108. Power of
Registrar to require use of forms.- (1) The Registrar may require
the use of such forms as he may direct for any purpose relating to the
registration of a trade mark or any other proceedings before him under this
Ordinance.
(2)
The forms and any directions of the Registrar with respect to their use shall
be notified in the manner as may be prescribed.
109. Information about
applications and registered trade marks.- (1) After publication of an
application for registration of a trade mark the Registrar shall on request
provide a person with such information and permit him to inspect such documents
relating to the application, or to any registered trade mark resulting from it,
as may be specified in the request, subject to such restrictions, as may be
prescribed.
(2) Any
request under sub-section (1) shall be made in the prescribed manner and be
accompanied by the prescribed fee.
(3)
Before publication of an application for registration of a trade mark, document
or information constituting or relating to the application shall not be
published by the Registrar or communicated by him to any person except-
(a) in such
cases and to such extent as may be prescribed; or
(b) with the
consent of the applicant,
but subject to the provisions of
sub-section (4).
(4)
Where a person has been informed that an application for registration of a
trade mark has been made, and that the applicant will if the application is
granted bring proceedings against him in respect of acts done after publication
of the application, he may make a request under sub-section (1) notwithstanding
that the application has not been published and that sub-section shall apply
accordingly.
110. Costs,
security for costs and fine.- (1) Provisions may be made by rules empowering
the Registrar, in any proceedings before him under this Ordinance-
(a) to award
any party such costs as he may consider reasonable;
(b) to impose
fine as he may consider reasonable; and
(c) to direct
how and by whom costs or fines shall be paid.
(2)
Any such order of the Registrar may be executable in the same way as a decree
of a Civil Court.
(3) Provisions may be made by rules
empowering the Registrar, in such cases as may be prescribed, to require a
party to proceedings before him to give security for costs in relation to those
proceedings or to proceedings on appeal and as to the consequences if security
is not given.
111. Procedure
before the Registrar.- (1) In all proceedings under this Ordinance
before the Registrar‑
(a) 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,
issuing commissions for the examination of witnesses and granting a certificate
of contested validity;
(b) 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.
(2) the Registrar shall not
exercise any powers vested in him by this Ordinance or the rules made thereunder adversely to any
party duly appearing before him, if required in writing within the prescribed time so to do,
without giving such party an opportunity of being heard.
112. Certificate of
validity of contested registration.- If in any legal proceedings
in which the validity of the registration of a trade mark comes into question
and 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 proceedings in which the said validity comes into
question, the said proprietor on obtaining a final order or judgement in his
favour shall, unless the said final
order or judgement for sufficient reason directs otherwise, be entitled to his
full costs, charges and expenses as between legal practitioner and client.
113. Registrar's
appearance in proceedings involving the Register.- (1) In
all proceedings before the Court involving application for-
(a) the
revocation of the registration of a trade mark;
(b) a
declaration of the invalidity of the registration of a trade mark; or
(c) the
rectification of the Register,
the Registrar shall be entitled
to appear and be heard and shall appear if so directed by the Court.
(2)
Unless otherwise directed by the Court, the Registrar may instead of appearing
submit to the Court a statement in writing signed by him, giving particulars
of-
(a) any
proceedings before him in relation to the matter in issue;
(b) the
grounds of any decision given by him affecting it;
(c) the
practice of the Trade Marks Registry in like cases; or
(d) such matters relevant to the issues and within his knowledge
as Registrar as he thinks fit,
and the statement shall be
deemed to form part of the evidence in the proceedings.
(3)
Anything which the Registrar is or may be authorized or require to do under
this section may be done on his behalf by a duly authorized officer by him.
114. Appeal against the decision of the Registrar.- (1)
Save as otherwise expressly provided in this Ordinance, an appeal shall
lie, within the prescribed period,
against any decision of the Registrar under this Ordinance or rules made
thereunder to the High Court having jurisdiction:
Provided
that if any suit or other proceedings concerning the trade mark in question is
pending before a High Court or a District Court, the appeal shall lie 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 21, 22 or 28, 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 Ordinance and of rules made thereunder, the
provisions of the Code of Civil Procedure, 1908 ( Act V of 1908), shall apply
to appeals before a High Court under this Ordinance.
115. Procedure before the Federal Government.- In all
proceedings under this Ordinance before the Federal Government, evidence shall
be given by affidavit, provided that the Federal 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 111.
116. Procedure in
certain cases of option to apply to a Court or the Registrar.- Where
under this Ordinance, an applicant has the option of making an application
either to a Court or to the Registrar-
(a) if any suit or proceedings concerning the trade mark in
question are pending before a Court, the application shall be made to the
Court; and
(b) in any other case, if
the application is made to the Registrar, he may at any stage of the
proceedings refer the application to the Court.
117. 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.
118. Costs of
Registrar in proceedings before a Court.- In all proceedings under this
Ordinance before a Court, the costs of the Registrar shall be in the discretion
of the Court, but the Registrar shall not be ordered to pay the costs of any of
the parties.
119. Burden of
proving use of trade mark.- If in any civil proceedings under this
Ordinance, if a question arises as to the use to which a registered trade mark
has been put, it shall be for the proprietor to show what use has been made of
it.
120. Certain persons
to be public servants.- Every person appointed under this Ordinance
shall be deemed to be a public servant within the meaning of section 21 of the
Pakistan Penal Code, 1860 (Act XLV of 1860).
121. Documents open to public inspection.- (1) Save as otherwise provided in this Ordinance-
(a) the Register
and any document upon which any entry in the Register is based;
(b) every notice of opposition to the registration of a trade
mark, application for rectification before the Registrar, counter-statement
thereto, and any affidavit or documents filed by the parties in any proceedings
before the Registrar;
(c) such other
documents as the Registrar may, by notification in the Journal specify,
shall,
subject to such conditions as may be prescribed, be open to public inspection
at the Trade Marks Registry.
(2)
Any person may, on an application to the Registrar and on payment of such fees
as may be prescribed, obtain a certified copy of any entry in the Register or
any document referred to in sub-section (1).
122. Death of a
party to any proceedings under this Ordinance.- If a person who is a
party to any proceedings under this Ordinance, not being any proceedings before
a Court, dies pending the proceedings, the Registrar may, on request, and on
proof to his satisfaction of the transmission of the interest of the deceased
person, substitute in the proceedings his successor in interest in his place,
or if the Registrar is of opinion that the interest of the deceased person is
sufficiently represented by the surviving parties, permit the proceedings to
continue without the substitution of his successor in interest.
123. Extension of time.- (1) If the Registrar is satisfied, on application made to him in
the prescribed manner and accompanied by the prescribed fee, that there is
sufficient cause for extending the time for doing any act not being a time
expressly provided in this Ordinance, whether the time so specified has expired
or not, he may subject to such conditions as he may think fit to impose, extend
the time and inform the parties accordingly.
(2)
Nothing in sub-section (1) shall be deemed to require the Registrar to hear the
parties before disposing of an application for extension of time and no appeal
shall lie from any order of the Registrar under this section.
124. Registrar and other officers not compellable to produce
Register, etc.- The Registrar or any officer of the Trade Marks
Registry shall not, in any legal proceedings to which he is not a party, be
compellable to produce the Register or any other document in his custody the
contents of which can be proved by the production of a certified copy issued
under this Ordinance or to appear as a witness to prove the matters therein
recorded unless by order of the Court made for special case.
125. Power to
require goods to show indication of origin.- (1) The Federal
Government may, by notification in the official Gazette, require that goods of
any description specified in the notification, which are made or produced
beyond the limits of Pakistan and imported into Pakistan, or which are made or
produced within the limits of Pakistan, shall from such date as may be
appointed by the notification not being less than three months from its issue,
have applied to them an indication of the county or place in which they were
made or produced, and of the name and address of the manufacturer or the person
for whom the goods were manufactured.
(2)
The notification under sub-section (1) may specify the manner in which such
indication shall be applied, that is to say, whether to goods themselves or in
any other manner and the times or occasions on which the presence of the
indication shall be necessary, that is to say, whether on importation only, or
also at the time of sale, whether by wholesale or retail or both.
(3)
The provisions of section 23 of the General Clauses Act, 1897 (X of 1897),
shall apply to the issue of a notification under sub-section (1), as they apply
to the making of a rule or bye-law the making of which is subject to the
condition of previous publication.
(4)
A notification under sub-section (1), shall not apply to goods made or produced
beyond the limits of Pakistan and imported into Pakistan, if in respect of
those goods the Collector of Customs is satisfied at the time of importation
that they are intended for exportation whether after transhipment in or transit
through Pakistan or otherwise.
126. Address for
service.- (1) Every applicant or opponent in any proceedings
under this Ordinance, who does not reside or carry on business within Pakistan,
shall give an address for service in Pakistan and such address may be treated
as the actual address of that person for all purposes connected with the
proceedings in question.
(2)
The address for service shall be deemed to be address of the applicant or the
opponent and all documents in relation to the application or notice of
opposition may be served by leaving them at or sending them by registered post
to the address for service of the applicant or opponent, as the case may be.
127. Trade mark
agents.- (1) Where by or under this Ordinance any act, other
than the making of an affidavit, is required to be done by any person, the act
may, subject to such conditions as may be prescribed, be done, in lieu of by
that person himself, by duly authorised agent whose is registered with the
Trade Marks Registry in the prescribed manner as a trade mark agent.
(2) The
Federal Government may, by notification in the official Gazette, make rules for
providing qualifications, registration and conduct of trade mark agents.
128. Fees.-(1) There shall be paid in respect
of applications and registration and other matters under this Ordinance such
fees as may be prescribed.
(2) Provisions may be made by
rules for-
(a) the
payment of a single fee in respect of two or more matters; and
(b) the
circumstances if any in which a fee may be repaid or remitted.
129. The
Federal Government and a Provincial
Government to be bound.- The provisions of this Ordinance shall be
binding on the Federal Government and a Provincial Government.
130. Power to make
reciprocal arrangements with any other Government.-
Without prejudice to the provisions of Articles 3 and 4 of the Agreement on
Trade Related Aspects of Intellectual Property Rights, 1994, the Federal
Government may, by notification in the official Gazette, enter into reciprocal
arrangements with other Governments for the purpose of this Ordinance.
131. Power of High Court to make rules.- The
High Court may make rules consistent with the provisions of this Ordinance as
to the conduct and procedure of all proceedings under this Ordinance before it.
132. Power of the
Federal Government to make rules.- (1) The Federal Government
may, subject to the condition of previous publication, by notification in the
official Gazette, make rules for carrying out the purposes of this Ordinance.
(2)
In particular and without prejudice to the generality of the foregoing power,
such rules may provide for all or any of the following matters, namely:-
(i) the
matters to be included in the Register under sub-section (1) of section 10;
(ii) conditions and restrictions subject to which the Register
shall be open to the inspection of the public under sub-section (5) of section
10;
(iii) classification of goods and services in accordance with the
international classification of goods and services under sub-section (1) of
section 12;
(iv)
publication of alphabetical index of classification of
goods and services under sub-section (2) of section 12;
(v)
the manner in which the Registrar may notify a word as an
international non-proprietary name under section 16;
(vi)
the manner of making an application for registration of a
trade mark under sub-section (1) of section 22;
(vii)
the manner and period for making a Convention application
under clause (b) of sub-section (2) of section 25;
(viii)
the matters related to the manner of claiming a right to
priority on the basis of a Convention application under sub-section (7) of
section 25;
(ix)
conditions for grant of temporary protection in respect of
goods or services during exhibition under sub-section (4) of section 26;
(x)
the manner of giving notice to the Registrar under
sub-section (2) of section 28 for opposing an application for registration
advertised or re-advertised under sub-section (1) of section 28 and the fee
payable for such application, making an application for extension of time under
sub-section (2) of section 28 and the fee payable for such application;
(xi)
the manner of serving a copy of the notice on the
applicant, an application for extension of time under sub-section (4) of
section 28 and the fee payable for such application, sending a
counter-statement of the grounds and fee payable for such application;
(xii)
the manner of serving a copy of the counter-statement on
the opponent, an application for extension of time under sub-section (5) of
section 28 and the fee payable for such application, sending a rejoinder to the
Registrar;
(xiii)
the manner of sending a copy of the rejoinder to the
applicant under sub-section (6) of section 28;
(xiv)
the manner of submitting any evidence under sub-section
(7) of section 28 and time limit for submitting such evidence;
(xv)
the manner of permitting correction of any error in, or
any amendment of, a notice of opposition, a counter-statement, or a rejoinder
under sub-section (9) of section 28;
(xvi)
the manner of notifying the Registrar under sub-clause (i) of clause (b) of section 30;
(xvii)
the time within which an application shall be registered
under sub-section (1) of section 33;
(xviii)
the fee payable and the time within which such fee is
payable under sub-section (2) of section 33;
(xix)
the manner of publication of the registration and the form
of certificate of registration under sub-section (4) of section 33;
(xx)
the manner of giving notice under sub-section (5) of
section 33;
(xxi)
the manner of informing the proprietor of a registered
trade mark of the date of expiry within which the registration may be renewed
under sub-section (2) of section 35;
(xxii)
the further period in which additional renewal fee shall
be paid under sub-section (3) of section 35;
(xxiii)
the manner and conditions for restoration of the
registration which has been removed from the Register under sub-section (6)
of section 35;
(xxiv)
the
matters related to the publication of alteration and the making of objections
by any person claiming to be affected by it under sub-section (3) of section
37;
(xxv)
the matters related to manner and effect of a surrender,
and for protecting the interests of other persons having a right in the
registered trade mark under sub-section (2) of section 38;
(xxvi)
the time
period within which the applicant, by notice in writing to the Collector of
Customs, consents to the release of the goods under clause (a) of sub-section
(2) of section 59;
(xxvii)
the
particulars of the transaction which are to be entered in the Register under
sub-sections (1) and (3) of section 70;
(xxviii) the
matters specified in sub-sections (4) and(5) of section 70;
(xxix)
the
manner of making application and the fee payable for such application under
sub-section (4) of section 72;
(xxx)
the classes of goods under section 93;
(xxxi)
the
conditions and restrictions subject to which registration of letters or
numerals, or any combination thereof in respect of textile goods may be allowed
under sub-section (2) of section 94;
(xxxii)
the
manner of constituting one or more Advisory Committees under sub-section (1) of
section 95, and matters related to the place of meeting and conduct of business
of such Committees under sub-section (3) of that section;
(xxxiii) the
manner of making an application under sub-section (4) of section 96;
(xxxiv) the
matters relating to empowering the Registrar to do such things as he considers
necessary to implement any amended or substituted classification of goods or
services for the purposes of the registration of trade marks under sub-section
(1) of section 97;
(xxxv) the time
within which a proposal for amendment could be made under clause (a) of
sub-section (4) of section 97;
(xxxvi) the
manner of opposition under sub-section (5) of section 97;
(xxxvii) the
manner of notification of the forms and any directions of the Registrar with
respect to their use under
sub-section (2) of section 108;
(xxxviii) the
restrictions imposed, manner of making application and fee payable under
sub-section (1) of section 109;
(xxxix) the cases
and extent to which application for registration of a trade mark, documents or
information constituting or relating to the application may be published by the
Registrar or communicated by him to any person under sub-section (3) of section
109;
(xl)
the matters related to empowering the Registrar for the
purposes of sub-section (1) of section 110;
(xli)
the matters related to empowering the Registrar to require
a party to proceedings before him to give security for costs, in relation to
those proceedings or to proceedings on appeal, and as to the consequences if
security is not given under sub-section (3) of section 110;
(xlii)
the period within which an appeal from any decision of the
Registrar under this Ordinance or rules made thereunder may lie to the High
Court having jurisdiction under sub-section (1) of section 114;
(xliii)
the manner of giving notice under sub-section (2) of
section 114;
(xliv)
the conditions under which documents listed in sub-section
(1) of section 121 may be open to public inspection under the said sub-section;
(xlv)
the fee payable for obtaining a certified copy under
sub-section (2) of section 121;
(xlvi)
the manner of making an application and the fee payable
therefor under sub-section (1) of section 123;
(xlvii)
the conditions under which any act other than the making
of an affidavit may be done by duly authorized agent under sub-section (1) of
section 127;
(xlviii)
the
matters related to qualifications, registration and conduct of trade mark
agents under sub-section (2) of section 127;
(xlix)
the fees payable for making applications, registrations
and other matters under sub-section (1) of section 128;
(l)
the matters related to the payment of a single fee in
respect of two or more matters and the circumstances, if any, in which a fee
may be repaid or remitted under sub-section (2) of section 128;
(li)
the making of further requirements with which the
regulations may have to comply under sub-para (2) of para 5 of the First Schedule;
(lii)
the making of further requirements with which the
regulations may have to comply under sub-para (2) of para 6 of the Second Schedule;
(liii)
the procedure for identification and classification of
computer related services associated with Internet under sub-para (3) of para 2
of the Third Schedule;
(liv)
the making of procedure for putting entries under sub-para
(2) of para 2, and sub-para (2) of para
9 of the Fourth Schedule;
(lv)
the manner of making application and the fee payable for
such application under sub-para (2) of para 11 of the Fourth Schedule;
(lvi)
the entry of additional information in the Register;
(lvii)
the regulation of awarding of costs by the Registrar under
this Ordinance;
(lviii)
the matters related to establishment of branches of the
Trade Marks Registry;
(lix)
the manner in which, in proceedings under this Ordinance
before the Registrar or the Federal Government, application shall be made,
notices given and matters advertised;
(lx)
the matters related to times or periods required by this
Ordinance to be advertised;
(lxi)
any matters generally related to business of the Trade
Marks Registry or its branches and for regulating all things by this Ordinance
placed under the discretion of the Registrar or the Federal Government; and
(lxii)
any other matter which is required to be, or may be
prescribed.
133. Transitional.- The
provisions of the Fourth Schedule shall have effect with respect to
transitional matters, including the treatment of trade marks registered under
the Trade Marks Act, 1940 (V of 1940), and applications for registration and
other proceedings pending under that Act, on the commencement of this Ordinance.
134. Repeal and
savings.- (1) The Trade Marks Act, 1940 (V of 1940), is hereby
repealed.
(2)
The Trade Marks Registry and its branches existing at the commencement of this
Ordinance shall be continued as if they had been established under this
Ordinance.
(3)
The Registrar, other officers and any other person appointed to the Trade Marks
Registry established under the Trade Marks Act, 1940 (V of 1940), shall be deemed to have been appointed to
the Trade Marks Registry established
under this Ordinance.