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Trade Mark Ordinance 2001
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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:-
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CHAPTER
I.- PRELIMINARY
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1-Short title, extent and commencement.-
- This Ordinance may be called the Trade
Marks Ordinance, 2000.
- It extends to the whole of Pakistan.
- This section and section 132 shall come
into force at once; the remaining provisions
of the Ordinance shall come into force on
such date as the Federal Government may, by
notification in the official gazette, appoint
in this behalf.
2-Definitions:-In this Ordinance, unless
there is anything repugnant in the subject or
context,-
- "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;
- "assignment" in
relation to a trade mark, means an assignment
in writing by act of the parties concerned;
- "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;
- "certification mark"
means a certification mark as defined in sub-section
(1) of section 83;
- "collective mark"
means a collective mark as defined in sub-section
(1) of section 82;
- "comparative advertisement"
means an advertisement which explicitly or
by implication identifies a competitor or
goods or services offered by a competitor;
- "Convention application"
means an application as defined in sub-section
(1) of section 25;
- "Convention country"
means a Convention country as defined in clause
(b) of section 85
- "counterfeit trade mark
goods" means any goods including packaging
bearing without authorization a trade mark
which is identical to the trade mark validly
registered in respect of such goods or which
cannot be distinguished in its essential aspects
from such a trade mark and thereby infringes
the rights of the owner of the trade mark
under this Ordinance;
- "Court" means the
High Court;
- "date of filing"
means-
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- 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
- in relation to a divisional application
for the registration of a trade mark, the day on
which the initial application within the meaning
of sub-section (1) of section 32 is filed; or
- in relation to an application to
provide temporary protection during exhibition,
the day referred to in sub-section (1) of section
26; or
- in relation to a Convention application,
the day referred to in clause (a) of sub-section
(2) of section 25;
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- "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;
- "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;
- "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;
- "District Court" has the
meanings assigned to that expression by the Code
of Civil Procedure, 1908 (Act V of 1908);
- "divisional application"
means a divisional application as defined in sub-section
(1) of section 32;
- "domain name" means the
domain name as defined in sub-section (1) of section
84;
- "earlier trade
mark" means an earlier trade mark as defined
in sub-section (1) of section 18;
- "false
trade description" means-
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- a trade description
which is untrue or misleading in a material respect
as regards the goods or services to which it is
applied;
- 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;
- any mark or arrangement
or combination thereof when applied-
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- to goods in such a manner as to
be likely to lead persons to believe that the goods
are the manufacture or merchandise
of some person other than the person whose merchandise
or manufacture they really are; or
- in relation to services in such
a manner as to be likely to lead persons to believe
that the services are provided or rendered by some
person other than the person whose services they
really are;
- 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,
- is or
are not a trade mark or part of a trade mark;
- 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
- 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
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- 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;
- geographical
indication", in relation to goods originating
in a particular country or in a region or
locality of that country, means a mark recognized
in that country as a mark indicating that
the goods-
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- originated in that country, region
or locality; and
- have a quality, reputation or other
characteristic attributable to their geographical
region;
- "goods"
means anything which is subject of trade,
commerce or manufacture;
- "Journal"
means the Trade Marks Journal published under
the authority of the Registrar;
- "licensee"
means a person using a registered trade mark
by virtue of a transaction;
- "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;
- "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;
- "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
- "name" includes
any abbreviation of name;
- "notify" means to
notify in the Journal;
- "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;
- "packaging" includes,
in particular, any case, box, container, covering,
folder, receptacle, vessel, casket, bottle,
wrapper, band, reel, frame, capsule, cap,
lid, stopper and cork;
- "Paris Convention"
means the Paris Convention as defined in clause
(a) of section 85;
- "permitted use",
in relation to a trade mark, means the use
of the trade mark by an authorised user;
- "predecessor in title",
in relation to a person who claims to be the
proprietor of a trade mark, means:-
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- 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
- if sub-clause (a) does not
apply, the person who assigned the trade mark,
or from whom the trade mark was transmitted
to the first-mentioned person;
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- "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;
- "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;
- "proprietor of
earlier right", in relation to
a trade mark, means a person entitled
to prevent the use of a trade mark;
- "Register"
means the Register of Trade Marks maintained
under sub-section (1) of section 10;
- "Registrar"
means the Registrar of Trade Marks appointed
under section 7;
- "registered",
with its grammatical variations, means
registered under this Ordinance or the
Trade Marks Act, 1940 (V of 1940);
- "registered trade
mark" means a trade mark which
is actually on the Register;
- "rules" means
the rules made under this Ordinance;
- "Schedule"
means a Schedule to this Ordinance;
- "seized goods"
means goods seized under section 56;
- "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;
- "similar goods"
includes goods which are of the same
description;
- "similar services"
include services which are of the same
description;
- "trade
description" means any description,
statement or other indication, direct
or indirect-
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- as
to the number, quantity, measure, gauge
or weight of any goods; or
- as to the standard of
quality of any goods or services according
to classification commonly used or recognized
in the trade; or
- as to fitness for the
purpose, strength, performance or behaviour
of any goods, being drugs or foods;
or
- 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
- as to the name and address
or other indication of the identity
of the manufacturer or of the person
providing the services or of the persons
for whom the goods are manufactured
or services provided; or
- as to the mode of manufacture
or producing any goods or providing
services; or
- as to the material of
which any goods are composed; or
- as
to any goods being the subject of an
existing patent, privilege or copyright,
and includes-
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- 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;
- any description
as to any imported goods contained
in any bill of entry or shipping
bill; and
- any other description
which is likely to be misunderstood
or mistaken for all or any of
the said matters;
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- "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;
- "Trade Marks Registry" means
the Trade Marks Registry established
under section 9;
- "trade names" means names
used by a person to denote his trade
or calling and includes firms' and companies'
names;
- "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;
- "tribunal" means the Registrar
or, as the case may be, the Court before
which the proceedings concerned is pending;
- "unfair competition" means
an unfair competition as defined in
section 67; and
- "word" includes an abbreviation
of a word
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3. Goods and services
when associated, etc.- (1) For the purposes of this
Ordinance,
- 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;
- 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.
- a trade mark shall be taken
used in relation to goods or services if the
trade mark is used-
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(2) Where the owner of a trade mark exercises quality
control over goods or services-
- dealt with or provided in the course of
trade by another person; and
- in relation to which the trade mark is used
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the other person shall be taken to use the trade
mark in relation to the goods or services under the
control of the owner.
(3) Where ___
- a 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,
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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
- to use of a trade mark shall include reference
to use of the trade mark in relation to goods,
as well as, on goods;
- to use of a trade mark in relation to goods
shall include reference to use of the trade
mark on goods, or vice versa;
- 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
- to the Trade Marks Registry shall be construed
as including a reference to any branch of
the Trade Marks Registry.
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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.
- review any function, matter,
case or decision of any officer; or
- withdraw any function, matter
or case from any officer or staff,
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