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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.
24. Co-ownership of trade
mark.- (1) Where the relations
between two or more persons
interested in a trade mark
are such that none of them
is entitled to use the trade
mark except-
(a) on behalf of both or
all of them; or
(b) in relation to goods
or services or both with which
all of them are connected
in the course of trade,
the persons may jointly apply
for its registration under
section 22.
(2) Where a trade mark is
registered in the name of
two or more persons jointly,
each of them shall be entitled,
subject to any agreement to
the contrary, to an equal
undivided share in the registered
trade mark.
(3) The following provisions
shall apply where two or more
persons are co-proprietors
of a registered trade mark,
by virtue of sub-section (2)
or otherwise.
(4) Subject to any agreement
to the contrary, each co-proprietor
shall be entitled, by himself
or his agents, to do for his
own benefit and without the
consent of or the need to
account to the others, any
act which would otherwise
amount to an infringement
of the registered trade mark.
(5) One co-proprietor may
not, without the consent of
the other or others,
(i) grant a licence to the
use of the registered trade
mark; or
(ii) assign or charge his
share in the registered trade
mark.
(6) Infringement proceedings
may be brought by any co-proprietor
but he may not, without the
leave of the Court, proceed
with the action unless the
other, or each one of the
others, is either joined as
a plaintiff or added as a
defendant.
(7) A co-proprietor who is
thus arraigned as a defendant
shall not be made liable for
any costs in the action unless
he takes part in the proceedings.
(8) Nothing in sub-sections
(6) and (7) shall affect the
granting of interlocutory
relief on the application
of a single co-proprietor.
(9) Nothing in this section
shall affect the mutual rights
and obligations of trustees
or personal representatives,
or their rights and obligations
as such.
25. Meaning of Convention
application, and right to
priority.- (1) A "Convention
application" means an
application duly made by a
person for registration of
a trade mark in one or more
than one Convention country.
(2) If-
- a
person has duly made
a "Convention
application";
and
- 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,
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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) -
- the
relevant date for
the purposes of establishing
which rights take
precedence shall be
the date of filing
of the first Convention
application; and
- 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.
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(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-
- the
previous application
has been withdrawn,
abandoned or refused,
without having been
laid open to public
inspection and without
leaving any rights
outstanding; and
- it
has not yet served
as a basis for claiming
a right of priority.
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(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.
(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 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-
- to
use, or authorize
the use of, the trade
mark in Pakistan;
or
- to
assign the trade mark
to a body corporate
for use by the body
corporate in Pakistan,
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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;
- the
applicant is not the
proprietor of the
trade mark;
- the
application, or a
document filed in
support of the application,
was amended contrary
to the provisions
of this Ordinance;
- the
Registrar accepted
the application for
registration on the
basis of evidence
or representations
that were false in
material particulars;
or
- the
pre-acceptance advertisement
of the application
under exceptional
circumstances is without
sufficient cause or
reason.
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(4) The registration of trade
mark in respect of particular
goods or services may be opposed
on the grounds that-
- it
is substantially identical
with, or deceptively
similar to, a well
known trade mark,
or a trade mark that,
before the priority
date for the registration
of the first-mentioned
trade mark in respect
of those goods or
services, had acquired
a reputation in Pakistan;
and
- 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.
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(5) The registration of a trade
mark in respect of particular
goods may be opposed on the
ground that the trade mark contains
or consists of a mark that is
a geographical indication for
goods originating in-
- a country,
or in a region or
locality in a country,
other than the country
in which the relevant
goods originated;
or
- a region
or locality in the
country in which the
relevant goods originated
other than the region
or locality in which
the relevant goods
originate
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(6) The provisions of clause
(b) of sub-section (2) of section
17 shall remain in abeyance
if the earlier trade mark application
is under opposition.
30. Circumstances in which
opposition may proceed in
the name of a person other
than the person who filed
the notice of opposition.-
If-
- 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
- the
other person-
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the opposition may proceed as
if the notice of opposition
had been given in that other
person's name.
31. Withdrawal of application.-(1)
The applicant may at any time
withdraw his application or
restrict the goods or services
covered by the application.
(2) In case the application
has been advertised, the withdrawal
or restriction under
sub-section (1) shall also
be published.
32. Definition of divisional
application.- (1) A divisional
application means an other
application by a person who
has already made an application
under section 22 for registration
of a trade mark in respect
of certain goods, services
or 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
- 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.
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(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-
- no
notice of opposition
has been given within
the period referred
to in sub-section
(2) of section 28;
or
- all
opposition proceedings
have been withdrawn
or decided in favour
of the applicant,
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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 withdrawn.
(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.
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 be 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-
- 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
- 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.
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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.
(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-
- as
to manner and effect
of a surrender, and
- for
protecting the interests
of other persons having
a right in the registered
trade mark.
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