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7. Appointment of Registrar and other
officers.- (1) The Federal Government
may by notification in the official
Gazette, appoint an officer who shall
be called the Registrar of Trade Marks.
(2) The Federal Government may appoint
such other officers with such designations
as it deems fit for performing under
the superintendence and direction
of the Registrar, such function of
the Registrar, under this Ordinance
as he may, from time to time, authorise
them to discharge.
8. Power of Registrar to review,
withdraw or transfer cases.- The
Registrar may, by order in writing-
- 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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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from the stage it was so withdrawn,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:
Provided that till such time the
Trade Marks Registry is established,
the Trade Marks Registry established
under the Trade Marks Act, 1940 (V
of 1940), shall be the Trade Marks
Registry for the purposes of this
Ordinance.
(2) For the purpose of facilitating
registration of trade marks, there
may be established at such places,
as the Federal Government may think
fit, branch offices of the Trade Marks
Registry.
(3) There shall be a seal of the
Trade Marks Registry.
10. Register of Trade Marks.-(1)
For the purposes of this Ordinance,
a record called the Register of Trade
Marks shall be kept at the Trade Marks
Registry wherein shall be entered
particulars of all registered trade
marks with the names, addresses and
description of the proprietors, notifications
of assignments and transmissions,
the names, addresses and descriptions
of licensees, disclaimers, conditions,
limitations and such other matters
relating to registered trade marks
as may be prescribed, but there shall
not be entered in the Register any
notice of any trust express, implied
or constructive, nor shall any such
notice be receivable by the Registrar.
(2) Subject to the superintendence
and direction of the Federal Government,
the Register shall be kept under the
control and management of the Registrar.
(3) The Register may be kept in whole,
or in part, by using a computer any
bona fide record of a particular or
other matter made by using a computer
for the purposes of keeping the Register
shall, for the purposes of this Ordinance,
constitute an entry in the Register.
(4) There shall be kept at each branch
office of the Trade Marks Registry,
a copy of the Register and such of
the other documents as the Registrar
may, by notification in the Journal,
direct:
Provided that if the Register in
whole, or any part thereof, is kept
by using a computer and access to
a computer terminal from which a person
in a branch office can read a screen,
or obtain a printed copy of, the particulars
or other matters recorded in the Register
or that part of the Register, requirement
under this sub-section of keeping
a copy of the Register at that branch
office shall be satisfied.
(5) The Register shall at all convenient
times be open to the inspection of
the public subject to such conditions
and restrictions as may be prescribed.
(6) If the Register in whole, or
any part thereof, is kept by using
a computer, the requirements of sub-section
(5) shall be satisfied if a person
who wants to inspect the Register
or that part of the Register is given
access to a computer terminal from
which he can read a screen, or obtain
a printed copy of, the particulars
or other matters recorded in the Register
or that part of the Register.
.11. Evidence of entries in Register
and things done by Registrar.-
(1) A printed, written or computer
generated copy of any entry in the
Register, purporting to be certified
by the Registrar and sealed with the
seal of the Trade Marks Registry,
shall be admitted in evidence in all
Courts in Pakistan and in all proceedings
without further proof or production
of the original.
(2) A certificate purporting to be
issued under the hand of the Registrar
as to any entry, matter or thing that
he is authorised by this Ordinance
or the rules to make or do shall be
prima facie evidence of the entry
having been made and of the contents
thereof, or of the matter or thing
having been done or not done.
12. Classification of goods and
services.- (1) A trade mark may
be registered in accordance with the
provisions of this Ordinance in respect
of-
- goods;
- services; or
- both goods and services,
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comprised in the prescribed classification
of goods or services in accordance with
the international classification of
goods and services.
(2) Any question arising as to the
class within which any goods or services
fall shall be determined by the Registrar
whose decision in the matter shall
be final.
13. Publication of an alphabetical
index of classification of goods and
services.-(1) The Registrar may
publish in the prescribed manner an
alphabetical index of classification
of goods and services.
(2) Where any goods or services are
not specified in the alphabetical
index of goods and services, published
under sub-section (1), the classification
of goods and services shall be determined
by the Registrar in accordance with
sub-section (2) of section 12.
14. Absolute grounds for refusal
of registration.- (1) The following
shall not be registered, namely:-
- marks which
do not satisfy the requirements
of clause (xlviii) of section
2;
- trade marks
which are devoid of any distinctive
character;
- 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
- trade mark
which consist exclusively
of marks or indications which
have become customary in the
current language or in the
bona fide and established
practices of the trade:
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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-
- the shape
which results from the nature
of the goods themselves;
- the shape
of goods which is necessary
to obtain a technical result;
or
-
the shape which gives substantial
value to the goods.
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(3) No trade mark nor any part thereof
in respect of any goods or services
shall be registered which consists of,
or contains, any scandalous design,
or any matter the use of which would-
- by reasons
of its being likely to deceive
or to cause confusion or otherwise,
be disentitled to protection
in a Court;
- be likely to
hurt the religious susceptibilities
of any class of citizens of
Pakistan; or
- be contrary
to any law, for the time being
in force, or morality.
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(4) A trade mark shall not be registered
if or to the extent that the application
is made in bad faith.
15. Limitation as to colour.-
(1) A trade mark may be limited wholly
or in part to one or more specified
colours, and any such limitation shall
be taken into consideration by any
tribunal having to decide on the distinctive
character of the trade mark.
(2) So far as a trade mark is registered
without limitation of colour it shall
be deemed to be registered for all
colours.
16. Use of names of chemical compounds
barred.- (1)No word which is the
commonly used and accepted name of
any single chemical element or single
chemical compound as distinguished
from a mixture or which is declared
by the World Health Organization and
notified in the prescribed manner
by the Registrar, from time to time,
as an international non-proprietary
name shall be registered as a trade
mark in respect of a chemical substance
or preparation, and any such registration
shall, notwithstanding anything in
section 44, be deemed for the purposes
of section 98 to be an entry made
in the Register without sufficient
cause or an entry wrongly remaining
on the Register, as the circumstances
may require.
(2 This section shall not apply to
a word which is used to denote only
a brand or make of the element or
compound as made by the proprietor
or a licensee of the trade mark, as
distinguished from the element or
compound as made by others, and in
association with a suitable name or
description open to the public use.
17. Relative grounds for refusal
of registration.- (1) A trade
mark shall not be registered if it
is identical with an earlier trade
mark and the goods or services, for
which the trade mark is applied for,
are identical with the goods or services
for which the earlier trade mark is
registered.
(2) A trade mark shall not be registered
because-
- 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
- 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,
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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-
- is identical
with or similar to an earlier
trade mark; and
- is to be registered
for goods or services which
are not similar to those for
which the earlier trade mark
is registered,
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shall not be registered if, or to the
extent that, the earlier trade mark
has a reputation in Pakistan and the
use of the later mark without due cause
would take unfair advantage of, or be
detrimental to, the distinctive character
or the repute of the earlier trade mark.
(4) A trade mark shall not be registered
if, or to the extent that, its use
in Pakistan is liable to be prevented-
- by virtue
of any law, in particular,
the law of passing off, protecting
an unregistered trade mark
or other mark used in the
course of trade; or
- by
virtue of an earlier right
other than those referred
to in sub-sections (1), (2)
and (3) or clause (a) of this
sub-section, in particular
by virtue of the law of copyright,
design right or registered
designs.
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(5) Nothing in this section shall prevent
the registration of a trade mark where
the proprietor of the earlier trade
mark or other earlier right consents
to the registration.
(6) Where separate applications are
made by different persons to be registered
as proprietors respectively of trade
marks which are identical or nearly
resemble each other, in respect of
the same goods or description of goods,
the Registrar, if thinks fit, may
refuse to register any of them until
their rights have been determined
by a Court.
18. Meaning of "earlier trade
mark".- (1) In this Ordinance,
"earlier trade mark" means-
- 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;
- a trade mark
filed under sub-section (1)
of section 26; or
- 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.
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(2) References in this Ordinance to
an earlier trade mark include a trade
mark in respect of which an application
for registration has been made and which,
if registered, would be an earlier trade
mark by virtue of clause (a) or (b)
of sub-section (1), subject to its being
so registered.
(3) A trade mark shall, within clause
(a) or (b) of sub-sections (1), whose
registration expires, continue to
be taken into account in determining
the registrability of a later mark
for a period of one year after the
expiry unless the Registrar is satisfied
that there was no bona fide use of
the mark during two years immediately
preceding the expiry.
19. Raising of relative grounds
in case of honest concurrent use.-
(1) Where on application for the registration
of a trade mark it appears to the
Registrar that there is-
- an earlier
trade mark in relation to
which the conditions set out
in sub-section (1), (2) or
(3) of section 17 obtain;
or
- an
earlier right in relation
to which the condition set
out in sub-section (4) of
section 17 is satisfied,
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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-
- the refusal
of registration on the grounds
mentioned in section 14; or
- the
making of an application for
a declaration of invalidity
under sub-section (2) of section
80.
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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-
- statements
or representations as to the
goods or services in relation
to which the trade marks are
respectively used or proposed
to be used;
- statements
or representations as to number,
price, quality or names of
places;
- other matter
of a non-distinctive character
which does not substantially
affect the identity of the
trade mark; or
- the colour
or any part of the trade mark,
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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-
- any part not
separately registered as a
trade mark in the name of
the proprietor;
- any part for
the separate registration
of which no application has
been made; or
- any matter
common to the trade, or otherwise
of a non-distinctive character,
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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.
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