark in 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 law for the time being in force, the proprietor shall also have the right to obtain
relief under this Ordinance if the trade mark is infringed.
(4) References in this Ordinance to the infringement of a registered trade mark shall be to any
such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration:
Provided that no infringement proceedings shall begin before the date on which the trade
mark is in fact registered.
(6) The rights conferred by registration of trade marks under this Ordinance shall extend to
trade marks registered under the Trade Marks Act, 1940 (V of 1940).
40. Infringement of registered trade mark.__ (1) A person shall infringe a registered trade
mark if such person uses in the course of trade a mark which is identical with the trade mark in
relation to goods or services which are identical with those for which it is registered.
(2) A person shall infringe a registered trade mark if such person uses in the course of trade a
mark where because___
(a) the mark is identical with the trade mark and is used in relation to goods or
services similar to the goods or services for which the trade mark is registered;
or
(b) the mark is deceptively similar to the trade mark and is used in relation to
goods or services identical with or similar to the goods or services for which
the trade mark is registered,
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there exists a likelihood of confusion on the part of public, which includes the likelihood of
association with the trade mark.
(3) A person shall infringe a registered trade mark if the person uses in the course of trade a
mark which is identical with, or deceptively similar to, the trade mark in relation to—
(a) goods of the same description as that of goods in respect of which the trade
mark is registered;
(b) services that are closely related to goods in respect of which the trade mark is
registered;
(c) services of the same description as that of services in respect of which the
trade mark is registered; or
(d) goods that are closely related to services in respect of which the trade mark is
registered.
(4) A person shall infringe a registered trade mark if the person uses in the course of trade a
mark which___
(a) is identical with or deceptively similar to the trade mark; and
(b) is used in relation to goods or services which are not similar to those for which
the trade mark is registered,
where the trade mark is a well known trade mark, or has a reputation in 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 shall infringe a registered trade mark if the person uses such registered trade
mark as his trade name or part of his trade name.
(6) A person shall infringe a registered trade mark if the person uses such registered trade
mark as his domain name or part of his domain name or obtains such domain name without the
consent of the proprietor of the registered trade mark, with the intention of selling such domain name
to another including the proprietor of the registered trade mark.
(7) A person who applies a registered trade mark to material intended to be used for labeling
or packaging goods shall be treated as a party to any use of the material which infringes the
registered trade mark if when he applied the mark he knew or had reason to believe that the
application of the mark was not duly authorised by the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts
them on the market or has in possession for sale or any purpose of trade or manufacture any goods
bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a
registered trade mark, unless he proves that___
(a) having taken all reasonable precautions, he had no reasons to suspect the
genuineness of the mark; and
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(b) on demand made by tribunal, he gave all the information in his power with
respect to the persons from whom he obtained such goods; or
(c) he had, otherwise acted innocently.
41. Infringement of trade mark by breach of certain restrictions.___Subject to the
provisions of section 42, if the proprietor of a registered trade mark or a licensee having power to do
so, has caused to be displayed on goods the words “registered goods” in respect of which a trade
mark is registered, or on their packaging, or on the container in which they are offered to the public,
a notice prohibiting any of the following acts___
(a) apply the trade mark to registered goods or using the trade mark in physical
relation to them, after the state, condition, get-up or packaging in which they
were originally offered to the public has been altered;
(b) altering, or partially removing or obliterating, any representation of the trade
mark applied to registered goods and used in physical relation to them;
(c) if the trade mark has been applied to registered goods, or used in physical
relation to them, together with other matter indicating that the proprietor or the
licensee has dealt with the goods, removing or obliterating, totally or in part,
any representation of the trade mark without totally removing or obliterating
the other matters;
(d) applying another trade mark to registered goods or using another trade mark in
physical relation to them; or
(e) if the trade mark has been applied to registered goods, or used in physical
relation to them, using on the goods, or on the packaging or container of the
goods, any matter that is likely to injure the repute of the trade mark.
a person who does or authorizes someone to do any of the foregoing prohibiting acts shall be
liable for infringement of the trade mark:
Provided that the trade mark shall not be infringed if the owner of the goods acquired them in
good faith and without being aware of the notice of prohibition, or became the owner of the goods by
virtue of a title derived from a person who has so acquired them.
42. When a trade mark is not infringed.___(1) A person shall not infringe a registered trade
mark when___
(a) the person uses in good faith___
(i) the person's name or the name of the person's place of business, so
long as such use does not result in a likelihood of confusion or
otherwise interfere with an existing trade mark or other property right;
or
(ii) the name of the predecessor in business of the person or the name of
the predecessor's place of business;
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(b) the person uses a mark in good faith to indicate__
(i) the kind, quality, quantity, intended purpose, value, geographical
origin, or some other characteristic, of goods or services; or
(ii) the time of production of goods or of the rendering of services;
(c) the person uses the trade mark in good faith to indicate the intended purpose of
goods, in particular as accessories or spare parts, or services; or
(d) the person uses the trade mark for the purposes of comparative advertising.
(2) If the right to the use of a trade mark given under section 39 by registration is subject to
any conditions or limitations entered on the Register, such right shall not be deemed to be infringed
by the use of any such trade mark as aforesaid in any mode, in relation to goods to be sold or
otherwise traded in or in relation to services provided by, in any place, or in relation to goods or
services to be exported to any market, or in any other circumstances, to which, having regard to any
such limitations the registration does not extend.
(3) Where registration of a trade mark is subject to a disclaimer, a person shall not infringe
the trade mark by using disclaimed part of the trade mark.
43. Registration to be prima facie evidence of validity.___In all legal proceedings relating
to a trade mark registered under this Ordinance or under the Trade Marks Act, 1940 (V of 1940), the
fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of
the original registration of the trade mark and of all subsequent assignments and transmissions
thereof.
44. Registration to be conclusive as to validity after five years.___In all legal proceedings
relating to a registered trade mark, the original registration of the trade mark shall, after the
expiration of five years from the date of its original registration, be taken to be valid in all respects
unless such registration was obtained by fraud, or unless the trade mark offends against the
provisions of sub-section (3) of section 14.
45. Saving for words used as name or description of an article or a substance.___The
registration of a trade mark shall not be deemed to have become invalid by reason only of any use
after the date of the registration of any word which the trade mark contains or of which it consists as
the name or description of an article, substance or service:
Provided that if it is proved either__
(a) that there is a famous and established use of the said word as the name or
description of the article, substance or service by a person or persons carrying
on trade therein, not being use in relation to goods or services connected in the
course of trade with the proprietor or a licensee of the trade mark or in the case
of a certification trade mark in relation to goods or services certified by the
proprietor; or
(b) that the article or substance has been manufactured under a patent in force at
or granted after the commencement of this Ordinance, that a period of two
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years or more after the cesser of the patent has clapsed and that the said word
is the only practicable name or description of the article or substance,
the provisions of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or (b) of the proviso to sub-section (1) are proved
with respect to any words, then___
(a) for the purposes of any proceedings under section 96, if the trade mark
consists solely of such words, the registration of the trade mark, so far as
regards registration in respect of the article or substance in question or of any
goods of the same description, or of the service or of any services of the same
description as the case may be, shall be deemed to be an entry wrongly
remaining on the Register; or
(b) for the purposes of any other legal proceedings relating to the trade mark___
(i) if the trade mark consists solely of such words, all rights of the
proprietor under this Ordinance or any other law for the time being in
force to the use of the trade mark; or
(ii) if the trade mark contains such words and other matter, all such rights
of the proprietor to the use of such words,
in relation to the article or substance or to any goods of the same description, or to the service or to
any services of the same description, as the case may be, shall be deemed to have ceased on the date
on which the use mentioned in clause (a) of the proviso to sub-section (1) first became famous and
established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.
Page 36 of 91
CHAPTER V.__INFRINGEMENT PROCEEDINGS
46. Action for infringement.___(1) Save as otherwise provided in this Ordinance, an
infringement of a registered trade mark shall be actionable by the proprietor of the trade mark.
(2) In an action for infringement all such relief by way of damages, injunctions, accounts or
otherwise shall be available to the proprietor of the trade mark as is available in respect of the
infringement of any other property right.
(3) Nothing in this Ordinance shall be deemed to affect rights of action against any person for
passing off goods as the goods of another person or services as services provided by another person,
or the remedies in respect thereof.
47. Order for erasure of offending mark.___(1) Where a person is found to have infringed a
registered trade mark, the High Court or 1[an IP Tribunal] may make an order requiring him___
(a) to cause the offending trade mark to be erased, removed or obliterated from
any infringing goods, material or articles in his possession, custody or control;
or
(b) to secure the destruction of the infringing goods, material or articles, if is not
reasonably practicable for the offending trade mark to be erased, removed or
obliterated.
(2) If an order under sub-section (1) is not complied with, or it appears to the High Court or
1
[IP Tribunal] likely that such an order would not be complied with, the High Court or 1[an IP
Tribunal] may order that infringing goods, material or articles be delivered to such person as the
High Court or 1[an IP Tribunal] may direct for erasure, removal or obliteration of the mark, or for
destruction, as the case may be.
48. Order for delivery up of infringing goods, material or articles.___(1) The proprietor of
a registered trade mark may apply to the High Court or 1[an IP Tribunal] for an order for the delivery
up to him, or such other person as the High Court or 1[an IP Tribunal] may direct, of any infringing
goods, material or articles which a person has in his possession, custody or control in the course of a
business.
(2) An application shall not be made after the expiry of the period specified in section 50, and
no order shall be made unless the High Court or 1[an IP Tribunal] also makes, or it appears to the
High Court or 1[an IP Tribunal] that there are grounds for making, an order under section 51.
(3) A person to whom any infringing goods, material or articles are delivered in pursuance of
an order under this section shall, if an order under section 51 has not been made, retain them pending
the making of an order, or the decision not to make an order, under that section.
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Subs. by Act No. LVIII of 2023, ss. 12-13.
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(4) Nothing in this section shall affect any other power of the High Court or 1[an IP Tribunal].
49. Meaning of “infringing goods, material or articles”.___(1) Subject to sub-section (2),
goods shall be “infringing goods” in relation to a registered trade mark, if they or their packaging
bear a mark identical or deceptively similar to that mark and___
(a) the application of the mark to the goods or their packaging was an
infringement of the registered trade mark;
(b) the goads 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.
(2) Nothing in sub-section (1) shall be construed as affecting the importation of goods which
may be lawfully imported into Pakistan.
(3) Material shall be “infringing material” in relation to a registered trade mark, if it bears a
mark identical or deceptively similar to that mark and either it is___
(a) used for labeling or packaging goods, as a business paper, or for advertising
goods or services, in such a way as to infringe the registered trade mark; or
(b) intended to be so used and such use would infringe the registered trade mark.
(4) “Infringing articles” in relation to a registered trade mark, means such articles which__
(a) are specifically designed or adapted for making copies of a mark identical or
similar to that mark; and
(b) a person has in his possession, custody or control, knowing or having reason
to believe that they have been or are to be used to produce infringing goods or
material.
50. Period after which remedy of delivery be not available.___(1) An application for an
order under section 48 shall not be made after the expiry of three years from,
(a) in the case of infringing goods, the date on which the trade mark was
applied to the goods or their packaging;
(b) in the case of infringing material, the date on which the trade mark was
applied to the material; or
(c) in the case of infringing articles, the date on which they were made,
except as provided in sub-section (2).
(2) If during the whole or part of the period specified in sub-section (1), the proprietor of
the registered trade mark___
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(a) is under a disability; or
(b) is prevented by fraud or concealment from discovering the facts entitling
him to apply for an order,
an application may be made at any time before the expiry of three years from the date on
which he ceased to be under a disability or, as the case may be, could with
reasonable diligence have discovered those facts.
Explanation.___In this sub-section the expression “disability” shall have the same meaning as
in the Limitation Act, 1908 (IX of 1908).
51. Order as to disposal of infringing goods, material or articles.___(1) Where
infringing goods, material or articles have been delivered up in pursuance of an order under
section 48, an application may be made to the High Court or 1[an IP Tribunal] ___
(a) for an order that they be destroyed of forfeited to such person as the High
Court or 1[an IP Tribunal] 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 High Court or 1[an IP Tribunal]
shall consider whether other remedies available in an action for infringement of the registered trade
mark would be adequate to compensate the proprietor and any licensee and protect their interests.
(3) Where there are more persons than one interested in the goods, materials or
articles, the High Court or 1[an IP Tribunal] shall make such order as it thinks just.
(4) if the High Court or 1[an IP Tribunal] decides that no order should be made under this
section; then the person, in whose possession, custody or control the goods, material or articles
were before being delivered shall be entitled to their return.
52. Remedy for groundless threats of infringement proceedings.___(1) Where a person
threatens to bring an action against another person on the ground that the other person has
infringed___
(a) a registered trade mark; or
(b) a trade mark alleged by the person to be registered,
any person aggrieved by the threat may bring proceedings for relief against the person making the
threat.
(2) The relief may be applied for any of the following, namely:—
(a) a declaration that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; or
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Subs. by Act No. LVIII of 2023, s.14.
Page 39 of 91
(c) damages in respect of any loss he has sustained by the threats.
(3) The plaintiff shall be entitled to any relief specified in sub-section (2) unless the
defendant shows that the acts respect in respect of which proceedings were threatened constitute, or
if done would constitute, an infringement of the registered trade mark concerned.
(4) If that is shown by the defendant, as provided under sub-section (3), the plaintiff shall
be entitled to any relief specified in sub-section (2), if he shows that the registration of the trade
marks is invalid or liable to be revoked in a relevant respect.
(5) The mere notification that a trade mark is registered, or that act application for
registration has been made, shall not constitute a threat of proceedings for the purposes of this
section.
(6) The provisions of this action shall not make a lawyer, advocate or attorney liable to an
action for an act done in his professional capacity on behalf of a client.
CHAPTER VI.___IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES
53. Infringement goods, material or articles may be treated as prohibited.___(1) The
proprietor of the registered trade mark may give notice in writing to the 1[Director General, IPR
(Enforcement), Director, IPR (Enforcement) or Collector of Customs or any competent authority
under the Custom Act, 1969 (IV of 1969)] that—
(a) he is the proprietor of the registered trade mark;
(b) at a time and place specified in the notice, goods which, in relation to that
registered trade mark are infringing goods, material or articles, or bear false
indications as to their source or the identity of their manufacturer are
expected to arrive in Pakistan from outside Pakistan and that they are subject
to the control of the customs authorities under the Customs Act, 1969 (IV of
1969); and
(c) he requests the 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)] to treat such goods as prohibited goods.
54. Notice for intervention by customs authorities.___When any notice to the 1[Director
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any
competent authority under the Custom Act, 1969 (IV of 1969)] is made under section 53, it shall be
accompanied by an undertaking by the person sending the notice to indemnify the customs
authorities concerned and to compensate any importer, consignee or owner of the goods for loss or
damage resulting from the wrongful suspension of clearance of goods.
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Subs. by Act No. LVIII of 2023, ss. 15-16.
Page 40 of 91
55. Furnishing of security or equivalent assurance to customs authority.___The
1
[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any
competent authority under the Custom Act, 1969 (IV of 1969)] may require an applicant to provide
a security or equivalent assurance sufficient to protect the importer, consignee or owner of the
goods but such security or equivalent assurance shall not be such as to unreasonable deter recourse
to these procedures.
56. Collector of Customs may seize goods bearing infringing trade mark.___If goods to
which section 53 applies___
(a) bear on them a trade mark which, in the opinion of the 1[Director General,
IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or
any competent authority under the Custom Act, 1969 (IV of 1969)], 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 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or
any competent authority under the Custom Act, 1969 (IV of 1969)] shall seize the goods unless he is
satisfied that there are no reasonable grounds of believing that the trade mark shall be infringed by
the importation of the goods and the seized goods shall be kept in a secure place as directed by the
1
[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any
competent authority under the Custom Act, 1969 (IV of 1969)].
57. Notice of seizure.___The 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the Custom Act, 1969 (IV
of 1969)] shall, as soon as practicable—
(a) give, either personally or by urgent post, to the importer, consignee or
owner of the goods a notice of seizure in writing identifying the goods
and stating that they have been seized under section 56; and
(b) give to the applicant a notice in writing___
(i) identifying the goods and stating that they have been seized under
section 56;
(ii) giving the full name and address of the importer, consignee
or owner of the goods and any information that the 1[Director
General, IPR (Enforcement), Director, IPR (Enforcement) or
Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)] has and believes, on
reasonable grounds, to be likely to help the applicant to
identify the importer or the owner of the goods; and
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Subs. by Act No. LVIII of 2023, ss. 17-19
Page 41 of 91
(iii) stating that the goods shall be released to the importer,
consignee or owner of the goods unless the applicant brings an
action for infringement of the registered trade mark in respect of
goods before 1[an IP Tribunal] having jurisdiction in the matter and
gives the 1 [Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority
under the Custom Act, 1969 (IV of 1969)] notice in writing of the
action, within the period of ten working days after the applicant
has been given the notice, or if the 1[Director General, IPR
(Enforcement), Director, IPR (Enforcement) or Collector of Customs
or any competent authority under the Custom Act, 1969 (IV of 1969)]
extends the period under sub-section (1) of section 60, within such
extended period.
58. Forfeiture of goods.___If the importer, consignee or owner of any seized goods, at any
time before the applicant starts an action for infringement of the trade mark in respect of goods, by
notice in writing to the 1[Director General, TPR (Enforcement), Director, TPR (Enforcement) or
Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)], gives
consent to the goods being forfeited by the Collector of Customs, the goods shall be so forfeited by
the 1[Director General, TPR (Enforcement), Director, TPR (Enforcement) or Collector of Customs
or any competent authority under the Custom Act, 1969 (IV of 1969)].
59. Release of goods.___(1) The 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the Custom Act, 1969 (IV
of 1969)] shall release the seized goods to their designated importer, consignee or owner if, within
the specified period, the applicant has not___
(a) brought an action for infringement of the registered trade mark in respect
of the goods; and
(b) given to the 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)] notice in writing of the action.
(2) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of
Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] shall also release the
seized goods to their designated importer, consignee or owner if___
(a) before the end of the prescribed period, the applicant, by notice in writing
to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or
Collector of Customs or any competent authority under the Custom Act, 1969
(IV of 1969)], consented to the release of the goods; and
(b) at that time,
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Subs. by Act No. LVIII of 2023, ss. 19-21.
Page 42 of 91
(i) the applicant has not brought an action for infringement of the
registered trade mark in respect of the goods; or
(ii) the action brought by the applicant has been withdrawn.
(3) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of
Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] may release the
seized goods to their designated importer, consignee or owner before the end of the specified period
if___
(a) having regard to information that has come to his knowledge after the goods
were seized, he is satisfied that there are no reasonable grounds of
believing that the registered trade mark has been infringed by the importation
of the goods; and
(b) the applicant has not so far brought an action for infringement of the registered
trade mark in respect of the goods, or has not informed him of such an action.
60. Action for infringement against importation of infringing goods.___(1) The
applicant may bring an action for infringement of a registered trade mark in respect of the seized
goods and give a notice to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement)
or Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)],
subject to the provisions of clause (b), within ten working days specified in the notice given to the
applicant in respect of the goods, under section 57 or if___
(i) the applicant has, before the expiry of the specified period, applied in writing
to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or
Collector of Customs or any competent authority under the Custom Act, 1969
(IV of 1969)] for a extension of the specified period; and
(ii) the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or
Collector of Customs or any competent authority under the Custom Act, 1969
(IV of 1969)], being satisfied that in the circumstances of the case it is fair
and reasonable to do so, has extended the specified period for a
number of working days not exceeding ten days, within that period so
extended by the 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)].
(2) 1[an IP Tribunal] hearing the action___
(a) may, on the application of any person, allow that person to be joined as a
defendant in the case; and
(b) shall allow the 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)], or his duly authorised officer, to appear and
be heard.
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Subs. by Act No. LVIII of 2023, ss. 21-22
Page 43 of 91
(3) Subject to sub-section (4), in addition to any relief that 1 [an IP Tribunal] may grant
apart from the provisions of this section, the Court may—
(a) at any time, if it thinks it just, order that the seized goods be released to
their designated owner subject to such conditions that the Court considers fit
to impose; or
(b) order that the seized goods be forfeited.
(4) 1[An IP Tribunal] shall not make any order which may facilitate___
(a) re-exporting of the counterfeit trade mark goods;
(b) removing of the trade marks which have been affixed to the counterfeit trade
mark goods without authorization; and
(c) local sale of such goods.
(5) if 1[an IP Tribunal] decides that the registered trade mark was not infringed by the
importation of the goods and the designated importer, consignee or owner of the goods, satisfies the
Court that he has suffered losses or damage because the goods were seized, the Court may order the
applicant to pay the defendant compensation, in the amount determined by the Court, for any part
of the loss or damage that is attributable to any period beginning on or after the day on which the
action was brought.
(6) If, after three weeks from the day on which the action was brought, there is not in force
at any time an order of a 1[an IP Tribunal] preventing the goods from being released, the 1[Director
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any
competent authority under the Custom Act, 1969 (IV of 1969)] shall release the goods to their
designated importer, consignee or owner.
(7) If 1 [an IP Tribunal] orders that the goods be released, the 1[Director General, IPR
(Enforcement), Director, IPR (Enforcement) or Collector of Customs or any competent authority
under the Custom Act, 1969 (IV of 1969)] shall, subject to section 63, comply with the order.
61. Action for infringement by licensee in relation to any seized goods.___If an exclusive
licensee of a registered trade mark is an applicant in relation to any seized goods, the licensee
may commence an action for the infringement of the registered trade mark in respect of the goods
within the required period without first ascertaining whether the proprietor is willing to bring the
action.
62. Disposal of forfeited goods.___(1) Subject to sub-section (2), any goods forfeited under
the provisions of this Chapter shall be disposed of by the 1[Director General, IPR (Enforcement),
Director, IPR (Enforcement) or Collector of Customs or any competent authority under the Custom
Act, 1969 (IV of 1969)] in the manner as if the goods were forfeited under the Customs Act, 1969
(IV of 1969).
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(2) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of
Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] shall not dispose
of goods in a manner which may facilitate___
(a) re-exporting of the counterfeit trade mark goods;
(b) removing of the trade marks which have been affixed to the counterfeit trade
mark goods without authorization; and
(c) local sale of such goods.
63. Power of the Collector of Customs to retain control of goods.___Notwithstanding
anything contained in this Chapter, the 1[Director General, IPR (Enforcement), IPR (Enforcement)
or Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] shall
not___
(a) release, or dispose of, any goods; or
(b) take any action in relation to the goods to given effect to any order of [an IP
Tribunal] under section 60, and 1[Director General, IPR (Enforcement),
Director, IPR (Enforcement) or Collector of Customs or any competent
authority under the Custom Act, 1969 (IV of 1969)] shall apply to the
District Court to request that the goods are required and he may be allowed to
retain control of the goods under any law for the time being in force.
64. Insufficient security.___if security give under section 55 by the applicant who gave
notice in respect of a registered trade mark under section 53 or section 61 is not sufficient to meet
the expenses incurred by the Federal Government as a result of the action taken by the 1[Director
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any
competent authority under the Custom Act, 1969 (IV of 1969)] under this Chapter, because of the
notice, the amount of the difference in the expenses and the amount of security___
(a) shall be a debt due by the applicant to the Federal Government; and
(b) shall be recovered by the Federal Government under section 202 of the
Customs Act, 1969 (IV of 1969).
65. The Federal Government not be liable to loss, etc., suffered because of
seizure.___The Federal Government shall not be liable to any loss, damage or delays suffered by a
person___
(a) because the 1[Director General, IPR (Enforcement), Director, IPR
(Enforcement) or Collector of Customs or any competent authority under the
Custom Act, 1969 (IV of 1969)] seized or failed to seize goods under this
Chapter; or
(b) because of release of any seized goods.
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66. Power of the Collector of Customs to make regulations.___The 1[Director General, IPR
(Enforcement)] may make regulations prescribing the form in which notices shall be made and
requiring the person making the notices to furnish evidence as to the ownership and to
comply with such other conditions as may be specified which may include the payment of a fee to
cover the administrative costs.
CHAPTER VII.___ UNFAIR COMPETITION AND COMPARATIVE
ADVERTISEMENT
67. Definition of unfair competition and provisions relating thereto.___(1) An “unfair
competition” means any act of competition contrary to honest business practices in industrial or
commercial matters and, without prejudice to the generality of the foregoing, such acts may
include___
(a) all acts of such nature as to create confusion by any means whatsoever with
the establishment, goods, services or industrial or commercial activities of a
competitor;
(b) false allegations in the course of trade of such a nature as to discredit the
establishment, goods, services or industrial or commercial activities of a
competitor;
(c) indications or allegations the use of which in the course of trade is
liable to mislead the public as to the nature, manufacturing process,
characteristics, constituents, quality or the suitability for their purpose of the
goods or services;
(d) any act or practice, in the course of industrial or commercial matters that
results in the disclosure, acquisition or use by others of information without
the consent of the person lawfully in control of that information in a manner
contrary to honest industrial or commercial practice so long as such
information relates to sale or manufacture of goods or provision of services
and___
(i) is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that
normally deal with the kind of information in question;
(ii) has commercial value because it is secret; and
(iii) has been subject to reasonable steps under circumstances, by the
person lawfully in control of the information, to keep it secret;
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Subs. by Act No. LVIII of 2023, s.27.
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(e) making of false or deceptive statements in the course of trade;
(f) misleading advertising; or
(g) fraudulently registering or applying for registration of a trade mark.
Explanation.___For the purposes of clause (d) “a manner contrary to honest industrial or
commercial practice” shall mean, at least, practices such as breach of contract, breach of confidence
and inducement to breach, and includes the acquisition of undisclosed information by third parties
who knew, or were grossly negligent in failing to know, that such parties were involved in the
acquisition.
(2) Any act of unfair competition shall be unlawful.
(3) An action against unfair competition may be brought before 1 [an IP Tribunal] of
competent jurisdiction.
68. Misleading and comparative advertisement.___(1) Comparative advertisement shall,
as far as comparison is concerned, be lawful subject to the following conditions, namely:___
(a) it is not misleading according to clause (xxiv) of section 2, and sub-section
(2);
(b) it compares goods or services meeting the same needs or intended for the
same purpose;
(c) it objectively compares one or more material, relevant, verifiable and
representative features of those goods and services, which may include price;
(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;
(e) it does not discredit or disparage the trade marks, trade names, other
distinguishing marks, goods, services, activities or circumstances of a
competitor;
(f) for products with designation of origin, it relates in each case to products
with same designation;
(g) it does not take unfair advantage of the reputation of a trade mark, trade name
or other distinguishing marks of a competitor or of the designation of origin
of competing products; and
(h) it does not present goods or services as imitations or replicas of goods or
services bearing a protected trade mark or trade name.
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(2) In determining whether an advertising is misleading, the tribunal shall take account of all
its features, and in particular of any information it contains concerning—
(a) the characteristics of goods or services, such as their availability, nature,
execution, composition, method and date of manufacture or provision, fitness
for purpose, uses, specification, geographical or commercial origin or the
results to be expected from their use, or the results and material features of
tests or checks carried out on the goods or services;
(b) the price or the manner in which the price is calculated, and the conditions on
which the goods are supplied or the services provided; and
(c) the nature, attributes and rights of the advertiser, such as his identity and
assets, his qualifications and ownership of industrial, commercial or
intellectual property rights or his awards and distinctions.
(3) Any person having a legitimate interest in prohibiting misleading advertisement or
regulating comparative advertising may institute legal action against such advertising before the
tribunal.
(4) For all complaints made to the tribunal under sub-section (3), the tribunal shall take into
account all the interests involved and in particular the public interest before it orders___
(a) publication of a corrective statement by the advertiser;
(b) cessation of misleading advertising or unpermitted comparative advertising;
or
(c) if the misleading advertising or unpermitted comparative advertising has not
yet been published but publication is imminent, the prohibition of such
publication.
(5) This section shall not exclude voluntary control of misleading or comparative
advertisement by self-regulatory bodies and recourse to such bodies by the persons if proceedings
before such bodies are in addition to the tribunal proceedings referred to in sub-section (3).
CHAPTER VIII.___ASSIGNMENT AND TRANSMISSION
69. Assignment of registered trade mark.___(1) A registered trade mark shall be
transmissible by assignment, testamentary disposition or operation of law in the same way as other
personal or movable property.
(2) A registered trade mark shall also be transmissible either in connection with the
goodwill of a business or independently.
(3) An assignment or other transmission of a registered trade mark tray 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
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(b) in relation to use of the trade mark in a particular manner or a particular
locality.
(4) An assignment of a registered trade mark, or an assent relating to a registered trade mark
shall not be effective unless it is in writing signed by, or on behalf of, the assignor or, as the case
may be, a personal representative.
(5) The provisions of sub-section (4) shall apply to assignment by way of security as in
relation to any other assignment.
(6) Assignment or other transmission of a registered trade mark shall be the subject of
charge in the same way as other personal or movable property.
(7) Nothing in this Ordinance shall be construed as affecting the assignment or other
transmission of an unregistered trade mark as part of the goodwill of a business.
70. Registration of transactions affecting registered trade mark.___(1) On application
being made to the Registrar by___
(a) a person claiming to be entitled to an interest in, or under, a registered trade
mark by virtue of a registerable transaction; or
(b) any other person claiming to be affected by such a transaction,
the prescribed particulars of the transaction shall be entered in the Register.
(2) The following shall be registerable transactions, namely:___
(a) an assignment of a registered trade mark or any right in it;
(b) the grant of a license under a registered trade mark;
(c) the granting of any security interest whether fixed of floating over a
registered trade mark or any right in or under it;
(d) the making by personal representatives of an assent in relation to a registered
trade mark or any right in or under it; and
(e) an order of the High Court, 1[IP Tribunal] or other competent authority
transferring a registered trade mark or any right in or under it.
(3) Until an application has been made for registration of the prescribed particulars of a
registerable transaction___
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Subs. by Act No. LVIII of 2023, s.29.
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(a) the transaction shall be ineffective as against a person acquiring a
conflicting interest in, or under, the registered trade mark in ignorance of it;
and
(b) a person claiming to be a licensee by virtue of the transaction shall not
have the protection of section 69, 77 or 79.
(4) Provisions may be made by rules as to___
(a) the amendment of registered particulars relating to a licence so as to
reflect any alteration of the terms of licence; and
(b) the removal of such particulars from the Register—
(i) where it appears from the registered particulars that the licence was
granted for a fixed period and that period has expired; or
(ii) where no such period is indicated and, after such period as tray be
prescribed, the Registrar has informed the parties of his intention to
remove the particulars from the Register.
(5) Provision may also be made by rules as to the amendment or removal from the Register
of particulars relating to a security interest on the application of, or with the consent of, the person
entitled to the benefit of the interest.
71. Application for registration of trade mark as an object of property.___(1) The
provisions of sub-section (1) of section 39, sub-sections (2) to (7) of section 24, section 69 and
section 70 shall 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 70 as it applies in relation to transaction affecting an application for the
registration of a trade mark, the references to the entry of particulars in the Register, and to the
making of an application to register particulars, shall be construed as references to the giving of
notice to the Registrar of those particulars.
CHAPTER IX.___USE OF TRADE MARKS AND LICENSEES
72. Proposed use of trade mark by company to be formed.___(1) No application for the
registration of a trade mark in respect of any goods or services shall be refused, nor shall permission
for such registration be withheld, on the ground only that it appears that the applicant does not use
or propose to use the trademark, if the Registrar is satisfied that___
(a) a company is about to be formed and registered under the Companies
Ordinance, 1984 (XLVII of 1984), or any modification thereof and that the
applicant intends to assign the trade mark to that company with a view to
the use thereof in relation to those goods or services by the company; or
(b) the applicant intends it to be used by way of permitted use.
Page 50 of 91
(2) The provisions of section 73 shall have effect, in relation to a trade mark registered under
this sub-section, as if for the references, in clause (a) of subsection (1) of that section to intention
on the part of an applicant for registration that a trade mark should be used by him there were
substituted a reference to intention on his part that it should be used by the company or the
authorised user concerned.
(3) The tribunal may, in a case to which clause (a) of sub-section (1) applies, require the
applicant to give security for the costs of any proceedings relating to any opposition or appeal, and
in default of such security being duly given, may treat the application as abandoned.
(4) Where in a case to which clause (a) of sub-section (1) applies, a trade mark in respect of
any goods or services is registered in the name of an applicant who relies on intention to assign the
trade mark to a company, then unless within such period as may be prescribed or within such
further period not exceeding six months as the Registrar may, on application being made to him in
the prescribed manner, allow, the company has been registered as the proprietor of the trade mark in
respect of those goods or services, the registration shall cease to have effect in respect thereof at the
expiration of that period and the Registrar shall amend the Register accordingly.
73. Revocation of registration.___(1) The registration of a trade mark may be revoked on
any of the following grounds, namely:___
(a) that within the period of five years following the date of completion of
registration procedure it has not been put to bona fide use in Pakistan by the
proprietor or by an authorised user thereof, in relation to the goods or services
for which it is registered and there are no proper reasons for its non-use;
(b) that the bona fide use has been suspended for an uninterrupted period of five
years and there are no proper reasons for its non-use;
(c) that in consequence of acts or inactivity of the proprietor. it has become the
common name in the trade for a product or service for which it is registered;
and
(d) that in consequence of the use made of it by the proprietor, or with his
consent in relation to the goods or services for which it is registered, it is
liable to mislead the public, particularly as to the nature, quality or
geographical origin of those goods or services.
(2) For the purpose of sub-section (1), use of trade mark shall include use in a form differing
in elements which do not alter the distinctive character of the mark in the form in which it was
registered.
(3) The registration of a trade mark shall not be revoked on the grounds specified in clause
(a) or (b) of sub-section (1), if such use, as it referred to in those clauses, is commenced or resumed
after the expiry of the five years’ period and before the application for revocation is made:
Provided that any such commencement or resumption of use after the expiry of five years
period but only three months before the application for revocation is made, shall only be regarded
if the preparation for commencement or resumption began before the proprietor became aware that
the application is made.
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(4) An application for revocation may be made by an interested party to the Registrar,
except that___
(a) if proceedings concerning the trade mark in question are pending in the
High Court 1[* * *], the application shall be made to the High Court 1[* * *];
and
(b) in case the application is made to the Registrar, he may at any stage of the
proceedings refer the application to the High Court 1[* * *].
(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, 1 [or the High 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 her the case may be.
74. Use of trade mark by a person other than the proprietor thereof.___(1) The permitted
use of a trade mark shall be deemed to be use of the trade mark by the owner of the trade mark and
shall be deemed not to be used of the trade mark by a person other than the owner for any purpose
for which such use is material under this Ordinance or any other law for the time being in force.
(2) The tribunal while determining as to whom the benefit of use of a trade mark be passed,
shall pass the benefit to none else, except to___
(a) the proprietor of the trade mark, if the trade mark is registered; or
(b) the owner of the trade mark, if the trade mark is entitled to protection
under the Paris Convention as a well known trade mark.
75. Licensing of registered trade mark.___(1) A license to use a registered trade mark
may be general or limited.
(2) A limited licensee 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
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(b) in relation to the use of the trade mark in a particular manner or a
particular locality.
(3) A license shall not be effective unless it is in writing signed by or on behalf of the
grantor.
(4) Unless the license provides otherwise, it shall be binding on a successor in title to the
grantor's interest.
(5) Where the license so provides, a sub-license may be granted by the licensee; and
references in this Ordinance to a license or licensee shall include a sub-license or sub-licensee.
76. Exclusive license defined.___(1) In this Ordinance, an “exclusive license” means a
license, whether general or limited, authorizing the licensee to the exclusion of all other persons
including the person, granting the license, to use a registered trade mark in the manner
authorised by the license and the expression “exclusive licensee” shall be construed accordingly.
(2) An exclusive licensee shall have the same rights against a successor in title who is
bound by the license as he has against the person granting the license.
77. General provisions as to the rights of licensees in case of infringement.___(1) Save
as provided in section 61, a licensee shall be entitled, unless his licensee, or any licensee through
which his interest is derived, provides otherwise, to call on the proprietor of the registered trade
mark to take infringement proceedings in respect of any matter which affects his interests:
Provided that if the proprietor___
(a) refuses to do so; or
(b) fails to do so within two months after being called upon,
the licensee may bring the proceedings in his own name as if he were the proprietor.
(2) Where infringement proceedings are brought by a licensee under this section, the
licensee may not, without the leave of the High Court or 1[an IP Tribunal], proceed with the action
unless the proprietor is either joined as a plaintiff or added as a defendant;
Provided that this shill not affect the granting of interlocutory relief on an application by a
licensee alone.
(3) A proprietor who is added as a defendant as provided in sub-section (2) shall not be
made liable for any costs in the action unless he takes part in the proceedings.
(4) In infringement proceedings brought by the proprietor of a registered trade mark any
loss suffered or likely to be suffered by licensees shall be taken into account and the High Court or
1
[an IP Tribunal] may give such directions as it thinks fit as to the extent to which the plaintiff shall
hold the proceeds of any pecuniary remedy on behalf of licensees.
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Subs. by Act No. LVIII of 2023, s.31.
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(5) The provisions of this section shall apply in relation to an exclusive licensee if or to the
extent that he has, under sub-section (1) of section 78, the rights and remedies of an assignee as if he
were the proprietor of the registered trade mark.
78. Exclusive licensee having rights and remedies of assignee.___(1) An exclusive license
may provide that the licensee shall have, to such extent as may be provided by the license, the same
rights and remedies in respect of matters occurring after the grant of the license as if the license
had been assignment. Where or to the extent that such provision is made, the licensee shall be
entitled, subject to the provisions of the license and to the following provisions of this section, to
bring infringement proceedings, against any person other than the proprietor, in his own name.
(2) Any such rights and remedies of an exclusive licensee shall be concurrent with those
of the proprietor of the registered trade mark, and references to the proprietor of a registered
trade mark in this Ordinance relating to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section, a defendant may
avail himself of any defence which would have been available to him if the action had been brought
by the proprietor of the registered trade mark.
(4) Where proceedings for infringement of a registered trade mark brought by the proprietor
or an exclusive licensee relate wholly or partly to an infringement in respect of which they have
concurrent rights of action, the proprietor or, as the case may be, exclusive licensee may not,
without the leave of the High Court or 1[an IP Tribunal], proceed with the action unless the other is
either joined as plaintiff or added as a defendant:
Provided that this shall not affect the granting of interlocutory relief on an application by a
proprietor or exclusive licensee alone.
(5) A person who is added as a defendant as mentioned in sub-section (4) shall not be made
liable for any costs in the action unless he takes part in the proceedings.
(6) Where an action for infringement of a registered trade mark is brought which relates
wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee
have or had concurrent rights of action—
(a) the High Court or 1[an IP Tribunal] 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;
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(b) no account of profits shall be directed if an award of damages has been
made, or an account of profits has been directed, in favour of the other of
them in respect of the infringement; and
(c) the High Court or 1[an IP Tribunal] shall if an account of profits is directed
apportion the profits between them as it, subject to any agreement between
them, considers just.
(7) The provisions of sub-section (6) shall apply whether or not the proprietor and the
exclusive licensee are both parties to the action, the High Court or 1[an IP Tribunal] may give such
directions as it thinks fit as to the extent to which the party to the proceedings shall hold the
proceeds of any pecuniary remedy on behalf of the other.
(8) The proprietor of a registered trade mark shall inform any exclusive licensee who has a
concurrent right of action before applying for an order under section 48, and the High Court or 1[an
IP Tribunal] may, on the application of the licensee, make such order under that section as it thinks
fit having regard to the license.
(9) The provision of sub-sections (4) to (8) shall have effect subject to any agreement to the
contrary between the exclusive licensee and the proprietor.
79. Surrender of registered trade mark.___(1) A registered trade mark may be
surrendered by the proprietor in respect of some, or all, of goods or services for which it is
registered.
(2) Provisions may be made by rules,
(a) as to the manner and effect of a surrender; and
(b) for protecting the interests of other persons having right in the registered
trade mark.
80. Grounds for invalidity of registration.___(1) The registration of a trade mark may be
declared invalid on the ground that the trade mark was registered in breach of section 14 or any of
the provisions thereof.
(2) Where the trade mark was registered in breach of clause (b). (c) or (d) of sub-section (1)
of section 14, it shall not be declared invalid if, in consequence of the use which has been made of
it, it has after registration acquired a distinctive character in relation to the goods or services for
which it is registered.
(3) The registration of a trade mark may be invalid on the ground that there is___
(a) an earlier trade mark in relation to which the conditions set out in
subsection (1), (2) or (3) of section 17 obtain; or
(b) an earlier right in relation to which the condition set out in sub-section (4) of
section 17 is satisfied,
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Subs. by Act No. LVIII of 2023, s.32.
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unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
(4) An application for declaration of invalidity may be made by an interested party either
to the Registrar or to the High Court 1[* * *], except that___
(a) if proceedings concerning the trade mark in question are pending in the
High Court 1[* * *], the application shall be make to the High Court 1[* * *];
and
(b) in any other case, if the application has been made to the Registrar, he may
at any stage of the proceedings refer the application to the High Court 1[* *
*].
(5) 1[* * * * * * *]
(6) Where the grounds of invalidity exist in respect of only some of the goods or services
for which the trade mark is registered, the trade mark shall be declared invalid as regards those
goods or services only.
(7) Where the registration of a trade mark has been declared invalid to any extent, the
registration shall to that extent be deemed never to have been made provided that this shall not
affect the transactions past and closed.
81. Effect of acquiescence.___(1) Where the owner of an earlier trade mark, or other
earlier rights, has acquiesced for a continuous period of five years from the date of registration in the
use of a registered trade mark in Pakistan, being aware of that use, there shall cease to be any
entitlement on the basis of that earlier trade mark or other right___
(a) to apply for a declaration that the registration of the later trade mark is
invalid; or
(b) to oppose the use of the later trade mark in relation to the goods or
services in relation to which it has been so used,
unless the registration of the later trade mark was applied for or used in bad faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark shall not be entitled
to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier
right, notwithstanding that the earlier trade mark or right may or longer be invoked against
his later trade mark.
82. Collective marks.___(1) A collective mark shall be a mark distinguishing the goods
or services of members of the association which is the proprietor of the mark from those of
other undertakings.
(2) The provisions of this Ordinance shall apply to collective marks subject to the
provisions of the First Schedule.
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Omitted by Act No. LVIII of 2023, s.33.
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83. Certification marks.___(1) A certification mark shall be a mark indicating that the goods
or services in connection with which it is used are certified by the proprietor of the mark in respect
of origin, mode of manufacture of goods or performance of services, quality, accuracy or other
characteristics.
(2) The provisions of this Ordinance shall apply to certification marks subject to the
provision of the Second Schedule.
84. Domain names.___(1) A domain name shall be a mark which is a user friendly
substitute for an Internet address.
(2) The provisions of this Ordinance shall apply to domain names subject to the
provisions of the Third Schedule.
CHAPTER X.___THE PARIS CONVENTION
85. Meaning of “Paris Convention” and “Convention country”.___In this Ordinance__
(a) “Paris Convention” means the Paris Convention for the Protection of
Industrial Property of the 20th March, 1833, as revised or amended from time
to time; and
(b) a “Convention country” means a country other than Pakistan which is a
party to the Paris Convention.
86. Protection of well known trade mark.___(1) Reference in this Ordinance to a trade
mark which is entitled to protection as well-known trade mark shall be to a mark which is so
entitled under the Paris Convention and which is well-known in Pakistan as being the mark of a
person who___
(a) is a national of a Convention country; or
(b) is domiciled in, or has a real and effective industrial or commercial
establishment in, a Convention country, whether or not that person carries on
business, or has any goodwill, in Pakistan and references to the proprietor of
such a mark shall be construed accordingly.
(2) For the purposes of this Ordinance, the tribunal while determining whether a trade mark
is well known, without having to require registration or actual use in the form of sales of goods or
services under the trade mark in Pakistan, shall consider the following factors as relevant criteria for
establishing the well known status of the trade mark, namely:—
(i) the amount of 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;
Page 57 of 91
(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.
(3) The owner of a trade mark which is entitled to protection under the Paris Convention as
a well-known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade
mark which, or the essential part of which, is identical or deceptively similar to the well-known
trade mark__
(a) in relation to identical or similar goods or services, where the use is likely to
cause confusion; or
(b) where such use causes dilution of the distinctive quality of the well-known
trade mark.
(4) Rights conferred under sub-section (3) shall be subject to the provisions of section 81
and nothing in the said sub-section shall affect the continuation of any bona fide use of a trade
mark begun before the commencement of this Ordinance.
87. National emblems of Convention countries.___(1) A trade mark which consist of or
contains the flag of a Convention country shall not be registered without the authorization of the
competent authorities of that country, unless it appears to the Registrar that use of the flag in the
manner proposed is permitted without such authorization.
(2) A trade mark which 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 be
registered without the authorization of the competent authorities of that country.
(3) A trade mark which consists of, or contains, official mark or hallmark adopted by a
Convention country and indicating control and warranty shall not, where the mark or hallmark is
protected under the Paris Convention, be registered in relation to goods or services of the same, or a
similar kind, as those in relation to which it indicates control and warranty, without the authorization
of competent authorities of the country concerned.
(4) The provisions of this section as to national flag and other state emblem, and official
mark or hallmark, shall apply equally to anything which from a heraldic point of view imitates
such flag or other emblem, mark or hallmark.
(5) Nothing in this section shall prevent the registration of a trade mark on the application of
the national of a country who is authorized to make use of a state emblem, or official mark or
hallmark, of that country, notwithstanding that it is similar to that of another country.
(6) Why by virtue of this section the authorization of competent authorities of a Convention
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country is or would be required for the registration of a trade mark, those authorities shall be
entitled to restrain by injunction any use of the mark in Pakistan without their authorization.
88. Emblems of certain international organizations.___(1) A trade mark which consists
of or contains any such emblem, abbreviations or name which is protected under the Paris
Convention shall not be registered without the authorization of the international organization
concerned, unless it is appears to the Registrar that the use of the emblem, abbreviation or name in
the manner proposed—
(a) is not such as to suggest to the public that a connection exists between the
organization and the trade mark; or
(b) is not likely to mislead the public as to the extent of a connection between
the user and the organization.
(2) The provisions of this section as to emblem of an international organization shall apply
equally to anything which from a heraldic point of view imitates any such emblem.
(3) When under this section the authorization of an international organizations is, or would
be, required for the registration of a trade mark, that organization shall be entitled to restrain by
injunction any use of the mark in Pakistan without its authorization.
(4) Nothing in this section shall affect the rights of a person whose bona fide use of the
trade mark in question began before the commencement of this Ordinance.
89. Notifications under Article 6ter of the Paris Convention.___(1) For the purposes of
section 87, state emblem of a Convention country, other than the national flag, and official marks and
hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that—
(a) the country in question has notified Pakistan in accordance with Article
6ter(3) of the Paris 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) of the
Paris Convention or any such objection has been withdrawn.
(2) For the purposes of section 88, the emblems, abbreviations and names of an international
organization shall be regarded as protected under the Paris Convention only if, or to the extent
that___
(a) the organization in question has notified Pakistan in accordance with Article
6ter(3) of the Paris 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) of the
Paris Convention or any such objection has been withdrawn.
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(3) A notification under Article 6ter(3) of the Paris Convention shall have effect only in
relation to applications for registration made more than two months after the receipt of such
notification.
(4) The Registrar shall keep and make available for public inspection by any person, at all
reasonable hours and free of charge, a list of___
(a) the state emblems and official marks or hallmarks: and
(b) the emblems, abbreviations and names of international organizations,
Which are for the time being protected under the Paris Convention by virtue of notification
under Article 6ter(3) of the Paris Convention.
90. Acts of agent or representative.___(1) Where an application for registration of a trade
mark is made by a person who is an importer, or an agent not being an agent under section 128, or a
representative of a person who is the proprietor of the mark in a Convention country, then___
(a) if the proprietor opposes the application, registration shall be refused; or
(b) if the application, not being so opposed, is granted, the proprietor may___
(i) apply for the declaration of the invalidity of the registration; or
(ii) apply for the rectification of the Register so as to substitute his name as
the proprietor of the registered trade mark.
(2) The proprietor may notwithstanding the rights conferred by this Ordinance, in relation to
a registered trade mark, by injunction restrain any use of the trade mark in Pakistan which is
not authorised by him.
(3) The provisions of sub-section (1) or (2) shall not apply if, or to extent that, the agent or
representative justifies his action.
(4) An application under clause (a) or (b) of sub-section (1) shall be made within three years
of the proprietor becoming aware of the registration, and no injunction shall be granted under sub-
section (2) in respect of a use in which the proprietor has acquiesced for a continuous period of three
years or more.
91. Nature of goods or services to which a mark is to be applied.___For the purposes of
registration of a trade mark under this Ordinance, the nature of goods or services to which a trade
mark is to be applied shall in no case form an obstacle to the registration of the trade mark.
92. Trade name.___A trade name shall be protected without the obligation of filing or
registration under this Ordinance whether it forms part of a trade mark or not.
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1[CHAPTER-XA.___
INTERNATIONAL REGISTRATION OF TRADE MARKS
92A. International registration under Madrid Protocol.___The provisions of this Chapter
shall apply to international applications and international registrations under the Madrid Protocol.
92B. Definitions.___In this Chapter, unless the context otherwise requires, ___
(i) “application”, in relation to a contracting state or a contracting organization,
means an application made by a person who is a citizen of, or is domiciled in,
or has a real and effective industrial or commercial establishment in, that
contracting state or a state which is a member of that contracting organization,
as the case may be.
Explanation.___For the purposes of this clause, “real and effective industrial or commercial
establishment” means and includes any establishment where some bona fide industrial or commercial
activity takes place and need not necessarily be the principal place of business;
(ii) “basic application” means an application for the registration of a trade mark
filed under section 22 and which is used as a basis for applying for an
international registration;
(iii) “basic registration” means the registration of a trade mark under section 33
and which is used as a basis for applying for an international registration;
(iv) “common regulations” means the Common Regulations under the Madrid
Agreement Concerning the International Registration of Marks and the
Protocol Relating to that Agreement;
(v) “contracting organization” means a contracting party that is an inter-
governmental organization;
(vi) “contracting party” means a contracting state or contracting organization party
to the Madrid Protocol;
(vii) “contracting state” means a country party to the Madrid Protocol;
(viii) “designation”, with its grammatical variations, is a request for the extension of
protection under Article 3ter(1) or (2) of the Madrid Protocol, as the case may
be; it also means such extension as recorded in the International Register;
(ix) “designated contracting party” is a Contracting Party for which the extension
of protection has been requested under Article 3ter(1) or (2) of the Madrid
Protocol, as the case may be, or in respect of which such extension has been
recorded in the international register;
(x) “international application” means an application for international registration
or for extension of the protection resulting from an international registration to
any contracting party made under the Madrid Protocol;
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Ins. by Act No. LVIII of 2023, s.34.
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(xi) “international bureau” means the international bureau of the world intellectual
property organization;
(xii) “international registration” means the registration of a trade mark in the
register of the international bureau effected under the Madrid Protocol;
(xiii) “Madrid Agreement” means the Madrid Agreement Concerning the
International Registration of Marks adopted at Madrid on the l4th day of
April, 1891, as subsequently revised and amended;
(xiv) “Madrid Protocol” means the Protocol relating to the Madrid Agreement
Concerning the International Registration of Marks adopted at Madrid on the
27th day of June, 1989, as amended from time to time; and
(xv) “office of origin” means the office through the intermediary of which the
international application is filed in accordance with Article 2(2) of the Madrid
Protocol.
92C. Trade Marks Registry to deal with international applications.___An international
application shall be dealt with by the Trade Marks Registry or such branch offices of the Registry, as
the Organization may specify.
92D. International application originating from Pakistan.___(1) Where an application for
registration of a trade mark has been made under section 22 or a trade mark has been registered
under section 33, the applicant or the registered proprietor may make an international application on
the form prescribed by the Common Regulations for international registration of that trade mark.
(2) A person holding an international registration may make an international application on
the form prescribed by the Common Regulations for extension of the protection resulting from such
registration to any other contracting party.
(3) An international application under sub-section (1) or sub-section (2) shall designate the
contracting parties where the protection resulting from the international registration is required.
(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the
international application correspond to the particulars appearing, at the time of the certification, in
the application under section 22 or the registration under section 33, and shall indicate the date and
number of that application or the date and number of that registration as well as the date and number
of the application from which that registration resulted, as the case may be, and shall within the
prescribed period, forward the international application to the international bureau for registration,
also indicating the date of the international application.
92G. Duration and renewal of international registration.___(1) The international
registration of a trade mark at the international bureau shall be for a period of ten years and may be
renewed for a period of ten years from the expiry of the preceding period.
(2) Subject to payment of a surcharge prescribed by the rules, a grace period of six
months shall be allowed for renewal of the international registration.
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92H. Transformation.___The date of filing of an application for the registration of a trade
mark made to the Registrar in accordance with Article 9 quinquies of the Madrid Protocol shall be
the date of the cancelled international registration and, if the international registration enjoyed the
right of priority, the application shall enjoy the same priority.
92I. Extracts from the international register.___(1) Extracts from the international register
issued by the international bureau shall be exempt from any legalization in Pakistan.
(2) In all legal proceedings relating to a trade mark in an international registration in which
Pakistan is a designated contracting party, the fact that a person is recorded as proprietor thereof in
the international register shall be prima facie evidence of the validity of the international registration
of the trade mark and of all subsequent assignments and transmissions thereof.]
CHAPTER XI.___SPECIAL PROVISIONS FOR TEXTILE GOODS
93. Textile goods.___The 1[administrative division] shall prescribe classes of goods, in this
Chapter referred to as textile goods, to the trade marks used in relation to which the provisions of this
Chapter shall apply, and subject to the said provisions, the other provisions of this Ordinance shall
apply to such trade marks as they apply to trade marks used in relation to other classes of goods.
94. Restrictions on registration of textile goods.___(1) In respect of textile goods, being
piece goods___
(a) no mark consisting of a line heading alone shall be registerable as a trade
mark;
(b) a line heading shall not be deemed to be adapted to distinguish; and
(c) the registration of a trade mark shall not give any exclusive right to the use
of a line heading.
(2) In respect of any textile goods, the registration of letters or numerals, or any
combination thereof, shall be subject to such conditions and restrictions as may be prescribed.
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Subs. by Act No. LVIII of 2023, ss. 35.
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95. Advisory Committees.___(1) The 1 [administrative division] may, in such manner, as
may be prescribed, constitute one or more Advisory Committees of persons well versed in the
usages of the textile trade for the purposes of this Chapter.
(2) The Registrar shall consult any such Advisory Committee with respect to any
circumstances peculiar to the textile trade arising on an application to register a trade mark in respect
of textile goods.
(3) The place of meeting and the conduct of business of any such Advisory Committee shall
be determined as may be prescribed.
CHAPTER XII.___RECTIFICATION AND CORRECTION OF THE
REGISTER
96. Rectification or correction of Register.___(1) Any person having a sufficient
interest may apply for the rectification of an error or omission in the Register:
Provided that an application for rectification may not be made in respect of a matter
affecting the validity of the registration of a trade mark.
(2) An application for rectification may be made to the Registrar, except that___
(a) if proceedings concerning the trade mark in question are pending in the High
Court or 1[an IP Tribunal], the application shall be made to the High Court or
1
[an IP Tribunal]; and
(b) in case the application is made to the Registrar, he may at any stage of the
proceedings refer the application to the High Court or 1[an IP Tribunal].
(3) Except where the Registrar or the High Court or 1[an IP Tribunal] directs otherwise, the
effect of rectification of the Register shall be that the error or omission in question shall be deemed
never to have been made.
(4) The Registrar may, on application made in such manner, as may be prescribed, by the proprietor
of the registered trade mark, or a licensee, enter any change in his name or address as recorded in the
Register.
97. Adoption of entries to new classification.___(1) The Registrar may, if he considers it
necessary, implement any amended or substituted classification of goods or services for the purposes
of the registration of trade marks as may be prescribed.
(2) The existing entries on the Register may be amended to record any new classification as
may be prescribed.
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Subs. by Act No. LVIII of 2023, s.36-37.
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(3) Any such power of amendment referred to in sub-sections (2) and (3), shall not be
exercised so as to extend the rights conferred by the registration except where it appears to the
Registrar that compliance with this requirement would involve undue complexity and that any
extension would not be substantial and would not adversely affect the rights of any person.
(4) The Registrar may,___
(a) require the proprietor of a registered trade mark, within such time as may be
prescribed, to file a proposal for amendment of the Register; and
(b) cancel or refuse to renew the registration of the trade mark in the event of his
failing to do so.
(5) Any proposal, referred to in sub-section (4), shall be advertised and may be opposed in
such manner as may be prescribed.
CHAPTER XIII.___OFFENCES, PENALTIES AND PROCEDURE
98. Meaning of applying a trade description.___(1) A person shall be deemed to apply a
trade description to goods or services who___
(a) applies a trade description to the goods themselves or uses it in relation to
goods or services;
(b) applies a trade description to any package in or with which the goods are sold,
or exposed for sale, or had in possession for sale or for any purpose of trade or
manufacture;
(c) places, encloses or annexes any goods which are sold or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture in or
with any package or other thing to which a trade description has been applied;
(d) uses a trade description in any manner reasonably likely to lead to the belief
that the goods or services in connection with which it is used are designated or
described by that trade description; or
(e) in relation to the goods or services uses a trade description in any sign,
advertisement, invoice, catalogue, business letter, price list or other
commercial documents, and goods are delivered or services are rendered to a
person in pursuance of a request or order made by reference to the trade
description as so used.
(2) A trade description shall be deemed to be applied to goods whether it is woven in,
impressed on, otherwise worked into, or annexed or affixed to, the goods or to any packaging or
other thing.
99. Penalty for applying false trade description, etc.___Any person who___
(a) applies any false trade description to goods or services; ___
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(b) applies to any goods to which an indication of the country or place in which
they were made or produced or the name and address of manufacturer or
person for whom the goods are manufactured is required to be applied under
section 126, a false indication of such country, place, name or address;
(c) tampers with, alters or effaces an indication of origin which has been applied
to any goods to which it is required to be applied under section 126; or
(d) causes any of the aforementioned things to be done,
shall, unless he proves that he acted without intent to defraud, be punished with imprisonment of
either description for a term which shall not be less than three months but which may extend to two
years, or with fine which shall not be less than fifty thousand rupees, or with both.
100. Enhanced penalty on second or subsequent convictions.___Whoever having already
been convicted of an offence under section 99 is again convicted of any such offence shall be
punished for the second and every subsequent offence with imprisonment of either description for a
term which shall not be less than six months but which may extend to three years, or with fine which
shall not be less than one hundred thousand rupees, or with both.
101. Penalty for falsification of entries in Register.___Any person who makes, or causes to
be made, a false entry in the Register, or a writing falsely purporting to be a copy of an entry in the
Register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing,
knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which
shall not be less than three months but which may extend to two years, or with fine which shall not
be less than fifty thousand rupees, or with both.
102. Penalty for falsely representing a trade mark as registered.___(1) No person shall
make any representation—
(a) with respect to a mark not being a registered trade mark, to the effect that it is
a registered trade mark;
(b) with respect to a part of a registered trade mark not being a part separately
registered as a trade mark, to the effect that it is separately registered as a trade
mark;
(c) to the effect that a registered trade mark is registered in respect of any goods
or services in respect of which it is not, in fact, registered; or
(d) to the effect that the registration of a trade mark gives an exclusive right to the
use thereof in any circumstances in which, having regard to limitations entered
on the Register, the registration does not, in fact, give that right.
(2) If any person contravenes any of the provisions of sub-section (1), he shall be punishable
with imprisonment for a term which shall not be less than one month but which may extend to six
months, or with fine which shall not be less then twenty thousand rupees, or with both.
(3) For the purposes of this section, the use in Pakistan in relation to a trade mark of the word
“registered”, or of any other expression referring whether expressly or impliedly to registration, shall
be deemed to import a reference to registration in the Register, except___
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(a) where that word or other expression is used in direct association with other
words delineated in characters at least as large as those in which that word or
other expression is delineated and indicating that the reference is to
registration as a trade mark under the laws of a country other than Pakistan,
being a country under the laws of which the registration referred to is, in fact,
in force;
(b) where that other expression is of itself such as to indicate that the reference is
to such registration as is mentioned in clause (a); or
(c) where that word is used in relation to a mark registered as a trade mark under
the laws of a country other than Pakistan and in relation solely to goods or
services to be exported to that country.
(4) The Registrar may, either suo moto or upon a complaint in writing made to him, call upon
any person who is allegedly contravening any of the provisions of clauses (a) to (d) of sub-section
(1) to show cause as to why action should not be taken against him:
Provided that power of the Registrar shall be limited to the imposition of fine as provided
under sub-section (2) or, if pending, to refusal of application for registration of the trade mark, or if
the trade mark is registered, to invalidation of the registration, or any combination thereof, as the
case may be.
103. Restraint of use of Government Arms and State emblems.___If a person, without due
authority, uses in connection with any trade, business, calling or profession___
(a) the flag of Pakistan in such manner as to be misleading;
(b) Government Arms or arms so closely resembling the same as to be calculated
to deceive, in such manner as to be calculated to lead to the belief that he is
duly authorised so to use the Government Arms;
(c) name, title and semblance of Quaid-i-Azam Mohammad Ali Jinnah or Allama
Dr. Mohammad Iqbal or any variations thereof, or any device, emblem or title
in such manner as to be calculated to lead to the belief that he is employed by,
or supplies goods to, or is connected with, the Federal Government or any
Provincial Government or any department of any such Government; or
(d) the emblem, the official seal and the name or any abbreviation of the name of
the United Nations or any subsidiary body set upon by the United Nations or
of the World Health Organization or of the World Intellectual Property
Organization or of the World Trade Organization in such manner as is to be
calculated to lead to the belief that he is duly authorized by the competent
authorities of these organizations to use the emblem, seal or name,
he, may, at the suit of the Registrar or of any person who is authorized to use such Arms,
device, emblem or title, be restrained by injunction from continuing so to use the same;
Page 67 of 91
Provided that noting in this section shall be construed as affecting the right, if any, of the
proprietor of a trade mark containing such Arms, device, emblem or title to continue to use such
trade mark.
104. Offences by companies.___(1) If the person committing an offence under this Ordinance
is a company, the company as well as every person in charge of, and responsible to, the company for
the conduct of its business at the time of the commission of the offence shall be deemed to be guilty
of the offence and shall be liable to be proceeded against and punished accordingly:
Provided that nothing contained in this sub-section shall render any such person liable to any
punishment if he proves that the offence was committed without his knowledge or that he exercised
all due diligence to prevent the commission of such offence.
(2) Notwithstanding anything contained in sub-section (1), where an offence has been
committed by a company and it is proved that the offence has been committed with the consent or
connivance of, or that the commission of the offence is attributable to any neglect on the part of any
director, manager, secretary or other officer of the company, such director, manager, secretary or
other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded
against and punished accordingly.
Explanation.—For the purposes of this section___
(a) “company” means any body corporate and includes a partnership, firm or
other association of individuals; and
(b) “director” in relation to a firm, means a partner in the firm.
105. Powers to award compensation for offences.___(1) In any prosecution under this
Ordinance, the High Court or 1[an IP Tribunal] may, when passing a sentence of fine, direct that an
amount not exceeding fifty per cent of the fine imposed by it but commensurate with the loss
suffered by the party shall be paid as compensation to the person whose right has been infringed or to
the heirs or legal representatives of such person.
(2) The payment of any compensation to any person under sub-section (1), shall be without
prejudice to his right to any claim in a suit or other proceedings which may be instituted, or may be
pending in the High Court or 1[an IP Tribunal], in relation to the same matter.
106. Punishment of abetment in Pakistan of acts done out of Pakistan.___If any person,
being within Pakistan, abets the commission, without Pakistan of any act which, if committed in
Pakistan, would, under this Ordinance, be an offence, he may be tried for such abetment in any place
in Pakistan in which he may be found and be punished therefor with the punishment to which he
would be liable if he had himself committed in that place the act which he abetted.
107. Penalty for improperly describing a place of business as connected with the Trade
Marks Registry.___If any person uses his place of business, or on any document issued by him, or
otherwise, words which would reasonably lead to the belief that his place of business is, or is
officially connected with, the Trade Marks Registry, he shall be guilty of an offence punishable with
imprisonment for a term which may extend to two years, or with fine, or with both.
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Subs. by Act No. LVIII of 2023, s. 38.
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CHAPTER XIV.___MISCELLANEOUS AND GENERAL PROVISIONS
108. Power of Registrar to require use of forms.___(1) The Registrar may require the use of
such forms as he may direct for any purpose relating to the registration of a trade mark or any other
proceedings before him under this Ordinance.
(2) The forms and any directions of the Registrar with respect to their use shall be notified in
the manner as may be prescribed.
109. Information about applications and registered trade marks.___(1) After publication
of an application for registration of a trade mark the Registrar shall on request provide a person with
such information and permit him to inspect such documents relating to the application, or to any
registered trade mark resulting from it, as may be specified in the request, subject to such
restrictions, as may be prescribed.
(2) Any request under sub-section (1) shall be made in the prescribed manner and be
accompanied by the prescribed fee.
(3) Before publication of an application for registration of a trade mark, document or
information constituting or relating to the application shall not be published by the Registrar or
communicated by him to any person except___
(a) in such cases and to such extent as may be prescribed; or
(b) with the consent of the applicant,
but subject to the provisions of sub-section (4).
(4) Where a person has been informed that an application for registration of a trade mark has
been made, and that the applicant will if the application is granted bring proceedings against him in
respect of acts done after publication of the application, he may make a request under sub-section (1)
notwithstanding that the application has not been published and that sub-section shall apply
accordingly.
110. Costs, security for costs and fine.___(1) Provisions may be made by rules empowering
the Registrar, in any proceedings before him under this Ordinance___
(a) to award any party such costs as he may consider reasonable;
(b) to impose fine as he may consider reasonable; and
(c) to direct how and by whom costs or fines shall be paid.
(2) Any such order of the Registrar may be executable in the same way as a decree of a
Civil Court.
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(3) Provisions may be made by rules empowering the Registrar, in such cases as may be
prescribed, to require a party to proceedings before him to give security for costs in relation to those
proceedings or to proceedings on appeal and as to the consequences if security is not given.
111. Procedure before the Registrar.___(1) In all proceedings under this Ordinance before
the Registrar—
(a) the Registrar shall have all the powers of a Civil Court for the purposes of
receiving evidence, administering oaths, enforcing the attendance of
witnesses, compelling the discovery and production of documents, issuing
commissions for the examination of witnesses and granting a certificate of
contested validity;
1
[(b) evidence, shall be given by affidavit.]
(2) The Registrar shall not exercise any powers vested in him by this Ordinance or the
rules made thereunder adversely to any party duly appearing before him, if required in writing within
the prescribed time so to do, without giving such party an opportunity of being heard.
112. Certificate of validity of contested registration.___If in any legal proceedings in which
the validity of the registration of a trade mark comes into question and a decision is given in favour
of the proprietor of the trade mark, the tribunal may grant a certificate to that effect, and if such a
certificate is granted, then in any subsequent legal proceedings in which the said validity comes into
question, the said proprietor on obtaining a final order or judgment in his favour shall, unless the said
final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges
and expenses as between legal practitioner and client.
113. Registrar's appearance in proceedings involving the Register.___(1) In all
proceedings before the Court involving application for___
(a) the revocation of the registration of a trade mark;
(b) a declaration of the invalidity of the registration of a trade mark; or
(c) the rectification of the Register
the Registrar shall be entitled to appear and be heard and shall appear if so directed by the High
Court.
(2) Unless otherwise directed by the High Court, the Registrar may instead of appearing
submit to the High Court a statement in writing signed by him, giving particulars of___
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Subs. by Act No. LVIII of 2023, s.39.
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(a) any proceedings before him in relation to the matter in issue;
(b) the grounds of any decision given by him affecting it;
(c) the practice of the Trade Marks Registry in like cases; or
(d) such matters relevant to the issues and within his knowledge as Registrar as he
thinks fit.
and the statement shall be deemed to form part of the evidence in the proceedings.
(3) Anything which the Registrar is or may be authorized or require to do under this
section may be done on his behalf by a duly authorized officer by him.
114. Appeal against the decision of the Registrar.___(1) Save as otherwise expressly
provided in this Ordinance, an appeal shall lie, within the prescribed period, against any decision of
the Registrar under this Ordinance or rules made thereunder to the High Court having jurisdiction:
Provided that if any suit or other proceedings concerning the trade make in question is
pending before the High Court or 1[an IP Tribunal], the appeal shall lie to that High Court, as the
case may be, to the High Court within whose jurisdiction that 1[IP Tribunal] is situated.
(2) In an appeal by an applicant for registration against a decision of the Registrar under
section 21, 22 or 28, it shall not be open, save with the express permission of the High Court, to the
Registrar or any party opposing the appeal to advance grounds other than those recorded in the said
decision or advanced by the party in the proceedings before the Registrar, as the case may be, and
where any such additional grounds are advanced, the applicant for registration may, on giving notice
in the prescribed manner, withdraw his application without being liable to pay the costs of the
Registrar or the parties opposing his application.
(3) Subject to the provisions of this Ordinance and of rules made thereunder, the provisions
of the Code of Civil Procedure, 1908 (Act V of 1908), shall apply to appeal before the High Court or
1
[an IP Tribunal] under this Ordinance.
115. Procedure before the Federal Government.___In all proceedings under this Ordinance
before the Federal Government, evidence shall be given by affidavit, provided that the Federal
Government may, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by
affidavit, and shall for that purpose have all the powers of a Civil Court referred to in clause (a) of
section 111.
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Subs. by Act No. LVIII of 2023, s.40.
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116. Procedure in certain cases of option to apply to the High Court, a District Court or
the Registrar.___Where under this Ordinance, an applicant has the option of making an application
either to the High Court 1[IP Tribunal] or to the Registrar___
(a) if any suit or proceedings concerning the trade mark in question are pending
before the High Court 1[IP Tribunal], the application shall be made to the High
Court or, as the case may be, the 1[IP Tribunal]: and
(b) in any other case, if the application is made to the Registrar, he may at any
stage of the proceedings refer the application to the High Court 1[IP Tribunal].
117. Suits for infringement to be instituted before 1[IP Tribunal].___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 1[except an IP Tribunal] having jurisdiction to try the suit.
118. Costs of Registrar in proceedings before the High Court or 1[an IP Tribunal].___In
all proceedings under this Ordinance before the High Court or 1[an IP Tribunal], the costs of the
Registrar shall be in the discretion of the High Court or, as the case may be, the 1[IP Tribunal], but
the Registrar shall not be ordered to pay the costs of any of the parties.
119. Burden of proving use of trade mark.___If in any civil proceedings under this
Ordinance, if a question arises as to the use to which a registered trade mark has been put, it shall be
for the proprietor to show what use has been made of it.
120. Certain persons to be public servants.___Every person appointed under this Ordinance
shall be deemed to be a public servant within the meaning of section 21 of the Pakistan Penal Code,
1860 (Act XLV of 1860).
121. Documents open to public inspection.___(1) Save as otherwise provided in this
Ordinance___
(a) the Register and any document upon which any entry in the Register is based;
(b) every notice of opposition to the registration of a trade mark, application for
rectification before the Registrar, counter-statement thereto, and any affidavit
or documents filed by the parties in any proceedings before the Registrar;
(c) such other documents as the Registrar may, by notification in the Journal
specify, shall subject to such conditions as may be prescribed, be open to
public inspection at the Trade Marks Registry.
(2) Any person may, on an application to the Registrar and on payment of such fees as may
be prescribed, obtain a certified copy of any entry in the Register or any document referred to in sub-
section (1).
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Subs. by Act No. LVIII of 2023, ss. 41-43.
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122. Death of a party to any proceedings under this Ordinance. ___If a person who is a
party to any proceedings under this Ordinance, not being any proceedings before the High Court or
1
[an IP Tribunal], dies pending the proceedings, the Registrar may, on request, and on proof to his
satisfaction of the transmission of the interest of the deceased person, substitute in the proceedings
his successor in interest in his place, or if the Registrar is of opinion that the interest of the deceased
person is sufficiently represented by the surviving parties, permit the proceedings to continue without
the substitution of his successor in interest.
123. Extension of time.___(1) If the Registrar is satisfied, on application made to him in the
prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending
the time for doing any act not being a time expressly provided in this Ordinance, whether the time so
specified has expired or not, he may subject to such conditions as he may think fit to impose, extend
the time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties
before disposing of an application for extension of time and no appeal shall lie from any order of the
Registrar under this section.
124. Registrar and other officers not compellable to produce Register, etc. ___The
Registrar or any officer of the Trade Marks Registry shall not, in any legal proceedings to which he
is not a party, be compellable to produce the Register or any other document in his custody the
contents of which can be proved by the production of a certified copy issued under this Ordinance or
to appear as a witness to prove the matters therein recorded unless by order of the High Court or 1[an
IP Tribunal] made for special case.
125. Power to require goods to show indication of origin.___(1) The Federal Government
may, by notification in the official Gazette, require that goods of any description specified in the
notification, which are made or produced beyond the limits of Pakistan and imported into Pakistan,
or which are made or produced within the limits of Pakistan, shall from such date as may be
appointed by the notification not being less than three months from its issue, have applied to them an
indication of the country or place in which they were made or produced, and of the name and address
of the manufacturer or the person for whom the goods were manufactured.
(2) The notification under sub-section (1) may specify the manner in which such indication
shall be applied, that is to say whether to goods themselves or in any other manner and the times or
occasions on which the presence of the indication shall be necessary, that is to say, whether on
importation only, or also at the time of sale, whether by wholesale or retail or both.
(3) The provisions of section 23 of the General Clauses Act, 1897 (X of 1897), shall apply to
the issue of a notification under sub-section (1), as they apply to the making of a rule or bye-law the
making of which is subject to the condition of previous publication.
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Subs. by Act No. LVIII of 2023, ss. 44-45.
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(4) A notification under sub-section (1), shall not apply to goods made or produced beyond
the limits of Pakistan and imported into Pakistan, if in respect of those goods the 1[Director General,
IPR (Enforcement), Director. IPR (Enforcement) or Collector of Customs or any competent authority
under the Custom Act, 1969 (IV of 1969)] is satisfied at the time of importation that they are
intended for exportation whether after transhipment in or transit through Pakistan or otherwise.
126. Address for service.___(1) Every applicant or opponent in any proceedings under this
Ordinance, who does not reside or carry on business within Pakistan, shall give an address for
service in Pakistan and such address may be treated as the actual address of that person for all
purposes connected with the proceedings in question.
(2) The address for service shall be deemed to be address of the applicant or the opponent and
all documents in relation to the application or notice of opposition may be served by leaving them at
or sending them by registered post to the address of service of the applicant or opponent, as the case
may be.
1
[(3) An application filed under Madrid Protocol for international registration of marks shall
be subject to such conditions as may be prescribed.]
127. Trade mark agents.___(1) Where by or under this Ordinance any act, other than the
making of an affidavit, is required to be done by any person, the act may, subject to such conditions
as may be prescribed, be done, in lieu of by that person himself, by duly authorised agent whose is
registered with the Trade Marks Registry in the prescribed manner as a trade mark agent.
(2) The Federal Government may, by notification in the official Gazette, make rules for
providing qualifications, registration and conduct of trade mark agents.
128. Fees.___(1) There shall be paid in respect of applications and registration and other
matters under this Ordinance such fees as may be prescribed.
(2) Provisions may be made by rules for___
(a) the payment of a single fee in respect of two or more matters; and
(b) the circumstances if any in which a fee may be repaid or remitted.
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Subs. and added by Act No. LVIII of 2023, s.46-47.
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129. The Federal Government and a Provincial Government to be bound. ___The
provisions of this Ordinance shall be binding on the Federal Government and 1[Provincial
Governments].
130. Power to make reciprocal arrangements with any other Government.___Without
prejudice to the provisions of Articles 3 and 4 of the Agreement on Trade Related Aspects of
Intellectual Property Rights. 1994, the Federal Government may, by notification in the official
Gazette, enter into reciprocal arrangements with other Governments for the purpose of this
Ordinance.
131. Power of the High Court to make rules.___The High Court may make rules consistent
with the provisions of this Ordinance as to the conduct and procedure of all proceedings under this
Ordinance before it.
132. Power of the Federal Government to make rules.___(1) The Federal Government may,
subject to the condition of previous publication, by notification in the official Gazette, make rules for
carrying out the purposes of this Ordinance.
(2) In particular and without prejudice to the generality of the foregoing power, such rules
may provide for all or any of the following matters, namely:___
(i) the matters to be included in the Register under sub-section (1) of section 10;
(ii) conditions and restrictions subject to which the Register shall be open to the
inspection of the public under sub-section (5) of section 10;
(iii) classification of goods and services in accordance with the international
classification of goods and services under sub-section (1) of section 12;
(iv) publication of alphabetical index of classification of goods and services under
sub-section (2) of section 12;
(v) the manner in which the Registrar may notify a word as an international non-
proprietary name under section 16;
(vi) the manner of making an application for registration of a trade mark under
sub-section (1) of section 22;
(vii) the manner and period for making a Convention application under clause (b)
of sub-section (2) of section 25;
(viii) the matters related to the manner of claiming a right to priority on the basis of
a Convention application under sub-section (7) of section 25;
(ix) conditions for grant of temporary protection in respect of goods or services
during exhibition under sub-section (4) of section 26;
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Subs. by Act No. LVIII of 2023, s. 48.
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(x) the manner of giving notice to the Registrar under sub-section (2) of section
28 for opposing an application for registration advertised or re-advertised
under sub-section (1) of section 28 and the fee payable for such application,
making an application for extension of time under sub-section (2) of section
28 and the fee payable for such application;
(xi) the manner of serving a copy of the notice on the applicant, an application for
extension of time under sub-section (4) of section 28 and the fee payable for
such application, sending a counter-statement of the grounds and fee payable
for such application;
(xii) the manner of serving a copy of the counter-statement on the opponent, an
application for extension of time under sub-section (5) of section 28 and the
fee payable for such application, sending a rejoinder to the Registrar;
(xiii) the manner of sending a copy of the rejoinder to the applicant under sub-
section (6) of section 28;
(xiv) the manner of submitting any evidence under sub-section (7) of section 28 and
time limit for submitting such evidence;
(xv) the manner of permitting correction of any error in, or any amendment of, a
notice of opposition, a counter-statement, or a rejoinder under sub-section (9)
of section 28;
(xvi) the manner of notifying the Registrar under sub-clause (i) of clause (b) of
section 30;
(xvii) the time within which an application shall be registered under sub-section (1)
of section 33;
(xviii) the fee payable and the time within which such fee is payable under sub-
section (2) of section 33;
(xix) the manner of publication of the registration and the form of certificate of
registration under sub-section (4) of section 33;
(xx) the manner of giving notice under sub-section (5) of section 33;
(xxi) the manner of informing the proprietor of a registered trade mark of the date of
expiry within which the registration may be renewed under sub-section (2) of
section 35;
(xxii) the further period in which additional renewal fee shall be paid under sub-
section (3) of section 35:
(xxiii) the manner and conditions for restoration of the registration which has been
removed from the Register under sub-section (6) of section 35;
(xxiv) the matter related to the publication of alteration and the making of objections
by any person claiming to be affected by it under sub-section (3) of section 37;
Page 76 of 91
(xxv) the matters related to manner and effect of a surrender, and for protecting the
interests of other persons having a right in the registered trade mark under sub-
section (2) of section 38;
(xxvi) the time period within which the applicant, by notice in writing to the
1
[Director General, IPR (Enforcement), Director, IPR (Enforcement) or
Collector of Customs or any competent authority under the Custom Act, 1969
(IV of 1969)], consents to the release of the goods under clause (a) of sub-
section (2) of section 59;
(xxvii) the particulars of the transaction which are to be entered in the Register under
sub-sections (1) and (3) of section 70;
(xxviii) the matters specified in sub-sections (4) and (5) of section 70;
(xxix) the manner of making application and the fee payable for such application
under sub-section (4) of section 72;
(xxx) the classes of goods under section 93;
(xxxi) the conditions and restrictions subject to which registration of letters or
numerals, or any combination thereof in respect of textile goods may be
allowed under sub-section (2) of section 94;
(xxxii) the manner of constituting one or more Advisory Committees under sub-
section (1) of section 95, and matters related to the place of meeting and
conduct of business of such Committees under sub-section (3) of that section;
(xxxiii) the manner of making an application under sub-section (4) of section 96;
(xxxiv) the matters relating to the empowering the Registrar to do such things as he
considers necessary to implement any amended or substituted classification of
goods or services for the purposes of the registration of trade marks under sub-
section (1) of section 97;
(xxxv) the time within which a proposal for amendment could be made under clause
(a) of sub-section (4) of section 97;
(xxxvi) the manner of opposition under sub-section (5) of section 97;
(xxxvii) the manner of notification of the forms and any directions of the Registrar
with respect to their use under sub-section (2) of section 108;
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Subs. by Act No. LVIII of 2023, s. 49.
Page 77 of 91
(xxxviii) the restrictions imposed, manner of making application and fee payable
under sub-section (1) of section 109;
(xxxix) the cases and extent to which application for registration of a trade mark,
documents or information constituting or relating to the application may be
published by the Registrar or communicated by him to any person under sub-
section (3) of section 109;
(xl) the matters related to empowering the Registrar for the purposes of sub-
section (1) of section 110;
(xli) the matters related to empowering the Registrar to require a party to
proceedings before him to give security for costs, in relation to those
proceedings or to proceedings on appeal, and as to the consequences if
security is not given under sub-section (3) of section 110;
(xlii) the period within which an appeal from any decision of the Registrar under
this Ordinance or rules made thereunder may lie to the High Court or 1[* * *]
having jurisdiction under sub-section (1) of section 114;
(xliii) the manner of giving notice under sub-section (2) of section 114;
(xliv) the conditions under which documents listed in sub-section (1) of section 121
may be open to public inspection under the said sub-section;
(xlv) the fee payable for obtaining a certified copy under sub-section (2) of section
121;
(xlvi) the manner of making an application and the fee payable therefor under sub-
section (1) of section 123;
(xlvii) the conditions under which any act other than the making of an affidavit may
be done by duly authorized agent under sub-section (1) of section 127;
(xlviii) the matters related to qualifications, registration and conduct of trade mark
agents under sub-section (2) of section 127;
(xlix) the fees payable for making applications, registrations and other matters under
sub-section (1) of section 128;
(l) the matters related to the payment of a single fee in respect of two or more
matters and the circumstance, if any, in which a fee may be repaid or remitted
under sub-section (2) of section 128;
(li) the making of further requirements with which the regulations may have to
comply under sub-para (2) of para 5 of the First Schedule;
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Omitted by Act No. LVIII of 2023, s. 49.
Page 78 of 91
(lii) the making of further requirements with which the regulations may have to
comply under sub-para (2) of para 6 of the Second Schedule;
(liii) the procedure for identification and classification of computer related services
associated with Internet under sub-para (3) of para 2 of the Third Schedule;
(liv) the making of procedure for putting entries under sub-para (2) of para 2, and
sub-para(2) of para 9 of the Fourth Schedule;
(lv) the manner of making application and the fee payable for such application
under sub-para (2) of para 11 of the Fourth Schedule;
(lvi) the entry of additional information in the Register;
(lvii) the regulation of awarding of costs by the Registrar under this Ordinance;
(lviii) the matters related to establishment of branches of the Trade Marks Registry;
(lix) the manner in which, in proceedings under this Ordinance before the Registrar
or the 1[Organization], application shall be made, notices given and matters
advertised;
(lx) the matters related to times or periods required by this Ordinance to be
advertised;
(lxi) and matters generally related to business of the Trade Marks Registry or its
branches and for regulating all things by this Ordinance placed under the
discretion of the Registrar or the 1[Organization]; and
(lxii) any other matter which is required to be, or may be prescribed.
133. Transitional.___The provisions of the Fourth Schedule shall have effect with respect
to transitional matters, including the treatment of trade marks registered under the Trade Marks Act,
1940 (V of 1940), and applications for registration and other proceedings pending under that Act, on
the commencement of this Ordinance.
134. Repeal and savings.___(1) The Trade Marks Act, 1940 (V of 1940), is hereby repealed.
(2) The Trade Marks Registry and its branches existing at the commencement of this
Ordinance shall be continued as if they had been established under this Ordinance.
(3) The Registrar, other officers and any other person appointed to the Trade Marks Registry
established under the Trade Marks Act, 1940 (V of 1940), shall be deemed to have been appointed to
the Trade Marks Registry established under this Ordinance.
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Subs. by Act No. LVIII of 2023, s. 49.
Page 79 of 91
THE FIRST SCHEDULE
[See section 82(2)]
COLLECTIVE MARKS
1. General.___The provisions of this Ordinance shall apply to collective marks subject to the
provisions contained in this Schedule.
2. Signs of which a collective mark may consist.___In relation to a collective mark the
reference in clause (xlvii) of section 2 to distinguish goods or services of one undertaking form those
of other undertakings shall be construed as a reference to distinguishing goods or services of
members of the association which is the proprietor of the mark from those of other undertakings.
3. Indication of geographical origin.___(1) Notwithstanding the provisions of clause (c) of
sub-section (1) of section 14, a collective mark may be registered which consist of marks or
indications which may serve, in trade, to distinguish the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the use of the marks or
indications in accordance with the honest practices in industrial or commercial matters, in particular,
by a person who is entitled to use a geographical name.
4. Collective mark not to be misleading as to character or significance.___(1) A collective
mark shall not be registered if the public is liable to be mislead as regards the character or
significance of the mark, in particular, if it is likely to be taken to be something other than a
collective mark.
(2) The Registrar may accordingly require that a mark in respect of which application is made
for registration include some indication that it is a collective mark.
(3) Notwithstanding the provisions of sub-section (7) of section 27 and application may be
amended so as to comply with any such requirement.
5. Regulations governing use of collective mark.___(1) Any application for registration of a
collective mark may be filed with the Registrar along with regulations governing the use of the mark.
(2) The regulations referred to in sub-para (1) shall specify the persons authorized to use the
mark, the conditions of membership of the association and, where they exist, the conditions of the
use of the mark, including any sanctions against misuse.
(3) Any further requirements with which the regulations referred to in sub-para (1) shall have
to comply may be imposed as may be prescribed.
6. Approval of regulations by the Registrar.___(1) A collective mark shall not be registered
unless the regulations governing the use of the mark___
(a) comply with the requirements of para (2) of para 5 and any further
requirements as may be prescribed; and
(b) are not contrary to public policy or to accepted principles of morality.
Page 80 of 91
(2) Before the end of the prescribed period after the date of the publication for registration of
a collective mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee
failing which the application shall be deemed to have been withdrawn.
7. Procedure of acceptance or refusal of application.___(1) The Registrar shall consider
whether the requirements specified in sub-para (1) of para 6 are duly met.
(2) If it appears to the Registrar that such requirements are not met, he shall inform the
applicant and give him an opportunity, within such period as the Registrar may specify, to make
representation or to file amended regulations.
(3) If the applicant fails to satisfy the Registrar that such requirements are met, or to file
regulations amended so as to meet them, or fails to respond before the end of the specified period,
the Registrar shall refuse the application.
(4) If it appears to the Registrar that such requirements, and the other requirements for
registration, are met he shall accept the application and shall proceed in accordance with section 28.
8. Regulations to be published.___(1) The regulations governing the use of a collective mark
shall be published and notice of opposition may be given, and observation may be made, relating to
the matters specified in sub-para (1) of para 6.
(2) The provisions of sub-para (1) shall be in addition to any other grounds on which the
application may be opposed or observations made.
9. Regulations to be open to inspection.___The regulations governing the use of a registered
collective mark shall be open to public inspection in the same way as the Register.
10. Amendment of regulations.___(1) An amendment of the regulations governing the use of
a registered collective mark shall not be effective unless and until the amended regulations are filed
with the Registrar and accepted by him.
(2) Before accepting any amended regulations the Registrar may, in any case where it appears
to him expedient to do so, cause them to be published.
(3) If the Registrar does so, a notice of opposition may be given, and observations may be
made, relating to the matters specified in sub-para (1) of para 6.
11. Infringement of rights of authorized user.___The following provisions shall apply in
relation to an authorized user of a registered collective mark as in relation to a licensee of a trade
mark, namely:___
(a) sub-section (7) of section 40;
(b) sub-section (2) of section 51; and
(c) section 53.
12. Infringement of a registered collective mark.___(1) The provisions of this para shall
have effect as regards the rights of an authorized user in relation to infringement of registered
collective mark.
Page 81 of 91
(2) An authorized user shall be entitled, subject to any agreement to the contrary between him
and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter
which affect his interests.
(3) If the proprietor___
(a) refuses to do so; or
(b) fails to do so within two months after being called upon,
the authorized user may bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought under this para, the authorized user may not,
without the leave of the High Court, proceed with the action unless the proprietor is either joined as a
plaintiff or added as a defendant.
(5) The provisions of para (4) shall not affect the granting of interlocutory relief on an
application by an authorised user alone.
(6) A proprietor who is added as a defendant as provided in sub-para (4) shall not be made
liable for any costs in the action unless he takes part in the proceedings.
(7) In infringement proceedings brought by the proprietor of a registered collective mark, any
loss suffered or likely to be suffered by authorised user shall be taken into account, and the High
Court or 1[an IP Tribunal] may give such directions as it thinks fit as to the extent to which the
plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.
13. Additional grounds for revocation of registration.___Apart from the grounds of
revocation provided for in section 73, the registration of a collective mark may be revoked on any of
the following grounds, namely:___
(a) that the manner in which the mark has been used by the proprietor has caused
it to become liable to mislead the public in the manner referred to in sub-para
(1) of para 4;
(b) that the proprietor has failed to observe, or to secure the observance of, the
regulations governing the use of the mark: or
(c) that an amendment of the regulations governing the use of mark has been
made so that such regulations—
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Subs. by Act No. LVIII of 2023, s. 50.
Page 82 of 91
(i) no longer comply with the requirement of sub-para (2) of para 5, and
any further conditions as may prescribed; or
(ii) are contrary to public policy or to accepted principles of morality.
14. Additional grounds for invalidity of registration.___Apart from the grounds of
invalidity provided for in section 80, the registration of a collective mark may be declared invalid on
the ground that the mark was registered in breach of the provisions of sub-para (1) of para 4, or sub-
para (1) of para 6.
THE SECOND SCHEDULE
[See section 83(2)]
CERTIFICATION MARKS
1. General.___The provisions of this Ordinance shall apply to certification marks subject to
the provisions contained in this Schedule.
2. Signs of which certification mark may consist.___In relation to a certification mark the
reference in clause (xlvii) of section 2 to distinguish goods or services of one undertaking from those
of other undertaking shall be construed as a reference to distinguishing goods or services which are
certified from those which are not.
3. Indication of geographical origin.___(1) Notwithstanding the provisions of clause (c) of
sub-section (1) of section 14, a certification mark may be registered which consist of signs or
indications which may serve, in trade, to designate the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the use of the signs or
indications in accordance with honest practices in industrial or commercial matters, in particular, by
a person who is entitled to use a geographical name.
4. Nature of proprietor’s business.—A certification mark shall not be registered if the
proprietor carries on a business involving the supply of goods or services of the kind certified.
5. Certification mark not to be misleading as to character or significance. ___(1) A
certification mark shall not be registered if the public is liable to be misled as regards the character or
significance of the mark, in particular, if it is likely to be taken to be something other than a
certification mark.
(2) The Registrar may, accordingly, require that a mark in respect of which application has
been made for registration include some indication that it is a certification mark.
(3) Notwithstanding the provisions of sub-section (7) of section 27, an application may be
amended so as to comply with any such requirement.
6. Regulations governing use of certification mark.___(1) An application for registration of
a certification mark may be filed with the Registrar along with regulations governing the use of the
mark.
Page 83 of 91
(2) The regulations referred to in sub-para (1) shall indicate who shall be authorized to use
the certification mark, the characteristics by the mark, how the certifying body shall test those
characteristics and supervise the use of the mark, the fee, if any, to be paid in connection with the
operation of the mark and the procedures for resolving disputes.
(3) Any further requirements with which the regulations referred to in sub-para (1) shall have
to comply may be imposed as may be prescribed.
7. Approval of regulations by the Registrar.___(1) A certification mark shall not be
registered unless___
(a) the regulations governing the use of the mark—
(i) comply with the requirements of sub-para (2) of para 6, and any further
requirements, as may be prescribed; and
(ii) are not contrary to public policy or to accepted principles of morality;
and
(b) the applicant is competent to certify the goods or services for which the mark
is to be registered.
(2). Before the end of the prescribed period after the date of the application for registration of
a certification mark, the applicant shall file the regulations with the Registrar and pay the prescribed
fee, failing which the application shall be deemed to be withdrawn.
8. Procedure for acceptance or refusal of application.___(1) The Registrar shall consider
whether the requirements specified in sub-para (1) of para 7 are met.
(2) If it appears to the Registrar that such requirements are not met, he shall inform the
applicant and give him an opportunity, within such period as the Registrar may specify, to make
representation or to file amended regulations.
(3) If the applicant fails to satisfy the Registrar that such requirements are met, or to file
regulation amended so as to meet them, or fails to respond before the end of the specified period, the
Registrar shall refuse the application.
(4) If it appears to the Registrar that such requirements, and the other requirements for
registration, are met, he shall accept the application and shall proceed in accordance with section 28.
9. Regulations to be published.___The regulations governing the use of a registered
certification mark shall be published and notice of opposition may be given, and observations may be
made, relating to the matters specified in sub-para (1) of para 7, in addition to any other grounds on
which the application may be opposed or observations made.
10. Regulations to be open to inspection.___The regulations governing the use of a
registered certification mark shall be open to be public inspection in the same way as the Register.
11. Amendment of regulations.___(1) An amendment of the regulations governing the use of
a registered certification mark shall not be effective unless and until the amended regulations are
filed with the Registrar and accepted by him.
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(2) Before accepting any amended regulations the Registrar may, in any case where it appears
to him expedient to do so, cause them to be published.
(3) If he does so, a notice of opposition may be given, and observations may be made,
relating to the matters specified in sub-para (1) of para 7.
12. Consent to assignment of registered certification mark.___The assignment or other
transmission of a registered certification mark shall not be effective without the consent of the
Registrar.
13. Infringement of rights of authorised user.___The following provisions shall apply in
relation to an authorised user of a registered certification mark as in relation to a licensee of a trade
mark, namely:—
(a) sub-section (7) of section 40;
(b) sub-section (2) of section 51; and
(c) section 53.
14. The High Court or 1[an IP Tribunal] to take into account loss suffered by authorised
users.___In infringement proceedings brought by the proprietor of the registered certification mark
any loss suffered or likely to be suffered by authorised user shall be taken into account and the High
Court or 1[the IP Tribunal] may give such directions as it thinks fit as to the extent to which the
plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.
15. Additional grounds for revocation of registration.___Apart from the grounds of
revocation provided for in section 73, the registration of a certification mark may be revoked on any
of the following grounds, namely:___
(a) that the proprietor has begun to carry on such a business as is specified in para
4;
(b) that the manner in which the mark has been used by the proprietor has caused
it to become liable to mislead the public in the manner referred to in sub-para
(1) of para 5;
(c) that the proprietor has failed to observe, or to secure the observance of, the
regulations governing the use of the mark;
(d) that an amendment of the regulations has been made so that the regulations__
1
Subs. by Act No. LVIII of 2023, s. 51.
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(i) no longer comply with the requirements of sub-para (2) of para 6, and
any further conditions as may be prescribed; or
(ii) are contrary to public policy or to accepted principles of morality; or
(e) that the proprietor is no longer competent to certify the goods or services for
which the mark is registered.
16. Additional grounds for invalidity of registration.___Apart from the grounds of
invalidity provided for in section 80, the registration of a certification mark may be declared invalid
on the ground that the mark was registered in breach of the provisions of para 4, sub-para (1) of para
5 or sub-para (1) of para 7.
THIRD SCHEDULE
[See section 84(2)]
DOMAIN NAMES
1. General.___The provisions of this Ordinance shall apply to domain names subject to the
provisions contained in this Schedule.
2. Requirements for registration.___(1) A domain name if used as a source identifier may be
registered as a trade mark in respect of relevant goods or services.
(2) The applicant for registration of domain name shall show that he offers goods or services
via Internet using the domain name. Such evidence shall be in the form of specimen showing use of
the domain name as a source identifier.
Explanation.___For the purpose of this para, use of a domain name shall be taken as source
identifier if it is used on Internet to distinguish goods or services of one undertaking from the other
provided that use of a domain name as a mere directional reference, similar to use of a telephone
number or business address shall not be taken as use of the domain name as a source identifier.
(3) Provisions may be made by rules for further identification and classification of computer
related services associated with Internet.
3. Indication of geographical origin.___(1) Notwithstanding the provisions of clause (c) of
sub-section (1) of section 14, a domain name may be registered which consist of marks or indications
which may serve, in trade, to distinguishing the geographical origin of the goods or services.
(2) The proprietor of such a mark shall not be entitled to prohibit the use of the marks or
indications in accordance with honest practices in industrial or commercial matters, in particular, by
a person who is entitle to use a geographical name.
4. Domain name not to lie misleading as to character or significance.___(1) A domain
name shall not be registered if the public is liable to be mislead as regards the character or
significance of the mark, in particular, if it is likely to be taken to be something other than a domain
name.
(2) The Registrar may, accordingly, require that a mark in respect of which application has
been made for registration include some indication that it is a domain name.
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(3) Notwithstanding the provisions of sub-section (7) of section 27, an application may be
amended so as to comply with any such requirement.
5. Procedure for acceptance, opposition and registration.___The provisions of this
Ordinance for acceptance, registration and opposition as they apply to trade marks shall also apply to
the domain names.
6. Term of registration and renewal.___Notwithstanding the provisions of sections 32 and
33, a domain name shall be registered for a period of five years from the date of registration and may
be renewed for further periods of like term, as long as, the domain name is in actual use on Internet.
7. Provisions of section 73 not to apply to domain names.___The provisions of section 73
shall not apply to domain names.
8. Rules.___Provisions may be made by rules for further identification and classification of
computer related services associated with Internet.
THE FOURTH SCHEDULE
(See section 134)
TRANSITIONAL PROVISIONS
1. Introductory.___(1) In this Schedule, ___
(a) “existing registered mark” means a trade mark or certification mark registered
under the Trade. Marks Act, 1940 (V of 1940), immediately before the
commencement of this Ordinance;
(b) “1940 Act” means the Trade Marks Act, 1940 (V of 1940); and
(c) “old law” means the 1940 Act and any law for the time being in force,
applying to existing registered marks immediately before the commencement
of this Ordinance.
(2) For the purposes of this Schedule, ___
(a) an application shall be treated as pending on the commencement of this
Ordinance if it was made but not finally determined before such
commencement; and
(b) the date on which it was made shall be taken to be the date of filing under the
1940 Act.
2. Existing registered trade mark.___(1) The existing registered marks shall be transferred,
on the commencement of this Ordinance, to the Register, and shall have effect, subject to the
provisions of this Schedule, as if registered under this Ordinance.
(2) The existing registered marks registered as a series under sub-section (3) of section 11 of
the 1940 Act shall be similarly registered in the new Register.
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(3) Provisions may be made by rules for putting such entries in the same form as is required
for entries under this Ordinance.
(4) In any other case notes indicating that the existing registered marks are associated with
other marks shall cease to have effect on the commencement of this Ordinance.
3. Disclaimer, limitations and conditions.___A disclaimer, limitation or condition entered on
the register kept under the 1940 Act in relation to an existing registered mark immediately before the
commencement of this Ordinance shall be transferred to the Register and have effect as if entered on
the Register in pursuance of section 15.
4. Effect of Infringement.___(1) The provisions of sections 39 to 42 shall apply in relation to
an existing registered mark as from the commencement of this Ordinance and the provisions of
section 46 shall apply in relation to infringement of an existing registered mark committed after the
commencement of this Ordinance, subject to sub-para (3).
(2) The old law shall continue to apply in relation to infringement committed before the
commencement of this Ordinance.
(3) It shall not be an infringement of___
(a) an existing registered mark; or
(b) a registered trade mark of which the distinctive elements are the same or
substantially, the same as those of an existing registered mark and which is
registered for the same goods or services,
to continue after the commencement of this Ordinance any use which did not amount to infringement
of the existing registered mark under the old law.
5. Infringing goods, material and articles.___The provisions of section 48 shall apply to
infringing goods, material or articles trade before or after the commencement of this Ordinance.
6. Rights and remedies of licensee or authorised user.___ (1) The provisions of section 75
shall apply to license granted before the commencement of this Ordinance, but only in relation to any
infringement committed after such commencement.
(2) The provisions of para 14 of the Second Schedule shall apply only in relation to
infringement committed after the commencement of this Ordinance.
7. Co-ownership of registered trade mark.___The provisions of section 24 shall apply as
from the commencement of this Ordinance to an existing registered trade mark of which two or more
persons were, immediately before such commencement, registered as joint proprietor;
Provided that so long as the relations between the joint proprietors remain such as are
described in sub-section (2) of section 17 of the 1940 Act, there shall be taken to be an agreement to
exclude the operation of sub-sections (2) and (3) of section 24.
8. Assignment of registered trade mark.___ (1) The provisions of section 67 shall apply to
transactions and events occurring after the commencement of this Ordinance in relation to an
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existing registered trade mark, and the old law shall continue to apply in relation to transactions and
events occurring before such commencement.
(2) The existing entries under section 35 of the 1940 Act shall be transferred on the
commencement of this Ordinance to the Register, and shall have effect as if made under section 70.
(3) An application for registration under section 35 of the 1940 Act, which is pending before
the Registrar on the commencement of this Ordinance shall be treated as an application for
registration under section 70 and shall proceed accordingly:
Provided that the Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(4) An application for registration under section 35 of the 1940 Act, which has been
determined by thy Registrar but not finally determined before the commencement of this Ordinance
shall be dealt with under the old law, and the provisions of sub-para (2) shall apply in relation to any
resulting entry in the Register.
(5) Whether before the commencement of this Ordinance, a person has become entitled by
assignment or transmission to an existing registered trade mark but has not registered his title, any
application for registration after such commencement shall be made under section 70.
(6) In case to which the provisions of sub-para (3) or (5) applies, the provisions of sub-
section (2) of section 35 of the 1940 Act shall continue to apply, and the provisions of sub-section
(3) of section 68 shall not apply, as regards the consequences of failing to register.
9. Licensing of registered trade mark.___(1) The provisions of section 73 and sub-section
(2) of section 74 shall apply only in relation to licences granted after the commencement of this
Ordinance, and the old law shall continue to apply in relation to licences granted to authorised users
before the commencement of this Ordinance.
(2) The existing entries under section 39 of the 1940 Act shall be transferred on the
commencement of this Ordinance to the Register, and shall have effect as if made under section 70.
(3) Provisions may be made by rules for putting entries referred to in sub-para (2) in the same
form as is requires for entries made under this Ordinance.
(4) An application for registration as a registered user which is pending before the Registrar
on the commencement of this Ordinance shall be treated as an application for registration of a licence
under sub-section (1) of section 70 and shall proceed accordingly:
Provided that the Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(5) An application for registration as a registered user which has been determined by the
Registrar but not finally determined before the commencement of this Ordinance shall be dealt with
under the old law, and the provisions of sub-para (2) shall apply in relation to any resulting entry in
the Register.
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(6) Any proceedings pending on the commencement of this Ordinance under section 42 of the
1940 Act shall be dealt with under the old law and any necessary alteration shall be made to the
Register.
10. Pending applications for registration.___(1) An application for registration of a mark
under the 1940 Act which is advertised under sub-section (1) of section 15, or the proviso to that
sub-section of the 1940 Act, or an order has been made for its advertisement before the
commencement of this Ordinance shall be dealt with under the old law, subject as provided in the
following paras, and if registered, the mark shall be treated for the purpose of this Schedule as an
existing registered trade mark.
(2) The provisions of section 12 of the 1940 Act shall be disregarded in dealing, after the
commencement of this Ordinance, with an application for registration.
11. Conversion of pending application.___(1) In the case of pending application for
registration which has not been advertised under sub-section (1) of section 15, or the proviso to that
sub-section of the 1940 Act, neither an order has been made for such advertisement before the
commencement of this Ordinance, the applicant may give notice to the Registrar claiming to have the
registrability of the mark determined in accordance with the provisions of this Ordinance.
(2) The notice under sub-para (1) shall be in the prescribed form, be accompanied by the
appropriate fee and be given no later than twelve months after the commencement of this Ordinance.
(3) The notice under sub-para (1), duly given shall be irrevocable and have the effect that the
application shall be treated as if made immediately after the commencement of this Ordinance.
12. Trade marks registered according to old classification.___The Registrar may exercise
his powers to secure that any existing registered trade marks which do not conform to the system of
classification prescribed under section 12 are brought in conformity with that system.
13. Claim to priority from overseas application.___The provisions of section 25 shall apply
to an application for registration under this Ordinance made after the commencement of this
Ordinance notwithstanding that the Convention application was made before such commencement.
14. Duration and renewal of registration.___(1) The provisions of subsection (1) of section
32 shall apply in relation to the registration of a mark in pursuance of an application made after the
commencement of this Ordinance, and the old law shall apply in any other case.
(2) The provisions of sub-section (2) of section 32 and section 33 shall apply where the
renewal falls due on or after the commencement of this Ordinance, and the old law shall continue to
apply in any other case.
(3) In either case referred to in sub-para (2) or (3), it shall be immaterial when the fee is paid.
15. Pending application for alteration of registered trade mark.___An application under
section 48 of the 1940 Act, which is pending on the commencement of this Ordinance shall be dealt
with under the old law and any necessary alteration shall be made in the Register.
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16. Revocation for non-use.___ (1) An application under section 37 of the 1940 Act, which is
pending on the commencement of this Ordinance shall be dealt with under the old law and any
necessary alteration shall be made to the Register.
(2) An application made under clause (a) or (b) of sub-section (1) of section 73 may be made
in relation to an existing registered mark at any time after the commencement of this Ordinance:
Provided that no such application for the revocation of the registration of an existing
registered mark under section 38 of the 1940 Act may be made until more than five years after the
commencement of this Ordinance.
17. Application for rectification.___(1) An application under section 46 of 47 of 1940 Act,
which is pending on the commencement of this Act shall be dealt with under the old law and any
necessary alteration shall be made to the Register.
(2) For the purpose of proceedings under section 80 as it applies in relation to an existing
registered mark, the provisions of this Ordinance shall be deemed to have been in force at all
material times:
Provided that no objection to the validity of the registration of an existing registered mark
may be taken on the grounds specified if sub-section (3) of section 17 in conflict with earlier mark
registered for different goods.
18. Regulations as to use of certification mark.___(1) Regulations governing the use of an
existing registered certification mark deposited at the Trade Marks Registry under the 1940 Act shall
be treated after the commencement of this Ordinance as if filed under para 6 of the Second Schedule.
(2) Any request for amendment of the regulations which was pending on the commencement
of this Ordinance shall be dealt with the old law.
________________
Date: 11-09-2024
Page 91 of 91
Source: Pakistan Code, Ministry of Law and Justice (pakistancode.gov.pk). Text on this page is reproduced verbatim from the official PDF and is provided for reference only. For the authoritative version, always consult the source document or a current reported edition.
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