CHAPTER - XI
MISCELLANEOUS
70. Procedure before the Register :
In all proceedings under this Act before the Registrar -
- the Registrar shall have all the powers of a Civil Court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;
- evidence shall be given by affidavit, provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit;
- the Registrar shall not exercise any power vested in him by this Act or the rules made thereunder adversely to any party duly appearing before him without (if required in writing within the prescribed time so to do) giving such party an opportunity of being heard;
- the Registrar may, save as otherwise expressly provided in this Act, and subject to any rules made in this behalf under section 84, make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a Civil Court.
71. Procedure before Central Government :
In all proceedings under this Act before the Central Government, evidence shall be given by affidavit, provided that the Central Government may, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purpose have all the powers of a Civil Court referred to in clause (a) of section 70.
72. Procedure in certain cases of option to apply to a High Court or the Register :
Where under this Act an applicant has the option of making an application either to a High Court or to the Registrar,
- if any suit or other proceedings concerning the trade mark in question is pending before a High Court or a district Court, the application shall be made to that within whose jurisdiction that district Court is situated;
- if in any other case the application is made to the Registrar, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to a High Court.
73. Suits for infringement to be instituted before District Court :
No suit for the infringement of a trade mark or otherwise relating to any right in a trade mark shall be instituted in any Court inferior to a district Court having jurisdiction to try the suit.
74. Appearance of Registrar in proceedings involving rectification of register :
(1) In any suit or other legal proceedings in which the relief sought
includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the tribunal.
(2) Unless the tribunal otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue, or of the grounds of any decision given by him affecting it, or of the practice of the [trade marks Registry] in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the suit or other proceeding.
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74A. Costs of Registrar in proceedings before high Court :
In all proceedings under this Act before a High Court the costs of the
Registrar shall be in the discretion of the High Court, but the Registrar shall not be ordered to pay the costs of any or the parties.
75. Evidence of entries in register and things done by Registrar :
(1) A printed or written 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 under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act 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.
76. Appeals :
(1) Save as otherwise expressly provided in this Act, an appeal shall lie,
within the period prescribed by the Central government, from any decision of the Registrar 5* * * under this Act or the rules made thereunder to the High Court having jurisdiction;
Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a district Court, the appeal shall be made to that High Court or, as the case may be, to the High Court within whose jurisdiction that district Court is situated.
(2) In an appeal by an applicant for registration against a decision of the Registrar under section 13 or section 14 or section 15, it shall not be open, save with the express permission of the Court, to the Registrar or any party opposing the appeal to advance grounds other than those recorded in the said decision or advanced by the party in the proceedings before the Registrar, as the case may be; and where any such additional grounds are advanced, the applicant for registration may, on giving notice in the prescribed manner, withdraw his application without being liable to pay the costs of the Registrar or the parties opposing his application.
(3) Subject to the provisions of this Act and of rules made thereunder, the provisions of the Code of Civil Procedure, 1908 shall apply to appeals before a High Court under this Act.
77. Power to High Courts to make rules :
A High Court may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before it.
78. Certificate to validity :
If in any legal proceeding in which the validity of the registration of a trade mark comes into question, a decision is given in favour of the proprietor of the trade mark, the tribunal may grant a certificate to that effect, and if such a certificate is granted, then in any subsequent legal proceeding in which the said validity comes into question, the said proprietor on obtaining a final order or judgment in his favour shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges and expenses as between legal practitioner and client.
79. Trade usage etc to be taken into consideration :
In any suit or other proceeding relating to a trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or get up legitimately used by other persons.
80. Agents :
Where by or under this Act any act, other than the making of an affidavit, is required to be done by any person, the act may, subject to prescribed conditions or in special cases with the consent of the Central Government, be done, in lieu of by that person himself, by a duly authorised agent, being either a legal practitioner or a person registered in the prescribed manner as a trade marks agent.
81. Fees :
There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Central Government.
82. Government to be bound :
The provisions of this Act shall be binding on the [Government].
82A. Power to make reciprocal arrangement with Accending or non-Accending State :
(1) The Central Government may enter into reciprocal arrangements with any [Acceding State or a non-Acceding State] whereby trade marks and certification trade marks registered under this Act shall have in that State protection as if registered in that State and where such arrangements have been entered into with any [Acceding State and where such arrangements have been entered into with any [Acceding State or a non-Acceding State], the Central Government shall by notification in the official Gazette declare that this section shall apply to that State.
(2) Where any such arrangements as aforesaid with any [Acceding State or a non-Acceding State] are terminated, the Central Government shall by a further like notification cancel the notification under sub-section (1) relating to that State.
83. Power to make reciprocal arrangements with other Governments :
If at any time after the expiry of six months from the commencement of this section it is made to appear to the Central Government that any Government [outside Pakistan] has made satisfactory provision for the protection within its territories of trade marks in respect of which an application for registration has been made in [Pakistan], the Central Government may, by notification in the official Gazette, make provision with regard to trade marks in respect of which an application for registration has been made within the territories of that Government to enable any person who has applied within such territories for registration of a trade mark or his legal representative or assignee to obtain registration of the trade mark in [Pakistan] under this Act on his making an application for registration in [Pakistan], within such period as may be fixed in this behalf by the notification as if an application for registration under this Act had been made in respect of that trade mark at the date at which the application for registration was made within the territories of that Government.
84. Power of Central Government to make rules :
(1) The Central Government may, subject to the Condition of previous
publication by notification in the official Gazette, make rules to carry out the purposes of this Act.
(2) In particular and without prejudice to the generality of the foregoing power, such rules may -
- prescribe the classification of goods for the purpose of the registration of trade marks, and empower the Registrar to amend the register so far as may be necessary for the purpose of adapting the entries therein to any amended or substituted classification which may be prescribed;
- require the making of duplicates of trade marks and other documents connected therewith;
- provide for securing and regulating the publication, sale or distribution of copies of trade marks and other documents connected therewith;
- prescribe additional matters to be entered in the register;
- prescribe the conditions and restrictions subject to which the register, 2* * * and the Refused Textile marks [List] may be inspected;
- prescribe the form of certificates of registration;
- prescribe the conditions under which a trade mark removed from the register may be restored under sub-section (3) of section 18;
- prescribe the further documents, information or evidence to accompany an application under sub-section (1) of section41;
- prescribe classes of goods as textile goods for the purposes of Chapter IX;
- provide for the constitution of Advisory Committees referred to in section 66, and prescribe the places of meeting, and conduct of business at meetings, of such Committees;
- regulate the awarding of costs by the Registrar under section 70;
- prescribe the conditions subject to which an agent referred to in section 80 may act;
(ll) make such supplementary provision as may be necessary or expedient to give effect to reciprocal arrangements entered into with [Acceding States or non-Acceding State] under section 82A;- prescribe the fees to be paid under this Act;
- provide for the establishment of branches of the trade marks Registry when expedient for facilitating the working of this Act, and authorise the preparation of copies of the register to be kept at such branch officers;
- prescribe the manner in which, in proceedings under this Act before the Central Government or the Registrar, application shall be made, notices given and matters advertised;
- prescribe times or periods required by this Act to be prescribed;
- Provide, generally, for regulating the business of the trade marks Registry and of branches established under clause (n) 3* * * and for regulating all things by this Act placed under the direction or control of the Central Government or the Registrar.
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85. Power of Certain Government to make provision for applications for registration before the coming into force of the remaining provision of Act :
The Central Government may, by notification in the official Gazette, provide such procedure as it considers expedient to enable intending applicants 0to deposit trade marks at the Patent Office before the coming into force of the remaining provisions of this Act:
Provided that the deposit of a trade mark under this section shall not affect any right, existing or accruing, in the trade mark.
86. [Omitted] :
Proceedings at Patent Office and the Bombay Registry to be deemed to have been taken at trade marks Registry.] omitted by A. O., 1949.
1 Clause (II) ins. by the trade marks (Amdt.) Act, 1916 (12 of 1946), section 14.
2 Subs. by A.O., 1949 for "Indian States".
3 The words and figures "or under section 63" omitted by the trade marks (Amdt.) Act, 1941 (27 of 1941). S. 10.
4 Cl. ® omitted by the trade marks (Amdt.) Act, 1943 ( 15 of 1943), s, 15 (with effect from the 5th June, 1943).
5 This section was added, ibhl., s.16.