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Trade Mark Ordinance 2001
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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-
- 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
- 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-
- goods of the same
description as that of goods in
respect of which the trade mark
is registered;
- services that are
closely related to goods in respect
of which the trade mark is registered;
- services of the same
description as that of services
in respect of which the trade mark
is registered; or
- goods that are closely
related to services in respect of
which the trade mark is registered
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(4) 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; and
- is used in relation
to goods or services which are
not similar to those for which
the trade mark is registered,
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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 -
- having taken all
reasonable precautions, he had
no reasons to suspect the genuineness
of the mark; and
- 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
- he had ,otherwise
acted innocently.
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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-
- 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;
- altering, or partially removing
or obliterating, any representation
of the trade mark applied to registered
goods and used in physical relation
to them;
- 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;
- applying another trade mark
to registered goods or using another
trade mark in physical relation
to them; or
- 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,
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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-
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| (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-
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(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;
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(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.
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(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.-
(1) 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 years or more
after the cesser of the patent has
elapsed 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.
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(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-
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- 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
- if the trade
mark contains such words and other
matter, all such rights of the
proprietor to the use of such
words,
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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 Court may
make an order requiring him-
- 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
- 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.
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(2) If an order under
sub-section (1) is not complied with,
or it appears to the Court likely that
such an order would not be complied
with, the Court may order that infringing
goods, material or articles be delivered
to such person as the Court 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 Court for an order for the delivery
up to him, or such other person as the
Court 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 Court
also makes, or it appears to the Court
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.
(4) Nothing in this section
shall affect any other power of the
Court.
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 goods 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.
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(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.
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(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.
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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,
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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-
| (a) is under a
disability; or
(b) is prevented by fraud or
concealment from discovering
the facts entitling him to apply
for an order,
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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 Court-
| (a) for an order
that they be destroyed or forfeited
to such person as the Court may
think fit; or
(b) for a decision that no
such order should be made.
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(2) In considering what order, if any
should be made, the Court 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 Court shall
make such order as it thinks just.
(4) If the Court 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,
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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
(c) damages in respect of any
loss he has sustained by the
threats.
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(3) The plaintiff shall be entitled
to any relief specified in sub-section(2)
unless the defendant shows that the
acts 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
an application for registration has
been made, shall not constitute a
threat of proceedings for the purposes
of this section.
(6) The provisions of this section
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.
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