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CHAPTER
VI- IMPORTATION OF INFRINGING GOODS, MATERIAL
OR ARTICLES
53.Infringing
goods, material or articles may be treated
as prohibited.-
(1) The proprietor of the registered trade
mark may give notice in writing to the Collector
of Customs that-
- he is the proprietor
of the registered trade mark;
- at a time and place
specified in the notice, goods which,
in relation to that registered trade
mark are infringing goods, material
or articles, or bear false indications
as to their source or the identity
of their manufacturer are expected
to arrive in Pakistan from outside
Pakistan and that they are subject
to the control of the customs authorities
under the Customs Act, 1969 (IV
of 1969); and
- he requests the Collector
of Customs to treat such goods as
prohibited goods.
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54. Notice for intervention
by customs authorities.- When any notice
to the Collector of Customs is made under
section 53, it shall be accompanied by an
undertaking by the person sending the notice
to indemnify the customs authorities concerned
and to compensate any importer, consignee
or owner of the goods for loss or damage
resulting from the wrongful suspension of
clearance of goods.
55. Furnishing of security
or equivalent assurance to customs authority.-
The Collector of Customs may require an
applicant to provide a security or equivalent
assurance sufficient to protect the importer,
consignee or owner of the goods but such
security or equivalent assurance shall not
be such as to unreasonably deter recourse
to these procedures.
56. Collector of Customs
may seize goods bearing infringing trade
mark.- If goods to which section 53
applies-
| (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
(b) are goods in respect of which
the trade mark is registered,
|
the Collector of Customs
shall 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.
57. Notice of seizure.-
The Collector of Customs shall, as soon
as practicable-
- give, either personally
or by urgent post, to the importer,
consignee or owner of the goods
a notice of seizure in writing identifying
the goods and stating that they
have been seized under section 56;
and
- (b) give to the applicant
a notice in writing-
| (i) identifying
the goods and stating that they
have been seized under section
56;
(ii) giving the full name and
address of the importer, consignee
or owner of the goods and any
information that the Collector
of Customs has and 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
unless the applicant brings
an action for infringement of
the registered trade mark in
respect of goods before a 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 under sub-section
(1) of section 60, within such
extended period.
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58. Forfeiture of goods.-
If the importer, consignee or owner of any
seized goods, at any time before the applicant
starts an action for infringement of the
trade mark in respect of goods, by notice
in writing to the Collector of Customs,
gives consent to the goods being forfeited
by the Collector of Customs, the goods shall
be so forfeited by the Collector of Customs.
59. Release of goods.-
(1) The Collector of Customs shall release
the seized goods to their designated importer,
consignee or owner if, within the specified
period, 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.
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(2) The Collector of Customs
shall also release the seized goods to their
designated importer, consignee or owner
if-
| (a) before the end of
the prescribed period, the applicant,
by notice in writing to the Collector
of Customs, consented to the release
of the goods; and
(b) at that time,
| (i) the applicant
has not brought an action for
infringement of the registered
trade mark in respect of the goods;
or
(ii) the action brought by
the applicant has been withdrawn.
|
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(3) The Collector of Customs
may release the seized goods to their designated
importer, consignee or owner before the
end of the specified period if,
| (a) having regard
to information that has come to his
knowledge after the goods were seized,
he is satisfied that there are no
reasonable grounds of believing that
the registered trade mark has been
infringed by the importation of the
goods; and
(b) the applicant has not so far
brought an action for infringement
of the registered trade mark in
respect of the goods, or has not
informed him of such an action.
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60. Action for infringement against importation
of infringing goods.- (1) The applicant
may bring an action for infringement of
a registered trade mark in respect of the
seized goods and give a notice to the Collector
of Customs, subject to the provisions of
clause (b), within ten working days specified
in the notice given to the applicant in
respect of the goods, under section 57 or
if-
| (i) the applicant
has, before the expiry of the specified
period, applied in writing to the
Collector of Customs for a extension
of the specified period; and
(ii) the Collector of Customs,
being satisfied that in the circumstances
of the case it is fair and reasonable
to do so, has extended the specified
period for a number of working days
not exceeding ten days,
|
within that period so extended by the Collector
of Customs.
(2) The Court hearing the action-
| (a) may, on the application
of any person, allow that person to
be joined as a defendant in the case;
and
(b) shall allow the Collector of
Customs, or his duly authorised
officer, to appear and be heard.
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(3) Subject to sub-section (4), in addition
to any relief that the Court may grant apart
from the provisions of this section, the
Court may-
- at any time, if
it thinks it just, order that
the seized goods be released to
their designated owner subject
to such conditions that the Court
considers fit to impose; or
- order that the
seized goods be forfeited.
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(4) The Court shall not make any order which
may facilitate-
- re-exporting of
the counterfeit trade mark goods;
- removing of the
trade marks which have been affixed
to the counterfeit trade mark
goods without authorization; and
- local sale of such
goods.
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(5) If the 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, satisfies
the Court that he has suffered losses or
damage because the goods were seized, the
Court may order the applicant to pay the
defendant compensation, 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.
(6) If, after three weeks from the day
on which the action was brought, there
is not in force at any time an order of
the Court preventing the goods from being
released, the Collector of Customs shall
release the goods to their designated
importer, consignee or owner.
(7) If the Court orders that the goods
be released, the Collector of Customs
shall, subject to section 63, comply with
the order.
61. Action for infringement by licensee
in relation to any seized goods.-
If an exclusive licensee of a registered
trade mark is an applicant in relation
to any seized goods, the licensee may
commence an action for the infringement
of the registered trade mark in respect
of the goods within the required period
without first ascertaining whether the
proprietor is willing to bring the action.
62. Disposal of forfeited goods.-
(1) Subject to sub-section (2), any goods
forfeited under the provisions of this
Chapter shall be disposed of by the Collector
of Customs in the manner as if the goods
were forfeited under the Customs Act,
1969 (IV of 1969).
(2) The Collector of Customs shall not
dispose of goods in a manner which may
facilitate-
- re-exporting of
the counterfeit trade mark goods;
- removing of the
trade marks which have been affixed
to the counterfeit trade mark
goods without authorization; and
- local sale of such
goods.
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63. Power of the Collector of Customs
to retain control of goods.- Notwithstanding
anything contained in this Chapter, 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 Court under section 60,
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and Collector of Customs shall apply to
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.
64. Insufficient security.- If
security given under section 55 by the
applicant who gave notice in respect of
a registered trade mark under section
53 or section 61 is not sufficient to
meet the expenses incurred by the Federal
Government as a result of the action taken
by the Collector of Customs under this
Chapter, because of the notice, the amount
of the difference in the expenses and
the amount of security-
| (a) shall be a debt
due by the applicant to the Federal
Government; and
(b) shall be recovered by the Federal
Government under section 202 of
the Customs Act, 1969 (IV of 1969).
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65. The Federal Government not be liable
to loss, etc., suffered because of seizure.-
The Federal Government shall not be
liable to any loss, damage or delays suffered
by a person-
| (a) because the Collector
of Customs seized or failed to seize
goods under this Chapter; or
(b) because of release of any seized
goods.
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66. Power of the Collector of Customs
to make regulations.- The Collector
of Customs may make regulations prescribing
the form in which notices shall be made
and requiring the person making the notices
to furnish evidence as to the ownership
and to comply with such other conditions
as may be specified which may include the
payment of a fee to cover the administrative
costs.
^TOP^
CHAPTER
VII. UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT
67. Definition of unfair
competition and provisions relating thereto.-(1)
An "unfair competition" means any
act of competition contrary to honest business
practices in industrial or commercial matters
and, without prejudice to the generality of
the foregoing, such acts may include
| (a) all acts
of such nature as to create confusion
by any means whatsoever with the establishment,
goods, services or industrial or commercial
activities of a competitor;
(b) false allegations in the course
of trade of such a nature as to discredit
the establishment, goods, services or
industrial or commercial activities
of a competitor;
(c) indications or allegations the
use of which in the course of trade
is liable to mislead the public as to
the nature, manufacturing process, characteristics,
constituents, quality or the suitability
for their purpose of the goods or services;
(d) any act or practice, in the course
of industrial or commercial matters
that results in the disclosure, acquisition
or use by others of information without
the consent of the person lawfully in
control of that information in a manner
contrary to honest industrial or commercial
practice so long as such information
relates to sale or manufacture of goods
or provision of services and-
- is secret in
the sense that it is not, as
a body or in the precise configuration
and assembly of its components,
generally known among or readily
accessible to persons within
the circles that normally deal
with the kind of information
in question;
- has commercial
value because it is secret;
and
- has been subject
to reasonable steps under circumstances,
by the person lawfully in control
of the information, to keep
it secret;
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(e) making of false or deceptive statements
in the course of trade;
(f) misleading advertising; or
(g) fraudulently registering or applying
for registration of a trade mark.
Explanation.- For the purposes
of clause (d) "a manner contrary
to honest industrial or commercial practice"
shall mean, at least, practices such as
breach of contract, breach of confidence
and inducement to breach, and includes
the acquisition of undisclosed information
by third parties who knew, or were grossly
negligent in failing to know, that such
parties were involved in the acquisition.
(2) Any act of unfair competition shall
be unlawful.
(3) An action against unfair competition
may be brought before a Court of competent
jurisdiction.
68. Misleading and comparative advertisement.-
(1) Comparative advertisement shall,
as far as comparison is concerned, be
lawful subject to the following conditions,
namely:-
| (a) it is not misleading
according to clause (xxv) of section
2, and sub-section (2);
(b) it compares goods or services
meeting the same needs or intended
for the same purpose;
- it objectively
compares one or more material,
relevant, verifiable and
representative features
of those goods and services,
which may include price;
- it
does not create confusion
in the market place between
the advertiser and a competitor
or between the advertiser's
trade marks, trade names,
other distinguishing marks,
goods or services and
those of the competitor;
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(e) it does not discredit or disparage
the trade marks, trade names, other
distinguishing marks, goods, services,
activities or circumstances of a
competitor;
(f) for products with designation
of origin, it relates in each
case to products with same designation;
(g) it does not take unfair advantage
of the reputation of a trade mark,
trade name or other distinguishing
marks of a competitor or of the
designation of origin of competing
products; and
(h) it does not present goods
or services as imitations or replicas
of goods or services bearing a
protected trade mark or trade
name
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(2) In determining whether an advertising
is misleading, the tribunal shall take
account of all its features, and in particular
of any information it contains concerning-
(3) Any person having a legitimate interest
in prohibiting misleading advertisement
or regulating comparative advertising
may institute legal action against such
advertising before the tribunal.
(4) For all complaints made to the
tribunal under sub-section (3), the
tribunal shall take into account all
the interests involved and in particular
the public interest before it orders-
| (a) publication
of a corrective statement by the
advertiser;
(b) cessation of misleading advertising
or unpermitted comparative advertising;
or
(c) if the misleading advertising
or unpermitted comparative advertising
has not yet been published but
publication is imminent, the prohibition
of such publication.
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(5) This section shall not exclude voluntary
control of misleading or comparative advertisement
by self-regulatory bodies and recourse
to such bodies by the persons if proceedings
before such bodies are in addition to
the tribunal proceedings referred to in
sub-section (3).
^TOP^
CHAPTER
VIII. ASSIGNMENT AND TRANSMISSION
69. Assignment of registered
trade mark.- (1) A registered trade
mark shall be transmissible by assignment,
testamentary disposition or operation
of law in the same way as other personal
or movable property.
(2) A registered trade mark shall also
be transmissible either in connection
with the goodwill of a business or independently.
(3) An assignment or other transmission
of a registered trade mark may be partial,
that is, limited so as to apply-
| (a) in relation
to some but not all of the goods
or services for which the trade
mark is registered; or
(b) in relation to use of the
trade mark in a particular manner
or a particular locality.
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(4) An assignment of a registered trade
mark, or an assent relating to a registered
trade mark shall not be effective unless
it is in writing signed by, or on behalf
of, the assignor or, as the case may be,
a personal representative.
(5) The provisions of sub-section (4)
shall apply to assignment by way of
security as in relation to any other
assignment.
(6) Assignment or other transmission
of a registered trade mark shall be
the subject of charge in the same way
as other personal or movable property.
(7) Nothing in this Ordinance shall
be construed as affecting the assignment
or other transmission of an unregistered
trade mark as part of the goodwill of
a business.
70. Registration of transactions
affecting registered trade mark.-
(1) On application being made to the
Registrar by-
| (a)
a person claiming to be entitled
to an interest in, or under, a registered
trade mark by virtue of a registrable
transaction; or
(b) any other
person claiming to be affected
by such a transaction
|
the prescribed particulars of the transaction
shall be entered in the Register.
(2) The following shall be registerable
transactions, namely:-
| (a) an assignment
of a registered trade mark or any
right in it;
(b) the grant of a license under
a registered trade mark;
(c) the granting of any security
interest whether fixed or floating
over a registered trade mark or
any right in or under it;
(d) the making by personal representatives
of an assent in relation to a
registered trade mark or any right
in or under it; and
(e) an order of a Court or other
competent authority transferring
a registered trade mark or any
right in or under it.
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(3) Until an application has been made
for registration of the prescribed particulars
of a registerable transaction-
| (a) the transaction
shall be ineffective as against
a person acquiring a conflicting
interest in, or under, the registered
trade mark in ignorance of it; and
(b) a person claiming to be a
licensee by virtue of the transaction
shall not have the protection
of section 69, 77 or 79.
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(4) Provisions may be made by rules as
to-
| (a)
the amendment of registered particulars
relating to a licence so as to reflect
any alteration of the terms of the
licence; and
(b) the removal of such particulars
from the Register
- where
it appears from the registered
particulars that the licence
was granted for a fixed
period and that period
has expired; or
- where
no such period is indicated
and, after such period
as may be prescribed,
the Registrar has informed
the parties of his intention
to remove the particulars
from the Register.
|
|
(5) Provision may also be made by rules
as to the amendment or removal from the
Register of particulars relating to a
security interest on the application of,
or with the consent of, the person entitled
to the benefit of the interest.
71. Application for registration
of trade mark as an object of property.-
(1) The provisions of sub-section (1)
of section 39, sub-sections (2) to (7)
of section 24, section 69 and section
70 shall apply, with the necessary modifications,
in relation to an application for the
registration of a trade mark as in relation
to a registered trade mark.
(2) In section 70 as it applies in
relation to a transaction affecting
an application for the registration
of a trade mark, the references to the
entry of particulars in the Register,
and to the making of an application
to register particulars, shall be construed
as references to the giving of notice
to the Registrar of those particulars.
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^TOP^
CHAPTER
IX.- USE OF TRADE MARKS AND LICENSEES
72. Proposed use of trade
mark by company to be formed.-(1) No
application for the registration of a trade
mark in respect of any goods or services
shall be refused, nor shall permission for
such registration be withheld, on the ground
only that it appears that the applicant
does not use or propose to use the trade
mark, if the Registrar is satisfied that-
| (a) a company is about
to be formed and registered under the
Companies Ordinance, 1984 (XLVII of
1984), or any modification thereof and
that the applicant intends to assign
the trade mark to that company with
a view to the use thereof in relation
to those goods or services by the company;
or
(b) the applicant intends it to be
used by way of permitted use.
|
(2) The provisions of section
73 shall have effect, in relation to a trade
mark registered under this sub-section,
as if for the reference, in clause (a) of
sub-section (1) of that section to intention
on the part of an applicant for registration
that a trade mark should be used by him
there were substituted a reference to intention
on his part that it should be used by the
company or the authorised user concerned.
(3) The tribunal may, in a
case to which clause (a) of sub-section
(1) applies, require the applicant to give
security for the costs of any proceedings
relating to any opposition or appeal, and
in default of such security being duly given,
may treat the application as abandoned.
(4) Where in a case to which
clause (a) of sub-section (1) applies, a
trade mark in respect of any goods or services
is registered in the name of an applicant
who relies on intention to assign the trade
mark to a company, then unless within such
period as may be prescribed or within such
further period not exceeding six months
as the Registrar may, on application being
made to him in the prescribed manner, allow,
the company has been registered as the proprietor
of the trade mark in respect of those goods
or services, the registration shall cease
to have effect in respect thereof at the
expiration of that period and the Registrar
shall amend the Register accordingly.
73. Revocation of registration.-
(1) The registration of a trade mark
may be revoked on any of the following grounds,
namely:-
| (a) that within the
period of five years following the date
of completion of registration procedure
it has not been put to bona fide use
in Pakistan by the proprietor or by
an authorised user thereof, in relation
to the goods or services for which it
is registered and there are no proper
reasons for its non-use;
(b) that the bona fide use has been
suspended for an uninterrupted period
of five years and there are no proper
reasons for its non-use;
(c) that in consequence of acts or
inactivity of the proprietor, it has
become the common name in the trade
for a product or service for which
it is registered; and
(d) that in consequence of the use
made of it by the proprietor or with
his consent in relation to the goods
or services for which it is registered,
it is liable to mislead the public,
particularly as to the nature, quality
or geographical origin of those goods
or services.
|
(2) For the purposes of
sub-section (1), use of a trade mark shall
include use in a form differing in elements
which do not alter the distinctive character
of the mark in the form in which it was
registered.
(3) The registration of a
trade mark shall not be revoked on the grounds
specified in clause (a) or (b) of sub-section
(1), if such use, as it referred to in those
clauses, is commenced or resumed after the
expiry of the five years' period and before
the application for revocation is made:
Provided that any such commencement
or resumption of use after the expiry of
five years period but only three months
before the application for revocation is
made, shall only be regarded if the preparation
for commencement or resumption began before
the proprietor became aware that the application
is made.
(4) An application for revocation
may be made by an interested party to the
Registrar, except that-
| (a) if proceedings concerning
the trade mark in question are pending
in the Court, the application shall
be made to the Court; and
(b) in case the application is made
to the Registrar, he may at any stage
of the proceedings refer the application
to the Court.
|
(5) Where grounds for revocation
exist in respect of only some of the goods
or services for which the trade mark is
registered, revocation shall relate to those
goods or services only.
(6) Where the registration
of a trade mark is revoked to any extent,
the rights of the proprietor shall be deemed
to have ceased to that extent as from-
| (a) the date of the
application for revocation; or
(b) if the Registrar or Court is
satisfied that the grounds for revocation
existed at an earlier date, that date.
|
(7) Where the registration
of a trade mark is revoked or declared invalid
on the ground that the registration was
secured in bad faith, the applicant shall
be barred from applying for registration
of the identical or similar trade mark for
two years from the date of revocation or
invalidation, whatever the case may be.
74. Use of trade mark by
a person other than the proprietor thereof.-
(1) The permitted use of a trade mark shall
be deemed to be use of the trade mark by
the owner of the trade mark and shall be
deemed not to be use of the trade mark by
a person other than the owner for any purpose
for which such use is material under this
Ordinance or any other law for the time
being in force.
(2) The tribunal while determining
as to whom the benefit of use of a trade
mark be passed, shall pass the benefit to
none else, except to-
| (a) the proprietor of
the trade mark, if the trade mark is
registered; or
(b) the owner of the trade mark,
if the trade mark is entitled to protection
under the Paris Convention as a well
known trade mark.
|
75. Licensing of registered
trade mark.- (1) A license to use a
registered trade mark may be general or
limited.
(2) A limited license may,
in particular, apply-
- in relation to some
but not all of the goods or services
for which the trade mark is registered;
or
- in relation to use
of the trade mark in a particular
manner or a particular locality.
|
(3) A license shall not
be effective unless it is in writing signed
by or on behalf of the grantor.
(4) Unless the license provides
otherwise, it shall be binding on a successor
in title to the grantor's interest.
(5) Where the license so provides,
a sub-license may be granted by the licensee,
and references in this Ordinance to a license
or licensee shall include a sub-license
or sub-licensee.
76. Exclusive license defined.
- (1) In this Ordinance, an "exclusive
license " means a license, whether
general or limited, authorizing the licensee
to the exclusion of all other persons including
the person granting the license, to use
a registered trade mark in the manner authorised
by the license and the expression "exclusive
licensee" shall be construed accordingly.
(2) An exclusive licensee
shall have the same rights against a successor
in title who is bound by the license as
he has against the person granting the license.
77. General provisions
as to the rights of licensees in case of
infringement.- (1) Save as provided
in section 61, a licensee shall be entitled,
unless his licence, or any licence through
which his interest is derived, provides
otherwise, to call on the proprietor of
the registered trade mark to take infringement
proceedings in respect of any matter which
affects his interests:
Provided that if the proprietor-
- refuses to do so;
or
- fails to do so within
two months after being called upon,
|
the licensee may bring the
proceedings in his own name as if he were
the proprietor.
(2) Where infringement proceedings
are brought by a licensee under this section,
the licensee may not, without the leave
of the Court, proceed with the action unless
the proprietor is either joined as a plaintiff
or added as a defendant:
Provided that this shall not
affect the granting of interlocutory relief
on an application by a licensee alone.
(3) A proprietor who is added
as a defendant as provided in sub-section
(2) shall not be made liable for any costs
in the action unless he takes part in the
proceedings.
(4) In infringement proceedings
brought by the proprietor of a registered
trade mark any loss suffered or likely to
be suffered by licensees shall be taken
into account and the Court may give such
directions as it thinks fit as to the extent
to which the plaintiff shall hold the proceeds
of any pecuniary remedy on behalf of licensees.
(5) The provisions of this
section shall apply in relation to an exclusive
licensee if or to the extent that he has,
under sub-section (1) of section 78, the
rights and remedies of an assignee as if
he were the proprietor of the registered
trade mark.
78. Exclusive licensee
having rights and remedies of assignee.-
(1) An exclusive license may provide that
the licensee shall have, to such extent
as may be provided by the license, the same
rights and remedies in respect of matters
occurring after the grant of the license
as if the license had been assignment. Where
or to the extent that such provision is
made, the licensee shall be entitled, subject
to the provisions of the license and to
the following provisions of this section,
to bring infringement proceedings, against
any person other than the proprietor, in
his own name.
(2) Any such rights and remedies
of an exclusive licensee shall be concurrent
with those of the proprietor of the registered
trade mark, and references to the proprietor
of a registered trade mark in this Ordinance
relating to infringement shall be construed
accordingly.
(3) In an action brought by
an exclusive licensee by virtue of this
section, a defendant may avail himself of
any defence which would have been available
to him if the action had been brought by
the proprietor of the registered trade mark.
(4) Where proceedings for
infringement of a registered trade mark
brought by the proprietor or an exclusive
licensee relate wholly or partly to an infringement
in respect of which they have concurrent
rights of action, the proprietor or, as
the case may be, the exclusive licensee
may not, without the leave of the Court,
proceed with the action unless the other
is either joined as a plaintiff or added
as a defendant:
Provided that this shall not
affect the granting of interlocutory relief
on an application by a proprietor or exclusive
licensee alone.
(5) A person who is added
as a defendant as mentioned in sub-section
(4) shall not be made liable for any costs
in the action unless he takes part in the
proceedings.
(6) Where an action for infringement
of a registered trade mark is brought which
relates wholly or partly to an infringement
in respect of which the proprietor and an
exclusive licensee have or had concurrent
rights of action-
(a) the Court shall in assessing
damages take into account-
- the terms of the
license; and
- any pecuniary remedy
already awarded or available to
either of them in respect of the
infringement;
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| (b) no account of profits
shall be directed if an award of damages
has been made, or an account of profits
has been directed, in favour of the
other of them in respect of the infringement;
and
(c) the Court shall if an account
of profits is directed apportion the
profits between them as it, subject
to any agreement between them, considers
just.
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(7) The provisions of sub-section
(6) shall apply whether or not the proprietor
and the exclusive licensee are both parties
to the action, the Court may give such directions
as it thinks fit as to the extent to which
the party to the proceedings shall hold
the proceeds of any pecuniary remedy on
behalf of the other.
(8) The proprietor of a registered
trade mark shall inform any exclusive licensee
who has a concurrent right of action before
applying for an order under section 48,
and the Court may, on the application of
the licensee, make such order under that
section as it thinks fit having regard to
the license.
(9) The provisions of sub-sections
(4) to (8) shall have effect subject to
any agreement to the contrary between the
exclusive licensee and the proprietor.
79. Surrender of registered
trade mark.- (1) A registered trade
mark my be surrendered by the proprietor
in respect of some, or all, of goods or
services for which it is registered.
(2) Provisions may be made
by rules,
| (a) as to the manner
and effect of a surrender; and
(b) for protecting the interests
of other persons having right in the
registered trade mark.
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80. Grounds for invalidity
of registration.- (1) The registration
of a trade mark may be declared invalid
on the ground that the trade mark was registered
in breach of section 14 or any of the provisions
thereof.
(2) Where the trade mark was
registered in breach of clause (b), (c)
or (d) of sub-section (1) of section 14,
it shall not be declared invalid if, in
consequence of the use which has been made
of it, it has after registration acquired
a distinctive character in relation to the
goods or services for which it is registered.
(3) The registration of a
trade mark may be declared invalid on the
ground 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,
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unless the proprietor of
that earlier trade mark or other earlier
right has consented to the registration.
(4) An application for declaration
of invalidity may be made by an interested
party either to the Registrar or to the
Court, except that-
| (a)
if proceedings concerning the trade
mark in question are pending in the
Court, the application shall be made
to the Court; and
(b) in any other case, if the application
has been made to the Registrar, he
may at any stage of the proceedings
refer the application to the Court.
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