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The Trade Marks Ordinance 2001
The Trade Marks Ordinance 2001
WHAT IS TRADEMARK?
A 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 [sec 2 (xlvii)]. In other words, a trademark is used to
identify goods made or services rendered by specific person.
A mark includes, in particular, a device, brand, heading, label, ticket, name
including personal name, signature, word, letter, numeral, shape of goods or
their packaging, figurative element, colour, sound, scent or any combination
thereof [sec 2 (xxiv)].
The Register shall be kept under the control and management of Registrar,
subject to the superintendence and direction the Federal Government [sec 10
(2)].
A copy of the Register and such other documents may be kept at each branch
office of Trade Marks Registry, as the Registrar may direct by notification in the
journal [sec 10 (4)].
The register of Trade Mark may be kept in whole, or in part, by using a
computer and any entry of bonafide record of a particular or other matter
made by using a computer shall constitute an entry in the Register [sec 10 (3)].
In such a case, the requirements of keeping a copy of Register at branch offices
is satisfied if access is given to a computer terminal from which a person can
reads a screen, or obtain a printed copy of, the particulars or other matters
recorded in the Register or that part of the Register [proviso of sec 10 (4)].
The Register shall be open to the inspection of the public at all convenient
times subject to such conditions and restrictions as may be prescribed [sec 10
(5)].
Classification of Goods and Services: In accordance with the international
classification of goods and services, a Trade Mark under this ordinance may be
registered in respect of:
a. Good;
b. Services; or
c. Both goods and services.
If incase question arises 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
[sec 12].
Absolute Ground for Refusal of Registration: Following are the absolute
grounds for refusal of registration of Trade Mark [sec 14]:
1. A mark not satisfying the requirements of section 2 (xlvii);
2. Trade Marks devoid of distinctive character;
3. Trade Marks consisting exclusively of marks or indications which may
serve, in trade, to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time of production of goods or
rendering of services, or other characteristics of goods or services;
reputation in Pakistan and use of their mark without due cause would
take unfair advantage of, or be detrimental to, the distinctive character
or the repute of the earlier trade mark [sec 17 (3)].
5. A trade mark, the use of which in whole or to some extent is prevented
by virtue of any law, particularly the law of passing off [sec 17 (4) (a)].
Passing off means someone is using unregistered trade mark to
represent goods or services as their own.
6. A trade mark, the use of which in whole or to some extent is prevented
by virtue of the law of copyright, design right or registered designs,
except rights as aforesaid [sec 17 (4) (b)].
Honest Concurrent Use: If on application for the registration of a trade mark it
appears to the Registrar that there is:
a. An earlier trade mark in relation to which the conditions set out in sub-
section (1), (2) or (3) of section 17 obtain; or
b. An earlier right in relation to which the condition set out in sub-section
(4) of section 17 is satisfied,
But the applicant proves to the satisfaction of the Registrar that there has been
honest concurrent use of the trade mark for which registration is sought, the
Registrar shall not refuse the application by reason of the earlier trade mark or
other right unless objection on that ground is raised in opposition proceedings
by the proprietor of that earlier trade mark or other earlier right [sec 19 (1)].
But, nothing herein contained shall affect the absolute refusal of registration of
trademark u/s 14 or grounds of invalidity u/s 80 [sec 19].
Co-ownership of Trade Mark: Two or more persons may also jointly apply for
the registration of a trade if the relations between than 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
concerned in the course of trade [sec 24 (1)]. In case of joint trade mark, each
of them shall be entitled to an equal undivided share, subject to any
agreement to the contrary [sec 24 (2)]. Each co-proprietor shall also be entitled
to do, by himself or through his agents, any acts which would otherwise
amount to infringement of trade mark, for his benefit without consent or
accounting to other co-proprietors [sec 24 (4)]. However, a co-proprietor may
not grant a license of or assign or charge his share in registered trade mark
without consent of other co-proprietors [sec 24 (5)]. Infringement proceedings
may not be brought by any co-proprietor, without the leave of the Court,
unless other co-proprietors are joined as plaintiffs or added as defendants [sec
24 (6)].
Publication of Application: When the Registrar has accept the application for
registration of a trade mark, whether absolutely or subject to conditions or
limitations, he shall cause the application along with conditions and limitations,
if any, to be published in the Journal and the advertisement of trade mark in
the Journal shall constitute sufficient notice of acceptance of trade mark for all
legal purposes [sec 28 (1)]. The Registrar may also cause an application to be
advertised before acceptance under exceptional circumstances, notifying such
circumstances and if the application has been advertised so, he may advertise
it again after acceptance but shall not be bound to do so.
If the applicant sends the counter-statement, the Registrar shall serve a copy
of the counter-statement on the opponent. Thereafter, the opponent may
send a rejoinder to the Registrar, within one month from the receipt of such
copy of counter-statement, or within such further period not exceeding two
months in the aggregate as the Registrar may allow on application made to
him and upon payment of prescribed fee [sec 28 (5)].
If the opponent sends a rejoinder, the Registrar shall send a copy of the
rejoinder to the applicant [sec 28 (6)].
The parties shall, within prescribed time, submit any evidence upon which they
rely to the Registrar, and the Registrar shall give an opportunity to them to be
heard, if they so desire [sec 28 (7)].
The Registrar shall, unless the proceedings are discontinued or dismissed, after
giving an opportunity of hearing to the applicant and opponent, decide
whether and subject to what conditions or limitations, if any, registration is to
be permitted [sec 28 (8)].
The Registrar may if he deems fair and reasonable to do so, on request, 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 deems fit [sec 28 (9)].
Registration: The Registrar shall register the trade mark within prescribed
period if the application has been accepted and (a) no opposition is made; or
(b) if opposition was made, all opposition proceedings have been withdrawn or
decided in favour of the applicant, unless it appears to him that he accepted
the application in error [sec 33 (1)]. Thereafter, the Registrar shall publish such
registration of trade mark and shall issue a certificate sealed with the seal of
the Trade Marks Registry to the applicant [sec 33 (4)]. The date of registration
of trade mark shall be the date of filing of the application [sec 33 (3)].
A trade mark shall not be registered unless:
1. Any fee prescribed for registration is paid within prescribed period and
the application shall be deemed to have been withdrawn [sec 33 (2)];
2. Registration of trade mark is not completed within twelve months from
the date of the application by reason of default on the part of applicant,
and the Registrar may treat the application as abandoned if it is not
completed within the time specified in that behalf in the notice [sec 33
(5)].
Effect of removal from Register for failure to pay fee for removal: If a
registered trade mark is removed from the Journal on account of failure to pay
renewal fee, it shall be deemed to be a trade mark already on the Register for
the purpose of registration of another trade mark during one year from the
first date of the removal, unless the tribunal is satisfied that:
a. The trade mark so removed had no bonafide use during the two years
immediately preceding its removal; or
b. No deception of confusion would be likely to arise from the use of the
trade mark subject of the application of registration by reason of any
previous use of the trade mark which has been removed.
proceedings for relief against the person making the threat [sec 52 (1)]. An
aggrieved person may seek any of the reliefs of: (a) a declaration that the
threats are unjustifiable; or (b) an injunction against the continuance of
threats; or (c) damages in respect of any loss he has sustained by the threats
[sec 52 (2)]. The plaintiff shall be entitled to any of the reliefs aforesaid unless
the defendant shows that the acts in respect of which proceedings were
threatened constitute or would constitute an infringement of registered trade
mark [sec 52 (3)], and then the plaintiff shall be entitled to any of the aforesaid
reliefs if he shows that the registration of a trade mark is invalid or is liable to
be revoked [sec 52 (4)].
Seizure of Goods bearing Infringing Trade Mark: If the goods which: (a) bear
on them a trade mark which, in the opinion of the Collector of Customs, is
identical with or deceptively similar to the registered trade mark; and are
goods in respect of which trade mark is registered, the Collector of Customs
may seize the goods unless he is satisfied that there are no reasonable grounds
of believing that the trade mark shall be infringed by the importation of the
goods and the seized goods shall be kept in a secure place as directed by the
Collector of Customs [sec 56].
Notice of Seizure: After seizing the goods u/s 56, the Collector of Customs shall,
as soon as practicable, give notices two notices to the following:
a. A notice, either personally or by urgent post, in writing to the importer,
consignee or owner of the goods, therein identifying the goods and
stating that they have been seized u/s 56;
b. A notice to the applicant in writing, therein: (i) identifying the goods and
stating that they have been seized u/s 56; (ii) giving full name and
address of the importer, consignee or owner of the goods and any
information that the Collector of Customs believes, on reasonable
grounds, to be likely to help the applicant to identify the importer or the
owner of the goods; and (iii) stating that the goods shall be released to
the importer, consignee or owner of the goods if the applicant failed to
bring an action for infringement of the registered trade mark in respect
of goods before a District Court having jurisdiction in the matter and
gives the Collector of Customs notice in writing of the action within the
period of ten working days after the applicant has been given the
notice, or if the Collector of Customs extends the period u/s 60 (1)
within such extended period [sec 57].
Forfeiture of Goods: If the importer, consignee or owner of any seized
goods gives consent, by notice in writing, to the goods being forfeited
by the Collector of Customs, the goods shall be so forfeited by the
Collector of Customs [sec 58].
Release of Goods: In pursuant to section 59, the Collector of Customs
shall/ may release the seized goods to their designated importer,
consignee or owner under three circumstances as under:
1. The Collector of Customs shall release the seized goods to their
designated importer, consignee or owner of the goods so seized,
if the applicant has not: (a) brought an action for infringement of
the registered trade mark in respect of the goods, and (b) given to
the Collector of Customs notice in writing of the action [sec 59
(1)].
If a District Court decides that the registered trade mark was not infringed by
the importation of the goods, and the designated importer, consignee or
owner of the goods satisfied that Court that he has suffered losses or damage
because of seizure of goods; the Court may order the applicant to pay the
defendant, 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 [sec 60 (5)].
If, after three weeks from the day on which the action was brought, there is no
order of a District Court in force preventing the goods from being released, the
Collector of Customs shall release the goods to their designated importer,
consignee or owner [sec 60 (6)]. However, if a District Court orders that the
goods be released, the Collector of Customs shall comply with the order
subject to section 63 of this ordinance [sec 60 (7)].
Power of the Collector of Customs to retain control of goods: The Collector of
Customs shall not: (a) release or dispose of any goods; or (b) take any action in
relation to the goods to give effect to any order of a District Court under
section 60, and Collector of Customs 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 [sec 63].
PENALTIES
Penalty for Applying false trade description, etc: A person shall be punished
with imprisonment of either description for a term of atleast three months and
not more than two years, or with fine which shall not be less than fifty
thousand rupees or with both, if he:
1. Applies any false trade description to goods or services;
4. To the effect that the registration of a trade mark gives an exclusive right
to the use thereof in any circumstances, but in fact the registration does
not give that right having regard to limitations entered on the Register.
Complaint Mechanism: 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 above provisions to show cause as to why action
should not be taken against him. However, the powers of Registrar shall be
limited to the imposition of fine, or to refusal of application for registration of
the trade mark is registration is pending, or to invalidation of the registration if
the trade mark is registered, or any combination thereof, as the case may be
[sec 102 & proviso].
Improperly describing a place of business as connected with the Trade Marks
Registry: Whoever uses his place of business, or on any document issued to
him, or otherwise, words which would reasonable 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 [sec 107].
Powers to Award Compensation for Offences: A competent court may, while
passing a sentence of fine, direct that an amount not exceeding fifty percent 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 [sec 105 (1)]. Such
compensation shall not prejudice the right to claim of any claim in a suit or
other proceedings which may be instituted or pending in a Court, in relation to
the same matter [sec 105 (2)].
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Appeal Against the Decision of Registrar: An appeal against any decision of
the Registrar under this ordinance or rules made thereunder to the High Court
having jurisdiction, within prescribed period. However, if any suit or other
proceeding concerning the trade mark in question is pending before a High
Court or a District Court, the appeal shall lie to that High Court or, as the case
may be, to the High Court in whose jurisdiction that District is situated [sec 114
(1) & proviso].
5. Generic Trade Marks: A generic term is the common name for the
products or services in connection with which it is used. Generic "marks"