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| :: Trade Mark Ordinance 2001 |
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AN ORDINANCE |
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To amend and consolidate the law relating to trade marks
WHEREAS it is expedient to amend and consolidate the law relating to trade marks and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith;
AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of the Proclamation of the fourteenth day of October, 1999, and the Provisional Constitution Order No.1 of 1999;AND WHEREAS the President is satisfied that circumstances exist which render it necessary to take immediate action;
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution Order No.1 of 1999, read with the Provisional Constitution (Amendment) Order No.9 of 1999, and in exercise of all powers enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the following Ordinance:- |
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| CHAPTER I.- PRELIMINARY |
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1-Short title, extent and commencement.-
- This Ordinance may be called the Trade Marks Ordinance, 2000.
- It extends to the whole of Pakistan.
- 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.
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2-Definitions:-In this Ordinance, unless there is anything repugnant in the subject or context,- |
- "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;
- "assignment" in relation to a trade mark, means an assignment in writing by act of the parties concerned;
- "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;
- "certification mark" means a certification mark as defined in sub-section (1) of section 83;
- "collective mark" means a collective mark as defined in sub-section (1) of section 82;
- "comparative advertisement" means an advertisement which explicitly or by implication identifies a competitor or goods or services offered by a competitor;
- "Convention application" means an application as defined in sub-section (1) of section 25;
- "Convention country" means a Convention country as defined in clause (b) of section 85
- "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;
- "Court" means the High Court;
- "date of filing" means-
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- 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
- 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
- in relation to an application to provide temporary protection during exhibition, the day referred to in sub-section (1) of section 26; or
- in relation to a Convention application, the day referred to in clause (a) of sub-section (2) of section 25;
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- "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;
- "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;
- "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;
- "District Court" has the meanings assigned to that expression by the Code of Civil Procedure, 1908 (Act V of 1908);
- "divisional application" means a divisional application as defined in sub-section (1) of section 32;
- "domain name" means the domain name as defined in sub-section (1) of section 84;
- "earlier trade mark" means an earlier trade mark as defined in sub-section (1) of section 18;
- "false trade description" means-
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- a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied;
- 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;
- any mark or arrangement or combination thereof when applied-
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- 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
- 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;
- 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,
- is or are not a trade mark or part of a trade mark;
- 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
- 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
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- 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;
- 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-
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- originated in that country, region or locality; and
- have a quality, reputation or other characteristic attributable to their geographical region;
- "goods" means anything which is subject of trade, commerce or manufacture;
- "Journal" means the Trade Marks Journal published under the authority of the Registrar;
- "licensee" means a person using a registered trade mark by virtue of a transaction;
- "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;
- "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;
- "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
- "name" includes any abbreviation of name;
- "notify" means to notify in the Journal;
- "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;
- "packaging" includes, in particular, any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, band, reel, frame, capsule, cap, lid, stopper and cork;
- "Paris Convention" means the Paris Convention as defined in clause (a) of section 85;
- "permitted use", in relation to a trade mark, means the use of the trade mark by an authorised user;
- "predecessor in title", in relation to a person who claims to be the proprietor of a trade mark, means:-
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- 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
- 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;
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- "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;
- "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;
- "proprietor of earlier right", in relation to a trade mark, means a person entitled to prevent the use of a trade mark;
- "Register" means the Register of Trade Marks maintained under sub-section (1) of section 10;
- "Registrar" means the Registrar of Trade Marks appointed under section 7;
- "registered", with its grammatical variations, means registered under this Ordinance or the Trade Marks Act, 1940 (V of 1940);
- "registered trade mark" means a trade mark which is actually on the Register;
- "rules" means the rules made under this Ordinance;
- "Schedule" means a Schedule to this Ordinance;
- "seized goods" means goods seized under section 56;
- "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;
- "similar goods" includes goods which are of the same description;
- "similar services" include services which are of the same description;
- "trade description" means any description, statement or other indication, direct or indirect-
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- as to the number, quantity, measure, gauge or weight of any goods; or
- as to the standard of quality of any goods or services according to classification commonly used or recognized in the trade; or
- as to fitness for the purpose, strength, performance or behaviour of any goods, being drugs or foods; or
- 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
- 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
- as to the mode of manufacture or producing any goods or providing services; or
- as to the material of which any goods are composed; or
- as to any goods being the subject of an existing patent, privilege or copyright, and includes-
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- 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;
- any description as to any imported goods contained in any bill of entry or shipping bill; and
- any other description which is likely to be misunderstood or mistaken for all or any of the said matters;
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- "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;
- "Trade Marks Registry" means the Trade Marks Registry established under section 9;
- "trade names" means names used by a person to denote his trade or calling and includes firms' and companies' names;
- "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;
- "tribunal" means the Registrar or, as the case may be, the Court before which the proceedings concerned is pending;
- "unfair competition" means an unfair competition as defined in section 67; and
- "word" includes an abbreviation of a word
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3. Goods and services when associated, etc.- (1) For the purposes of this Ordinance,
- 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;
- 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.
- a trade mark shall be taken used in relation to goods or services if the trade mark is used-
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(2) Where the owner of a trade mark exercises quality control over goods or services-
- dealt with or provided in the course of trade by another person; and
- in relation to which the trade mark is used
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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 person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
- the owner of the trade mark exercises financial control over the other person's relevant trading activities,
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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
- to use of a trade mark shall include reference to use of the trade mark in relation to goods, as well as, on goods;
- to use of a trade mark in relation to goods shall include reference to use of the trade mark on goods, or vice versa;
- 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
- to the Trade Marks Registry shall be construed as including a reference to any branch of the Trade Marks Registry.
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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.
- review any function, matter, case or decision of any officer; or
- withdraw any function, matter or case from any officer or staff,
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