Study Notes on Trade Marks Ordinance, 2001

TRADE MARKS ORDINANCE, 2001

CHAPTER I: PRELIMINARY

1. Short title, extent, and commencement

   • This Ordinance may be called the Trade Marks Ordinance, 2001.

   • It extends to the whole of Pakistan.

   • This section and section 132 come into force immediately; the remaining provisions come into force on a date appointed by the federal Government via notification.

2. Definitions

   • “advertising” means making representations to promote goods or services in any form.

   • “assignment” refers to an assignment in writing regarding a trade mark.

   • “authorized user” is someone authorized by the trade mark owner to use the trade mark pertaining to goods or services, including a licensee.

   • More definitions include “certification mark,” “collective mark,” “comparative advertisement,” “Convention application,” “Convention country,” “Counterfeit trade mark goods,” and more, with each defined contextually.

3. Goods and services when associated

   • Goods and services are associated if they can reasonably be traded or if they may be provided by the same business.

   • A trade mark is used on goods if applied in various ways, including being attached to packaging or documents related to the goods.

4. Reference to use of a trade mark

   • Any reference to the use of a trade mark includes both direct use and use in relation to the goods.

   • References to the Registrar also encompass officers performing the Registrar's functions.

5. Decision by Tribunal regarding use of a trade mark

   • A Tribunal can decide if a trade mark has been used even with minor alterations that do not significantly change its identity.

6. Application of other laws not barred

   • This Ordinance supplements, without overriding any other laws in force.

CHAPTER II: REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF TRADE MARKS

7. Appointment of Registrar and other officers

   • The Federal Government can appoint a Registrar of Trade Marks and other officers as needed.

8. Power of Registrar to review, withdraw, or transfer cases

   • The Registrar may review any decision and withdraw cases from staff for them to handle directly or transfer them to another officer or staff.

9. Trade Marks Registry and branches

   • A centralized Trade Marks Registry exists and can have branches as deemed necessary by the Federal Government.

10. Register of Trade Marks

    • A register is maintained with specifics including registered marks and their owners, notifications of assignments, among other details.

    • The register remains private except as prescribed conditions allow public inspection.

11. Evidence of entries in Register

    • Certified copies from the Register serve as evidence in all Courts without requiring further proof.

12. Classification of goods/services

    • Trade marks can be registered for goods, services, or both as prescribed by international classifications.

13. Publication of an alphabetical index of classification

    • The Registrar may publish an index of classifications for goods/services.

14. Absolute grounds for refusal of registration

    • Marks not distinctive or descriptive, marks indicating characteristics of goods, customary signs, and shapes essential for goods are refused registration.

15. Limitation as to color

    • A trade mark may be limited to specified colors; registration without color limits includes all colors.

16. Use of names of chemical compounds barred

    • Common names of chemical compounds cannot be registered, except when distinguishing a brand.

17. Relative grounds for refusal of registration

    • Marks cannot be registered if identical to an earlier mark or similar to it for similar goods/services that could confuse the public.

CHAPTER III: PROCEDURE FOR AND DURATION OF REGISTRATION

22. Application for registration

    • Registration applications must be in writing and include various particulars such as the applicant's name, goods/services details, and representation of the mark.

23. Date of filing

    • The filing date of an application is when specified details are given to the Registrar.

24. Co-ownership of trade mark

    • Co-owners can jointly register a trade mark, and all have equal rights unless otherwise agreed.

25. Meaning of Convention application, and right to priority

    • Convention applications provide priority under specified conditions within six months of the first application.

26. Application to provide temporary protection during exhibition

    • Exhibition of goods allows applicants to claim registration from the date of first use at the exhibition if they apply within six months.

27. Examination of application

    • The Registrar examines applications for compliance and informs applicants if more details are needed.

28. Publication, opposition procedures, and observations

    • Accepted applications will be published, and any opposition must be filed within specified periods.

29. Grounds of opposition

    • Applications may be opposed based on several grounds, including not being the owner of the mark.

CHAPTER IV: REGISTRATION AND EFFECT THEREOF

39. Rights conferred by registration

    • Registered marks are personal property, granting exclusive rights against unauthorized use in Pakistan.

40. Infringement of registered trade mark

    • Infringement occurs when a mark identical or deceptively similar to a registered mark is used for similar goods/services.

41. Infringement by breach of restrictions

    • The use of registered marks can be restricted through notices, and noncompliance leads to infringement consequences.

42. When a trade mark is not infringed

    • Certain good faith uses such as names for indicating origin or purpose do not constitute infringement.

43. Registration as prima facie evidence of validity

    • A registered trade mark is prima facie evidence of validity during legal proceedings.

44. Registration to be conclusive as to validity after five years

    • Marks are conclusive regarding validity after five years unless proven fraudulent or violating specific provisions.

45. Use after registration as name/description

    • Use of descriptive terms does not invalidate a trade mark unless certain conditions regarding established use are met.

CHAPTER V: INFRINGEMENT PROCEEDINGS

46. Action for infringement

    • Proprietors may initiate actions for infringement, seeking various legal remedies.

47. Order for erasure of offending marks

    • Courts can order the erasure of infringing marks and destruction of goods.

48. Order for delivery up of infringing goods

    • Proprietors can apply for the return of infringing goods, subject to specific time limits.

49. Meaning of “infringing goods/material/articles”

    • Items bearing identical or similar marks that infringe a registered trade mark.

50. Period after which remedy of delivery is not available

    • Applications for remedies must be made within three years of the act of infringement.

51. Action for disposal of infringing goods

    • Courts can order disposal or return of infringing items based on the context of the infringement.

52. Remedy for groundless threats of infringement proceedings

    • Individuals may seek relief for unjustified threats of infringement action against them.

CHAPTER VI: IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES

53. Infringing goods treated as prohibited

    • The registrar can alert customs about expected arriving infringing goods for seizure.

54. Notice for intervention by customs authorities

    • Notices to customs must include an indemnity undertaking to cover potential losses.

55. Furnishing of security to customs authority

    • The customs collector may require security to safeguard against potential losses from seizure actions.

56. Customs may seize goods bearing infringing trade marks

    • Customs will seize items if they bear marks identical to registered marks.

57. Notice of seizure

    • Customs must provide written notice to relevant parties upon seizure.

58. Forfeiture of goods

    • Goods can be forfeited if agreed by the importer before any infringement action.

59. Release of goods

    • Items will be released if no action against infringement is undertaken within specified periods.

60. Action for infringement against importation

    • Proprietors can pursue infringement claims for imported seized goods under specific conditions.

61. Infringement by licensee on seized goods

    • Exclusive licensees can bring actions regarding any seized goods.

CHAPTER VII: UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT

67. Definition of unfair competition

    • Includes acts creating confusion, false allegations, misleading indications, and deceptive statements in competitive contexts.

68. Misleading and comparative advertisement

    • Comparative advertisements must not mislead and should objectively compare relevant products/services.

CHAPTER VIII: ASSIGNMENT AND TRANSMISSION

69. Assignment of registered trade mark

    • Trade marks are transferable via various means akin to movable property.

70. Registration of transactions affecting registered trade marks

    • Transactions impacting registered marks must be recorded to be effective against conflicting interests.

CHAPTER IX: USE OF TRADE MARKS AND LICENSEES

72. Proposed use of trade mark by company to be formed

    • Registration is not refused if an applicant intends to assign the mark to an upcoming company.

73. Revocation of registration

    • Registrations may be revoked due to non-use or if the mark becomes misleading.

CHAPTER X: THE PARIS CONVENTION

85. Meaning of “Paris Convention” and “Convention country”

    • Definitions pertaining to international trade agreements impacting marks.

CHAPTER XI: SPECIAL PROVISIONS FOR TEXTILE GOODS

93. Textile goods definition and provisions

    • Specific provisions govern textile goods trade marks.

CHAPTER XII: RECTIFICATION AND CORRECTION OF THE REGISTER

96. Rectification of Register

    • Individuals may request to rectify errors affecting entries in the Register.

CHAPTER XIII: OFFENCES, PENALTIES AND PROCEDURE

98. Penalty for applying false trade descriptions

    • Severe penalties are outlined for applying misleading descriptions to products.

CHAPTER XIV: MISCELLANEOUS AND GENERAL PROVISIONS

108. Power of Registrar to require use of forms

     • Registration processes may require specific forms as directed by the Registrar.

Schedules

• Details regarding Collective Marks, Certification Marks, Domain Names, and Transitional Provisions accompanying the Ordinance.