(See section 134)
TRANSITIONAL PROVISIONS
1. Introductory.-(1) In this Schedule,-
(a) "existing registered mark" means a trade mark or certification mark registered under the Trade Marks Act, 1940 (V of 1940), immediately before the commencement of this Ordinance;
(b) "1940
Act" means the Trade Marks Act, 1940 (V of 1940) ; and
(c) "old law" means the 1940 Act and any law for the
time being in force, applying to existing registered marks immediately before
the commencement of this Ordinance.
(2) For the purposes of this
Schedule,-
(a) an application shall be treated as pending on the commencement
of this Ordinance if it was made but not finally determined before such
commencement; and
(b) the date on which it was made shall be taken to be the date
of filing under the 1940 Act.
2. Existing registered
trade mark.- (1) The
existing registered marks shall be transferred, on the commencement of this
Ordinance, to the Register, and shall have effect, subject to the provisions of
this Schedule, as if registered under this Ordinance.
(2)
The existing registered marks registered as a series under sub-section (3) of
section 11of the 1940 Act shall be similarly registered in the new Register.
(3)
Provisions may be made by rules for putting such entries in the same form as is
required for entries under this Ordinance.
(4)
In any other case notes indicating that the existing registered marks are
associated with other marks shall cease to have effect on the commencement of
this Ordinance.
3. Disclaimer,
limitations and conditions.- A disclaimer, limitation or condition entered on
the register kept under the 1940 Act in relation to an existing registered mark
immediately before the commencement of this Ordinance shall be transferred to
the Register and have effect as if entered on the Register in pursuance of
section 15.
4. Effect of
infringement.- (1) The provisions of sections 39 to 42 shall apply in relation to an existing registered
mark as from the commencement of this Ordinance and the provisions of section 46 shall apply in relation to
infringement of an existing registered mark committed after the commencement of
this Ordinance, subject to sub-para (3).
(2) The
old law shall continue to apply in relation to infringement committed before
the commencement of this Ordinance.
(3)
It shall not be an infringement of-
(a) an
existing registered mark; or
(b) a registered trade mark of which the distinctive elements are
the same or substantially the same as those of an existing registered mark and
which is registered for the same goods or services,
to
continue after the commencement of this
Ordinance any use which did not amount to infringement of the existing
registered mark under the old law.
5. Infringing goods,
material and articles.- The provisions of section 48 shall apply to infringing goods, material or articles
made before or after the commencement of this Ordinance.
6. Rights and remedies of licensee or authorised user.- (1) The provisions of section 75 shall apply
to license granted before the commencement of this Ordinance, but only in
relation to any infringement committed after such commencement.
(2)
The provisions of para 14 of the Second Schedule shall apply only in relation to infringement committed after the
commencement of this Ordinance.
7. Co-ownership of registered trade mark.- The provisions of section 24 shall apply as
from the commencement of this Ordinance to an existing registered trade mark of
which two or more persons were, immediately before such commencement,
registered as joint proprietor:
Provided
that so long as the relations between the joint proprietors remain such as are
described in sub-section (2) of section
17 of the 1940 Act, there shall be taken to be an agreement to exclude the
operation of sub-sections (2) and (3) of section 24.
8. Assignment of
registered trade mark.- (1)
The provisions of section 67 shall apply to transactions and events occurring
after the commencement of this Ordinance in relation to an existing registered
trade mark, and the old law shall continue to apply in relation to transactions
and events occurring before such commencement.
(2)
The existing entries under section 35 of the 1940 Act shall be transferred on
the commencement of this Ordinance to the Register, and shall have effect as if
made under section 70.
(3)
An application for registration under section 35 of the 1940 Act, which is
pending before the Registrar on the commencement of this Ordinance shall be
treated as an application for registration under section 70 and shall proceed
accordingly:
Provided
that the Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(4)
An application for registration under section 35 of the 1940 Act, which has
been determined by the Registrar but not finally determined before the
commencement of this Ordinance shall be dealt with under the old law, and the
provisions of sub-para (2) shall apply in relation to any resulting entry in
the Register.
(5)
Whether before the commencement of this Ordinance, a person has become entitled
by assignment or transmission to an existing registered trade mark but has not
registered his title, any application for registration after such commencement
shall be made under section 70.
(6)
In cases to which the provisions of
sub-para (3) or (5) applies, the provisions of sub-section (2) of section 35 of the 1940 Act shall continue to
apply, and the provisions of
sub-section (3) of section 68 shall not apply, as regards the
consequences of failing to register.
9. Licensing of
registered trade mark.- (1) The provisions of section 73 and sub-section
(2) of section 74 shall apply only in relation to licences granted after the
commencement of this Ordinance, and the
old law shall continue to apply in relation to licences granted to authorised
users before the commencement of this Ordinance.
(2)
The existing entries under section 39 of the 1940 Act shall be transferred on
the commencement of this Ordinance to the Register, and shall have effect as if
made under section 70.
(3)
Provisions may be made by rules for putting entries referred to in sub-para (2)
in the same form as is requires for entries made under this Ordinance.
(4)
An application for registration as a registered user which is pending before
the Registrar on the commencement of this Ordinance shall be treated as an
application for registration of a licence under sub-section (1) of section 70 and shall proceed accordingly:
Provided
that the Registrar may require the applicant to amend his application so as to
conform with the requirements of this Ordinance.
(5)
An application for registration as a registered user which has been determined
by the Registrar but not finally determined before the commencement of this
Ordinance shall be dealt with under the old law, and the provisions of sub-para
(2) shall apply in relation to any resulting entry in the Register.
(6)
Any proceedings pending on the commencement of this Ordinance under section 42
of the 1940 Act shall be dealt with under the old law and any necessary
alteration shall be made to the
Register.
10. Pending applications
for registration.- (1) An application for registration of a mark
under the 1940 Act which is advertised under sub-section (1) of section 15, or the proviso to that
sub-section of the 1940 Act, or an order has been made for its advertisement
before the commencement of this Ordinance shall be dealt with under the old
law, subject as provided in the following paras, and if registered, the mark
shall be treated for the purpose of this Schedule as an existing registered
trade mark.
(2)
The provisions of section 12 of the 1940 Act shall be disregarded in dealing,
after the commencement of this Ordinance, with an application for registration.
11. Conversion
of pending application.- (1) In the case of pending application for
registration which has not been advertised under sub-section (1) of section 15,
or the proviso to that sub-section of the 1940 Act, neither an order has been
made for such advertisement before the commencement of this Ordinance, the
applicant may give notice to the Registrar claiming to have the registrability
of the mark determined in accordance with the provisions of this Ordinance.
(2)
The notice under sub-para (1) shall be in the prescribed form, be accompanied
by the appropriate fee and be given no later than twelve months after the
commencement of this Ordinance.
(3)
The notice under sub-para (1), duly given shall be irrevocable and have the
effect that the application shall be treated as if made immediately after the
commencement of this Ordinance.
12. Trade marks
registered accordingly to old classification.- The Registrar may
exercise his powers to secure that any existing registered trade marks which do
not conform to the system of classification prescribed under section 12 are
brought in conformity with that system.
13. Claim to priority
from overseas application.- The provisions of section 25 shall apply to an
application for registration under this Ordinance made after the commencement
of this Ordinance notwithstanding that the Convention application was made
before such commencement.
14. Duration and
renewal of registration .-(1)
The provisions of sub-section (1) of section 32 shall apply in relation to the
registration of a mark in pursuance of an application made after the
commencement of this Ordinance, and the old law shall apply in any other case.
(2)
The provisions of sub-section (2) of section 32 and section 33 shall apply
where the renewal falls due on or after the commencement of this Ordinance, and
the old law shall continue to apply in any other case.
(3) In either case referred to
in sub-para (2) or (3), it shall be immaterial when the fee is paid.
15. Pending application
for alteration of registered trade mark.- An application under section
48 of the 1940 Act, which is pending on the commencement of this Ordinance shall
be dealt with under the old law and any necessary alteration shall be made in the Register.
16. Revocation for
non-use.- (1) An application under section 37 of the 1940 Act,
which is pending on the commencement of this Ordinance shall be dealt with under
the old law and any necessary alteration shall be made to the Register.
(2)
An application made under clause (a) or (b) of sub-section (1) of section 73 may be made in relation to an
existing registered mark at any time after the commencement of this Ordinance:
Provided
that no such application for the revocation of the registration of an existing
registered mark under section 38 of the 1940 Act may be made until more than
five years after the commencement of this Ordinance.
17. Application for rectification.- (1) An
application under section 46 or 47 of 1940 Act, which is pending on the
commencement of this Act shall be dealt with under the old law and any
necessary alteration shall be made to
the Register.
(2)
For the purpose of proceedings under section 80 as it applies in relation to an
existing registered mark, the provisions of this Ordinance shall be deemed to
have been in force at all material times:
Provided
that no objection to the validity of the registration of an existing registered
mark may be taken on the grounds specified in sub-section (3) of section 17 in conflict with earlier mark registered for different goods.
18. Regulations as to use
of certification mark.- (1) Regulations governing the use of an existing
registered certification mark deposited at the Trade Marks Registry under the
1940 Act shall be treated after the commencement of this Ordinance as if filed
under para 6 of the Second Schedule.
(2)
Any request for amendment of the regulations which was pending on the commencement
of this Ordinance shall be dealt with under the old law.
MUHAMMAD RAFIQ TARAR,
President.
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