Trade Marks Ordinance, 2001
CHAPTER I
PRELIMINARY
1. Short title, extent and commencement
2. Definitions
3. Goods and services when associated, etc
4. Reference to use of a trade mark, etc
5. Decision by tribunal regarding use of a trade mark
6. Application of other laws not barred
CHAPTER II
REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF TRADE MARKS
7. Appointment of Registrar and other officers
8. Power of Registrar to review, withdraw or transfer cases
9. Trade Marks Registry and branches thereof
11. Evidence of entries in Register and things done by Registrar
12. Classification of goods and services
13. Publication of an alphabetical index of classification of goods and services
14. Absolute grounds for refusal of registration
16. Use of names of chemical compounds barred
17. Relative grounds for refusal of registration
18. Meaning of "earlier trade mark"
19. Raising of relative grounds in case of honest concurrent use
20. Registration of parts of trade marks and of trade marks as a series
21. Registration subject to disclaimer
CHAPTER III
PROCEDURE FOR, AND DURATION OF, REGISTRATION
22. Application for registration
23. Date of filing
24. Co-ownership of trade mark
25. Meaning of Convention application, and right to priority
26. Application to provide temporary protection during exhibition
27. Examination of application
28. Publication, opposition proceedings and observations
32. Definition of divisional application
33. Registration
34. Duration and renewal of registration
36. Effect of removal from Register for failure to pay fee for renewal
37. Alteration of registered trade mark
38. Surrender of registered trade mark
CHAPTER IV
39. Rights conferred by registration
40. Infringement of registered trade mark
41. Infringement of trade mark by breach of certain restrictions
42. When a trade mark is not infringed
43. Registration to be prima facie evidence of validity
44. Registration to be conclusive as to validity after five years
45. Saving for words used as name or description of an article or a substance
47. Order for erasure of offending mark
48. Order for delivery up of infringing goods, material or articles
49. Meaning of "infringing goods, material or articles"
50. Period after which remedy of delivery be not available
51. Order as to disposal of infringing goods, material or articles
52. Remedy for groundless threats of infringement proceedings
CHAPTER VI
53. Infringing goods, material or articles may be treated as prohibited
54. Notice for intervention by customs authorities
55. Furnishing of security or equivalent assurance to customs authority
56. Collector of Customs may seize goods bearing infringing trade mark
59. Release of goods
60. Action for infringement against importation of infringing goods
61. Action for infringement by licensee in relation to any seized goods
62. Disposal of forfeited goods
63. Power of the Collector of Customs to retain control of goods
65. The Federal Government not be liable to loss, etc., suffered because of seizure
66. Power of the Collector of Customs to make regulations
CHAPTER VII
67. Definition of unfair competition and provisions relating thereto
68. Misleading and comparative advertisement
69. Assignment of registered trade mark
70. Registration of transactions affecting registered trade mark
71. Application for registration of trade mark as an object of property
72. Proposed use of trade mark by company to be formed
73. Revocation of registration
74. Use of trade mark by a person other than the proprietor thereof
75. Licensing of registered trade mark
77. General provisions as to the rights of licensees in case of infringement
78. Exclusive licensee having rights and remedies of assignee
79. Surrender of registered trade mark
80. Grounds for invalidity of registration
82. Collective marks
84. Domain names
85. Meaning of “Paris Convention” and “Convention country”
86. Protection of well known trade mark
87. National emblems of Convention countries
88. Emblems of certain international organizations
89. Notification under Article 6ter of the Paris Convention
90. Acts of agent or representative
91. Nature of goods or services to which a mark is to be applied
92. Trade name
93. Textile goods
94. Restrictions on registration of textile goods
96. Rectification or correction of Register
97. Adoption of entries to new classification
CHAPTER XIII
98. Meaning of applying a trade description
99. Penalty for applying false trade description, etc
100. Enhanced penalty on second or subsequent convictions
101. Penalty for falsification of entries in Register
102. Penalty for falsely representing a trade mark as registered
103. Restraint of use of Government Arms and State emblems
105. Powers to award compensation for offenses
106. Punishment of abetment in Pakistan of acts done out of Pakistan
107. Penalty for improperly describing a place of business as connected with the Trade Marks Registry
108. Power of Registrar to require use of forms
109. Information about applications and registered trade marks
110. Costs, security for costs and fine
111. Procedure before the Registrar
112. Certificate of validity of contested registration
113. Registrar's appearance in proceedings involving the Register
114. Appeal against the decision of the Registrar
115. Procedure before the Federal Government
116. Procedure in certain cases of option to apply to a Court or the Registrar
117. Suits for infringement to be instituted before District Court
118. Costs of Registrar in proceedings before a Court
119. Burden of proving use of trade mark
120. Certain persons to be public servants
121. Documents open to public inspection
122. Death of a party to any proceedings under this Ordinance
123. Extension of time
124. Registrar and other officers not compellable to produce Register, etc
125. Power to require goods to show indication of origin
126. Address for service
127. Trade mark agents
128. Fees
129. The Federal Government and a Provincial Government to be bound
130. Power to make reciprocal arrangements with any other Government
131. Power of High Court to make rules
132. Power of the Federal Government to make rules
133. Transitional
134. Repeal and savings
2. Signs of which a collective mark may consist
3. Indication of geographical origin
4. Collective mark not to be misleading as to character or significance
5. Regulations governing use of collective mark
6. Approval of regulations by the Registrar
7. Procedure of acceptance or refusal of application
8. Regulations to be published
9. Regulations to be open to inspection
11. Infringement of rights of authorized user
12. Infringement of a registered collective mark
13. Additional grounds for revocation of registration
14. Additional grounds for invalidity of registration
1. General
2. Signs of which certification mark may consist
3. Indication of geographical origin
4. Nature of proprietor's business
5. Certification mark not to be misleading as to character or significance
6. Regulations governing use of certification mark
7. Approval of regulations by the Registrar
8. Procedure for acceptance or refusal of application
9. Regulations to be published
10. Regulations to be open to inspection
12. Consent to assignment of registered certification mark
13. Infringement of rights of authorised user
14. Court to take into account loss suffered by authorised users
15. Additional grounds for revocation of registration
16. Additional grounds for invalidity of registration
THIRD SCHEDULE
1. General
2. Requirements for registration
3. Indication of geographical origin
4. Domain name not to be misleading as to character or significance
5. Procedure for acceptance, opposition and registration
6. Term of registration and renewal
7. Provisions of section 73 not to apply to domain names
8. Rules
1. Introductory
2. Existing registered trade mark
3. Disclaimer, limitations and conditions
5. Infringing goods, material and articles
6. Rights and remedies of licensee or authorised user
7. Co-ownership of registered trade mark
8. Assignment of registered trade mark
9. Licensing of registered trade mark
10. Pending applications for registration
11. Conversion of pending application
12. Trade marks registered accordingly to old classification
13. Claim to priority from overseas application
14. Duration and renewal of registration
15. Pending application for alteration of registered trade mark
17. Application for rectification
18. Regulations as to use of certification mark