1. Short title,
extent and commencement.- (1) This Ordinance may be called
the Trade Marks Ordinance, 2000.
(2) It extends to the whole of Pakistan.
(3) This section and section 132 shall come into force at once; the remaining
provisions of the Ordinance shall come into force on such date as the Federal
Government may, by notification in the official gazette, appoint in this behalf.
2. Definitions.- In this Ordinance, unless there is
anything repugnant in the subject or context,-
(i)
"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;
(ii)
"assignment" in relation to a trade mark, means an
assignment in writing by act of the parties concerned;
(iii)
"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;
(iv) "certification mark" means a certification mark as defined
in sub-section (1) of section 83;
(v) "collective mark" means a collective mark as defined in
sub-section (1) of section 82;
(vi)
"comparative advertisement" means an advertisement which
explicitly or by implication identifies a competitor or goods or services
offered by a competitor;
(vii) "Convention application" means an application as defined in
sub-section (1) of section 25;
(viii) "Convention country" means a Convention country as defined
in clause (b) of section 85;
(ix) “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;
(x) “Court” means the High Court;
(xi) "date of filing" means-
(a) 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
(b) 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
(a) in relation to an application to provide temporary protection during exhibition, the day referred to in sub-section (1) of section 26; or
(b) in relation to a Convention application, the day referred to in clause (a) of sub-section (2) of section 25;
(xii)
"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;
(xiii) "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;
(xiv)
"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;
(xv) "District Court" has the meanings assigned to that expression by the Code of
Civil Procedure, 1908 (Act V of 1908);
(xvi) "divisional application" means a divisional application as
defined in sub-section (1) of section 32;
(xvii) "domain name" means the domain name as defined in
sub-section (1) of section 84;
(xviii) "earlier trade mark" means an earlier trade mark as defined
in sub-section (1) of section 18;
(xix) "false trade description" means-
(a) a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied;
(b) 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;
(c) any mark or arrangement or combination thereof when
applied-
(i)
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
(ii) 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;
(d)
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,-
(i)
is or are not a trade mark or part of a trade mark;
(ii)
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
(iii)
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
(e) 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;
(xx) "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-
(a)
originated in that country, region or locality; and
(b)
have a quality, reputation or other characteristic attributable to their
geographical region;
(xxi)
"goods" means anything which is subject of trade, commerce or manufacture;
(xxii) "Journal" means the Trade Marks Journal published under the
authority of the Registrar;
(xxiii) "licensee" means a person using a registered trade mark by
virtue of a transaction;
(xxiv)
"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;
(xxv)
"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;
(xxvi) "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;
(xxvii)
"name"
includes any abbreviation of name;
(xxviii) "notify"
means to notify in the Journal;
(xxix)
"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;
(xxx)
"packaging" includes, in particular, any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, band, reel, frame, capsule, cap, lid, stopper and cork;
(xxxi) "Paris
Convention" means the Paris
Convention as defined in clause (a) of section 85;
(xxxii) "permitted
use", in relation to a trade mark, means the use of the trade mark by an
authorised user;
(xxxiii)
"predecessor in title", in relation to a person who claims to be the proprietor
of a trade mark, means-
(a) 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
(b) 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;
(xxxiv)
"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;
(xxxv)
"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;
(xxxvi) “proprietor of earlier right”, in relation to a trade mark, means a person
entitled to prevent the use of a trade mark;
(xxxvii)
"Register"
means the Register of Trade Marks maintained under sub-section (1) of section
10;
(xxxviii)
“Registrar” means the Registrar of Trade Marks appointed under section 7;
(xxxix)
"registered", with its grammatical variations, means registered under this
Ordinance or the Trade Marks Act, 1940 (V of 1940);
(xl) "registered trade mark" means a trade mark which is
actually on the Register;
(xli) “rules” means the rules made under this Ordinance;
(xlii) “Schedule” means a Schedule to this Ordinance;
(xliii) "seized goods" means goods seized under section 56;
(xliv) "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;
(xlv) "similar goods"
includes goods which are of the same description;
(xlvi) "similar services" include services which are of the same
description;
(xlvii) "trade description" means any description, statement or
other indication, direct or indirect-
(a) as to the number,
quantity, measure, gauge or weight of any goods; or
(b) as to the standard
of quality of any goods or services according to classification commonly used or
recognized in the trade; or
(c) as to
fitness for the purpose, strength, performance or behaviour of any goods, being
drugs or foods; or
(d)
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
(e)
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
(f) as to the mode of manufacture or producing any goods or
providing services; or
(g) as to the material of which any goods are composed; or
(h) as to any goods being the subject of an existing patent,
privilege or copyright,
and includes-
(a) 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;
(b) any description as to any imported goods contained in any bill of entry or shipping bill; and
(c) any other description which is likely to be misunderstood or mistaken for all or any of the said matters;
(xlviii)
"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;
(xlix) “Trade Marks Registry” means the Trade Marks Registry
established under section 9;
(l) "trade names" means names used by a person to denote his
trade or calling and includes firms’ and companies’ names;
(li)
"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;
(lii) "tribunal" means the Registrar or, as the case may be, the
Court before which the proceedings concerned is pending;
(liii) "unfair competition" means an unfair competition as defined
in section 67; and
(liv) “word” includes an abbreviation of a word.
3. Goods and
services when associated, etc.- (1) For the purposes of this
Ordinance,
(a) 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;
(b) 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.
(c) a trade mark shall be taken
used in relation to goods or services if the trade mark is used-
(i)
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;
(ii)
in a manner likely to lead persons to believe that it refers to, describes or
designates the goods or services;
(iii)
on a signboard or in an advertisement; or
(iv)
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-
(a) dealt
with or provided in the course of trade by another person; and
(b) 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 ___
(a)
a person deals with or provides, in the course of trade,
goods or services in relation to which a trade mark is used; and
(b)
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-
(a)
to use of a trade mark shall include reference to use of
the trade mark in relation to goods, as well as, on goods;
(b) to use of a trade mark in relation to goods shall include reference to use of the trade mark on goods, or vice versa;
(c)
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
(d) 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.