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AN

ORDINANCE

to amend and consolidate the law relating to trade marks

WHEREAS it is expedient to amend and consolidate the law relating to trade marks and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith;

AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of the Proclamation of the fourteenth day of October, 1999, and the Provisional Constitution Order No.1 of 1999;

AND WHEREAS the President is satisfied that circumstances exist which render it necessary to take immediate action;

NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution Order No.1 of 1999, read with the Provisional Constitution (Amendment) Order No.9 of 1999, and in exercise of all powers enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the following Ordinance:-

CHAPTER I.- PRELIMINARY

2. Definitions.- In this Ordinance, unless there is anything repugnant in the subject or context,-

1. "advertising" means the making of representation in any form in connection with a trade, business or profession in order to promote the supply of goods or services;
2. "assignment" in relation to a trade mark, means an assignment in writing by act of the parties concerned;
3. "authorized user" means a person authorised to use a trade mark in relation to goods or services under the control of the owner of the trade mark and includes a licensee;
4. "certification mark" means a certification mark as defined in sub-section (1) of section 83;
5. "collective mark" means a collective mark as defined in sub-section (1) of section 82;
6. "comparative advertisement" means an advertisement which explicitly or by implication identifies a competitor or goods or services offered by a competitor;
7. "Convention application" means an application as defined in sub-section (1) of section 25;
8. "Convention country" means a Convention country as defined in clause (b) of section 85;
9. "counterfeit trade mark goods" means any goods including packaging bearing without authorization a trade mark which is identical to the trade mark validly registered in respect of such goods or which cannot be distinguished in its essential aspects from such a trade mark and thereby infringes the rights of the owner of the trade mark under this Ordinance;
10. "Court" means the High Court;
11. "date of filing" means-

1. in relation to an application for the registration of a trade mark, the day on which the application is filed pursuant to sub-section (1) of section 23; or
2. in relation to a divisional application for the registration of a trade mark, the day on which the initial application within the meaning of sub-section (1) of section 32 is filed; or
3. in relation to an application to provide temporary protection during exhibition, the day referred to in sub-section (1) of section 26; or
4. in relation to a Convention application, the day referred to in clause (a) of sub-section (2) of section 25;

1. "date of registration", in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade mark in respect of those goods or services is taken to have had effect under sub-section (3) of section 33;
2. "deceptively similar" in relation to a trade mark, means such near resemblance between it and another trade mark that it is likely to deceive or cause confusion;
3. "dilution" means the lessening of the capacity of a well known trade mark to identify and distinguish the goods or services, regardless of the presence or absence of competition between owner of the well known trade mark or other parties, or likelihood of confusion or deception;
4. "District Court" has the meanings assigned to that expression by the Code of Civil Procedure, 1908 (Act V of 1908);
5. "divisional application" means a divisional application as defined in sub-section (1) of section 32;
6. "domain name" means the domain name as defined in sub-section (1) of section 84;
7. "earlier trade mark" means an earlier trade mark as defined in sub-section (1) of section 18;
8. "false trade description" means-

1. a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied;
2. any alteration of a trade description as regards the goods or services to which it is applied whether by way of addition, effacement or otherwise where that alteration makes the description untrue or misleading in a material respect;
3. any mark or arrangement or combination thereof when applied-

1. to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are; or
2. in relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some person other than the person whose services they really are;

1. any false name or initials of a person applied to goods or services in such a manner as if such name or initials were a trade description in any case where the name or initials,-

1. is or are not a trade mark or part of a trade mark;
2. is or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorized the use of such name or initials; and
3. is or are either the name or initials of a fictitious person or of some person not bona fide carrying on business in connection with such goods or services; and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such trade description being a false trade description within the meaning of this Ordinance; or

1. to any false name, initials or description of a person used in relation to goods or services in a manner to suggest that the said person authenticates or guarantees the nature or fitness for the purpose of the goods or services;

1. "geographical indication", in relation to goods originating in a particular country or in a region or locality of that country, means a mark recognized in that country as a mark indicating that the goods-

1. originated in that country, region or locality; and
2. have a quality, reputation or other characteristic attributable to their geographical region;

1. "goods" means anything which is subject of trade, commerce or manufacture;
2. "Journal" means the Trade Marks Journal published under the authority of the Registrar;
3. "licensee" means a person using a registered trade mark by virtue of a transaction;
4. "limitations" with its grammatical variations, means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods or services to be sold or otherwise traded in within Pakistan, or as to use in relation to goods or services to be exported to any market outside Pakistan;
5. "mark" includes, in particular, a device, brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, shape of goods or their packaging, figurative element, colour, sound, scent or any combination thereof;
6. "misleading advertising" means any advertising which in any way, including its presentation, deceives or is likely to deceive the persons to whom it is addressed or whom it reaches and which, by reason of its deceptive nature, is likely to affect their behaviour or which, for those reasons, injures or is likely to injure a competitor;
7. "name" includes any abbreviation of name;
8. "notify" means to notify in the Journal;
9. "opponent" in relation to the registration of a trade mark, means the person who has filed under sub-section (2) of section 28, a notice of opposition to the registration of the trade mark;
10. "packaging" includes, in particular, any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, band, reel, frame, capsule, cap, lid, stopper and cork;
11. "Paris Convention" means the Paris Convention as defined in clause (a) of section 85;
12. "permitted use", in relation to a trade mark, means the use of the trade mark by an authorised user;
13. "predecessor in title", in relation to a person who claims to be the proprietor of a trade mark, means-

1. if the trade mark was assigned or transmitted to one or more than one persons before it was assigned or transmitted to the first-mentioned person, that other person or any of those other persons; or
2. if sub-clause (a) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted to the first-mentioned person;

1. "prescribed" means prescribed by rules made, in relation to proceedings before a High Court, by such High Court, and in other cases, made under this Ordinance;
2. "proprietor", in relation to a registered trade mark, means the person who is for the time being entered in the Register as proprietor of that trade mark;
3. "proprietor of earlier right", in relation to a trade mark, means a person entitled to prevent the use of a trade mark;
4. "Register" means the Register of Trade Marks maintained under sub-section (1) of section 10;
5. "Registrar" means the Registrar of Trade Marks appointed under section 7;
6. "registered", with its grammatical variations, means registered under this Ordinance or the Trade Marks Act, 1940 (V of 1940);
7. "registered trade mark" means a trade mark which is actually on the Register;
8. "rules" means the rules made under this Ordinance;
9. "Schedule" means a Schedule to this Ordinance;
10. "seized goods" means goods seized under section 56;
11. "service" means service of any description which is made available to users or potential users and includes the provision for services in connection with business of any industrial or commercial nature, and without limitation, includes banking, retailing, communication including telecommunication, education, law, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of goods including electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;
12. "similar goods" includes goods which are of the same description;
13. "similar services" include services which are of the same description;
14. "trade description" means any description, statement or other indication, direct or indirect-

1. as to the number, quantity, measure, gauge or weight of any goods; or
2. as to the standard of quality of any goods or services according to classification commonly used or recognized in the trade; or
3. as to fitness for the purpose, strength, performance or behaviour of any goods, being drugs or foods; or
4. as to the place or country in which or the time at which any goods or services were made, produced or provided, as the case may be; or
5. as to the name and address or other indication of the identity of the manufacturer or of the person providing the services or of the persons for whom the goods are manufactured or services provided; or
6. as to the mode of manufacture or producing any goods or providing services; or
7. as to the material of which any goods are composed; or
8. as to any goods being the subject of an existing patent, privilege or copyright,

1. any description as to the use of any mark which according to the custom of the trade is commonly taken to be an indication of any of the above matters;
2. any description as to any imported goods contained in any bill of entry or shipping bill; and
3. any other description which is likely to be misunderstood or mistaken for all or any of the said matters;

1. "trade mark" means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings;
2. "Trade Marks Registry" means the Trade Marks Registry established under section 9;
3. "trade names" means names used by a person to denote his trade or calling and includes firms' and companies' names;
4. "transmission" means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment;
5. "tribunal" means the Registrar or, as the case may be, the Court before which the proceedings concerned is pending;
6. "unfair competition" means an unfair competition as defined in section 67; and
7. "word" includes an abbreviation of a word.

3. Goods and services when associated, etc.- (1) For the purposes of this Ordinance,

1. goods and services shall be associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services;
2. a trade mark shall be taken used on goods if the trade mark is used on any goods including second-hand goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing.
3. a trade mark shall be taken used in relation to goods or services if the trade mark is used-

1. on any covering, packaging, document, label, band, ticket, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade;
2. in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services;
3. on a signboard or in an advertisement; or
4. in an invoice, list, catalogue, business letter, business paper, price list or other commercial document.

(2) Where the owner of a trade mark exercises quality control over goods or services-

1. dealt with or provided in the course of trade by another person; and
2. in relation to which the trade mark is used,

the other person shall be taken to use the trade mark in relation to the goods or services under the control of the owner.

(3) Where ___

1. a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
2. the owner of the trade mark exercises financial control over the other person's relevant trading activities,

the other person shall be taken to use the trade mark in relation to the goods or services under the control of the owner.

4. Reference to use of a trade mark, etc.-In this Ordinance, unless the context otherwise requires, any reference-

1. to use of a trade mark shall include reference to use of the trade mark in relation to goods, as well as, on goods;
2. to use of a trade mark in relation to goods shall include reference to use of the trade mark on goods, or vice versa;
3. to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 7; and
4. to the Trade Marks Registry shall be construed as including a reference to any branch of the Trade Marks Registry.

5. Decision by tribunal regarding use of a trade mark.- (1) A tribunal may, having regard to the circumstances of a case, if it thinks fit, decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Explanation.- For removal of doubts, it is clarified that if a trade mark consists of any combination of any letter, word, name or numeral, any aural representation of the trade mark shall be, for the purposes of this Ordinance, a use of the trade mark.

(2) The application in Pakistan of a trade mark to goods or services to be exported from Pakistan and any other act done in Pakistan in relation to goods or services to be so exported which, if done in relation to goods or services to be sold or otherwise traded in within Pakistan would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods or services for any purpose for which such use is material under this Ordinance or any other law for the time being in force.

(3) The use of a registered trade mark in relation to goods or services between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods or services between which and the person using the mark or any predecessor in his business different form of connection in the course of trade subsisted or subsists.

6. Application of other laws not barred.- The provisions of this Ordinance shall be in addition to, and not in derogation of any other law for the time being in force.

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-

1. review any function, matter, case or decision of any officer; or
2. withdraw any function, matter or case from any officer or staff,

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-

1. goods;
2. services; or
3. both goods and services,

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:-

1. marks which do not satisfy the requirements of clause (xlviii) of section 2;
2. trade marks which are devoid of any distinctive character;
3. 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
4. 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:

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.

(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-

(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.

and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.

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-

(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.

(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-

1. an earlier trade mark in relation to which the conditions set out in sub-section (1), (2) or (3) of section 17 obtain; or
2. an earlier right in relation to which the condition set out in sub-section (4) of section 17 is satisfied,

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).

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-

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-

1. any part not separately registered as a trade mark in the name of the proprietor;
2. any part for the separate registration of which no application has been made; or

1. any matter common to the trade, or otherwise of a non-distinctive character,

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.

CHAPTER III- PROCEDURE FOR, AND DURATION OF, REGISTRATION

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-

(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-

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.

(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.

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) -

(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-

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:

(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.

(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-

(3) The registration of a trade mark may be opposed on any of the following grounds that;

1. the applicant is not the proprietor of the trade mark;
2. the application, or a document filed in support of the application, was amended contrary to the provisions of this Ordinance;
3. the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars; or
4. the pre-acceptance advertisement of the application under exceptional circumstances is without sufficient cause or reason.

(4) The registration of trade mark in respect of particular goods or services may be opposed on the grounds that-

(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-

1. a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
2. a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated.

(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-

1. 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
2. the other person-

1. notifies the Registrar in the prescribed manner that the right or interest is vested in him; and
2. does not withdraw the opposition,

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.

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 -

1. 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.

(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.

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.

(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-

1. 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
2. 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.

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.

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.

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-

1. 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
2. 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,

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-

(4) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which-

1. is identical with or deceptively similar to the trade mark; and
2. is used in relation to goods or services which are not similar to those for which the trade mark is registered,

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 -