72. Proposed use of
trade mark by company to be formed.-(1) No application for the registration of a trade mark in respect of
any goods or services shall be refused, nor shall permission for such
registration be withheld, on the ground only that it appears that the applicant
does not use or propose to use the trade mark, if the Registrar is satisfied
that-
(a) a company is about to be formed and registered under the
Companies Ordinance, 1984 (XLVII of 1984), or any modification thereof and that
the applicant intends to assign the trade mark to that company with a view to
the use thereof in relation to those goods or services by the company; or
(b) the
applicant intends it to be used by way of permitted use.
(2)
The provisions of section 73 shall have effect, in relation to a trade mark
registered under this sub-section, as if for the reference, in clause (a) of
sub-section (1) of that section to intention on the part of an applicant for
registration that a trade mark should be used by him there were substituted a
reference to intention on his part that it should be used by the company or the
authorised user concerned.
(3)
The tribunal may, in a case to which clause (a) of sub-section (1) applies,
require the applicant to give security for the costs of any proceedings
relating to any opposition or appeal, and in default of such security being
duly given, may treat the application as abandoned.
(4)
Where in a case to which clause (a) of sub-section (1) applies, a trade mark in
respect of any goods or services is registered in the name of an applicant who
relies on intention to assign the trade mark to a company, then unless within
such period as may be prescribed or within such further period not exceeding
six months as the Registrar may, on application being made to him in the
prescribed manner, allow, the company has been registered as the proprietor of
the trade mark in respect of those goods or services, the registration shall
cease to have effect in respect thereof at the expiration of that period and
the Registrar shall amend the Register accordingly.
73. Revocation
of registration.- (1) The registration of a trade mark may be revoked on
any of the following grounds, namely:-
(a) that within the period of five years following the date of
completion of registration procedure it has not been put to bona fide use in Pakistan by the
proprietor or by an authorised user thereof, in relation to the goods or
services for which it is registered and there are no proper reasons for its
non-use;
(b) that the bona fide
use has been suspended for an uninterrupted period of five years and there are
no proper reasons for its non-use;
(c) that in consequence of acts or inactivity of the proprietor,
it has become the common name in the trade for a product or service for which
it is registered; and
(d) that in consequence of the use made of it by the proprietor
or with his consent in relation to the goods or services for which it is
registered, it is liable to mislead the public, particularly as to the nature,
quality or geographical origin of those goods or services.
(2) For the purposes of sub-section (1), use of a trade mark shall include use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
(3)
The registration of a trade mark shall not be revoked on the grounds specified
in clause (a) or (b) of sub-section (1), if such use, as it referred to in
those clauses, is commenced or resumed after the expiry of the five years’
period and before the application for revocation is made:
Provided that any such commencement or resumption of use after the expiry of five years period but only three months before the application for revocation is made, shall only be regarded if the preparation for commencement or resumption began before the proprietor became aware that the application is made.
(4)
An application for revocation may be made by an interested party to the
Registrar, except that-
(a) if proceedings concerning the trade mark in question are
pending in the Court, the application shall be made to the Court; and
(b) in case the application is made to the Registrar, he may at
any stage of the proceedings refer the application to the Court.
(5)
Where grounds for revocation exist in respect of only some of the goods or
services for which the trade mark is registered, revocation shall relate to
those goods or services only.
(6)
Where the registration of a trade mark is revoked to any extent, the rights of
the proprietor shall be deemed to have ceased to that extent as from-
(a) the date
of the application for revocation; or
(b) if the Registrar or Court is satisfied that the grounds for
revocation existed at an earlier date, that date.
(7)
Where the registration of a trade mark is revoked or declared invalid on the
ground that the registration was secured in bad faith, the applicant shall be
barred from applying for registration of the identical or similar trade mark
for two years from the date of revocation or invalidation, whatever the case
may be.
74. Use of
trade mark by a person other than the proprietor thereof.- (1)
The permitted use of a trade mark shall be deemed to be use of the trade mark
by the owner of the trade mark and shall be deemed not to be use of the trade
mark by a person other than the owner for any purpose for which such use is
material under this Ordinance or any other law for the time being in force.
(2) The tribunal while determining as to
whom the benefit of use of a trade mark be passed, shall pass the benefit to
none else, except to-
(a) the
proprietor of the trade mark, if the trade mark is registered; or
(b) the owner of the trade mark, if the trade mark is entitled to
protection under the Paris Convention as a well known trade mark.
75. Licensing
of registered trade mark.- (1) A license
to use a registered trade mark may be general or limited.
(2) A limited license may, in
particular, apply-
(a) in relation to some but not all of the goods or services for
which the trade mark is registered; or
(b) in
relation to use of the trade mark in a particular manner or a particular
locality.
(3)
A license shall not be effective unless it is in writing signed by or on behalf
of the grantor.
(4)
Unless the license provides otherwise, it shall be binding on a successor in
title to the grantor's interest.
(5)
Where the license so provides, a sub-license may be granted by the licensee,
and references in this Ordinance to a license or licensee shall include a
sub-license or sub-licensee.
76. Exclusive license
defined. - (1) In this Ordinance, an "exclusive license "
means a license, whether general or limited, authorizing the licensee to the
exclusion of all other persons including the person granting the license, to
use a registered trade mark in the manner authorised by the license and the
expression "exclusive licensee" shall be construed accordingly.
(2)
An exclusive licensee shall have the same rights against a successor in title
who is bound by the license as he has against the person granting the license.
77.
General provisions
as to the rights of licensees in case of infringement.- (1)
Save as provided in section 61, a licensee shall be entitled, unless his licence, or any licence through which his
interest is derived, provides otherwise, to call on the proprietor of the
registered trade mark to take infringement proceedings in respect of any matter
which affects his interests:
Provided
that if the proprietor-
(a)
refuses to do so; or
(b)
fails to do so within two months after being called upon,
the
licensee may bring the proceedings in his own name as if he were the
proprietor.
(2)
Where infringement proceedings are brought by a licensee under this section,
the licensee may not, without the leave of the Court, proceed with the action
unless the proprietor is either joined as a plaintiff or added as a defendant:
Provided
that this shall not affect the granting of interlocutory
relief on an application by a licensee alone.
(3)
A proprietor who is added as a defendant as provided in sub-section (2) shall
not be made liable for any costs in the action unless he takes part in the
proceedings.
(4)
In infringement proceedings brought by the proprietor of a registered trade
mark any loss suffered or likely to be suffered by licensees shall be taken
into account and the Court may give such directions as it thinks fit as to the
extent to which the plaintiff shall hold the proceeds of any pecuniary remedy
on behalf of licensees.
(5)
The provisions of this section shall apply in relation to an exclusive licensee
if or to the extent that he has, under sub-section (1) of section 78, the
rights and remedies of an assignee as if he were the proprietor of the
registered trade mark.
78. Exclusive licensee having rights and remedies of assignee.- (1) An
exclusive license may provide that the licensee shall have, to such extent as
may be provided by the license, the same rights and remedies in respect of
matters occurring after the grant of the license as if the license had been
assignment. Where or to the extent that such provision is made, the licensee
shall be entitled, subject to the provisions of the license and to the
following provisions of this section, to bring infringement proceedings,
against any person other than the proprietor, in his own name.
(2)
Any such rights and remedies of an exclusive licensee shall be concurrent with
those of the proprietor of the registered trade mark, and references to the
proprietor of a registered trade mark in this Ordinance relating to
infringement shall be construed accordingly.
(3)
In an action brought by an exclusive licensee by virtue of this section, a
defendant may avail himself of any defence which would have been available to him
if the action had been brought by the proprietor of the registered trade mark.
(4)
Where proceedings for infringement of a registered trade mark brought by the
proprietor or an exclusive licensee relate wholly or partly to an infringement
in respect of which they have concurrent rights of action, the proprietor or,
as the case may be, the exclusive licensee may not, without the leave of the
Court, proceed with the action unless the other is either joined as a plaintiff
or added as a defendant:
Provided
that this shall not affect the granting of interlocutory relief on an
application by a proprietor or exclusive licensee alone.
(5)
A person who is added as a defendant as mentioned in sub-section (4) shall not
be made liable for any costs in the action unless he takes part in the
proceedings.
(6)
Where an action for infringement of a registered trade mark is brought which
relates wholly or partly to an infringement in respect of which the proprietor
and an exclusive licensee have or had concurrent rights of action-
(a) the Court
shall in assessing damages take into account-
(i)
the terms of the license; and
(ii) any pecuniary remedy already awarded or available to either
of them in respect of the infringement;
(b) no account of profits shall be directed if an award of
damages has been made, or an account of profits has been directed, in favour of
the other of them in respect of the infringement; and
(c) the Court shall if an account of profits is directed
apportion the profits between them as it, subject to any agreement between
them, considers just.
(7) The
provisions of sub-section (6) shall apply whether or not the proprietor and the
exclusive licensee are both parties to the action, the Court may give such
directions as it thinks fit as to the extent to which the party to the
proceedings shall hold the proceeds of any pecuniary remedy on behalf of the
other.
(8)
The proprietor of a registered trade mark shall inform any exclusive licensee
who has a concurrent right of action before applying for an order under section
48, and the Court may, on the application of the licensee, make such order
under that section as it thinks fit having regard to the license.
(9)
The provisions of sub-sections (4) to (8) shall have effect subject to any
agreement to the contrary between the exclusive licensee and the proprietor.
79. Surrender of
registered trade mark.- (1) A registered trade mark my be surrendered by
the proprietor in respect of some, or all, of goods or services for which it is
registered.
(2)
Provisions may be made by rules,
(a) as to the
manner and effect of a surrender; and
(b) for protecting the interests of other persons having right in
the registered trade mark.
80. Grounds
for invalidity of registration.- (1) The registration of a
trade mark may be declared invalid on the ground that the trade mark was
registered in breach of section 14 or any of the provisions thereof.
(2) Where
the trade mark was registered in breach of clause (b), (c) or (d) of
sub-section (1) of section 14, it shall not be declared invalid if, in
consequence of the use which has been made of it, it has after registration
acquired a distinctive character in relation to the goods or services for which
it is registered.
(3) The registration of a trade
mark may be declared invalid on the ground that there is-
(a) an earlier trade mark in relation to which the conditions set
out in sub-section (1), (2) or (3) osf section 17 obtain; or
(b) an earlier right in relation to which the condition set out
in sub-section (4) of section 17 is satisfied,
unless
the proprietor of that earlier trade mark or other earlier right has consented
to the registration.
(4)
An application for declaration of invalidity may be made by an interested party
either to the Registrar or to the Court, except that-
(a) if proceedings concerning the trade mark in question are
pending in the Court, the application shall be made to the Court; and
(b) in any other case, if the application has been made to the
Registrar, he may at any stage of the proceedings refer the application to the
Court.
(5)
In the case of bad faith in the registration of a trade mark, the Registrar may
apply to the Court for a declaration of the invalidity of the registration.
(6)
Where the grounds of invalidity exist in respect of only some of the goods or
services for which the trade mark is registered, the trade mark shall be
declared invalid as regards those goods or services only.
(7)
Where the registration of a trade mark has been declared invalid to any extent,
the registration shall to that extent be deemed never to have been made
provided that this shall not affect the transactions past and closed.
81. Effect of
acquiescence.- (1) Where the owner of an earlier trade mark, or other
earlier rights, has acquiesced for a continuous period of five years from the
date of registration in the use of a registered trade mark in Pakistan, being
aware of that use, there shall cease to be any entitlement on the basis of that
earlier trade mark or other right-
(a) to apply for a declaration that the registration of the later
trade mark is invalid; or
(b) to oppose the use of the later trade mark in relation to the
goods or services in relation to which it has been so used,
unless the registration of the
later trade mark was applied for or used in bad faith.
(2)
Where sub-section (1) applies, the proprietor of the later trade mark shall not
be entitled to oppose the use of the earlier trade mark or, as the case may be,
the exploitation of the earlier right, notwithstanding that the earlier trade mark
or right may no longer be invoked against his later trade mark.
82. Collective marks.- (1) A
collective mark shall be a mark
distinguishing the goods or services of members of the association which is the
proprietor of the mark from those of other undertakings.
(2)
The provisions of this Ordinance shall apply to collective marks subject to the
provisions of the First Schedule.
83. Certification marks.- (1) A
certification mark shall be a mark
indicating that the goods or services in connection with which it is used are
certified by the proprietor of the mark in respect of origin, mode of
manufacture of goods or performance of services, quality, accuracy or other
characteristics.
(2)
The provisions of this Ordinance shall apply to certification marks subject to
the provisions of the Second Schedule.
84. Domain names.- (1) A
domain name shall be a mark which is a user friendly substitute for an Internet
address.
(2)
The provisions of this Ordinance shall apply to domain names subject to the
provisions of the Third Schedule.