22. Application for registration.- (1) An application for registration of a trade mark shall be made in writing to the Registrar in the prescribed manner.
(2) Without limiting the particulars that may be included in an application, the application shall contain-
(a) a request for registration of a trade mark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the trade mark;
(d) international classification of goods or services;
(e) a representation of the trade mark; and
(f) full name, address and contact details of agent, in case the application, on behalf of the applicant, if made by his agent.
(3) The application shall state that the trade mark is being used by the applicant, or with his consent, in relation to goods or services, or that he has a bona fide intention that it should be used.
(4) The Registrar may refuse to admit an application if it does not contain all the particulars required under sub-sections (2) and (3).
(5) The application shall be subject to the payment of the application fee as may be prescribed.
23. Date of filing.- (1) The date of filing of an application for registration of a trade mark shall be the date on which documents containing particulars specified in section 22 are furnished to the Registrar.
(2) References in this Ordinance to the date of application for registration shall be to the date of filing of the application.
24. Co-ownership of trade mark.- (1) Where the relations between two or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except-
(a) on behalf of both or all of them; or
(b) in relation to goods or services or both with which all of them are connected in the course of trade,
the persons may jointly apply for its registration under section 22.
(2) Where a trade mark is registered in the name of two or more persons jointly, each of them shall be entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark.
(3) The following provisions shall apply where two or more persons are co-proprietors of a registered trade mark, by virtue of sub-section (2) or otherwise.
(4) Subject to any agreement to the contrary, each co-proprietor shall be entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the others, any act which would otherwise amount to an infringement of the registered trade mark.
(5) One co-proprietor may not, without the consent of the other or others,
(i) grant a licence to the use of the registered trade mark; or
(ii) assign or charge his share in the registered trade mark.
(6) Infringement proceedings may be brought by any co-proprietor but he may not, without the leave of the Court, proceed with the action unless the other, or each one of the others, is either joined as a plaintiff or added as a defendant.
(7) A co-proprietor who is thus arraigned as a defendant shall not be made liable for any costs in the action unless he takes part in the proceedings.
(8) Nothing in sub-sections (6) and (7) shall affect the granting of interlocutory relief on the application of a single co-proprietor.
(9) Nothing in this section shall affect the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such.
25. Meaning of Convention application, and right to priority.- (1) A "Convention application" means an application duly made by a person for registration of a trade mark in one or more than one Convention country.
(2) If-
- a person has duly made a "Convention application"; and
- within six months from the date on which the Convention application or first of the Convention applications was made, that person or another person hereinafter referred to as the "successor in title" of whom that person is a predecessor in title applies to the Registrar in the prescribed manner for the registration of the same trade mark under this Ordinance in respect of some or all of the same goods or services or both in respect of which registration was sought in that Convention country or those Convention countries,
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that person or that person's successor in title may, when filing the application under this Ordinance, or within the prescribed period after filing the application under this Ordinance, but before the application is accepted, has a right to priority for the registration of the trade mark.
(3) If the application for registration under this Ordinance is made within the prescribed priority period mentioned in sub-section (2) -
- the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application; and
- the registrability of the trade mark shall not be affected by any use of the mark in Pakistan in the period between that date and the date of the application under this Ordinance.
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(4) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.
Explanation.- For the purposes of this sub-section, a "regular national filing" means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.
(5) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application of which the date of filing is the starting date of the period of priority, if at the time of the subsequent application-
- the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
- it has not yet served as a basis for claiming a right of priority.
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(6) The previous application referred to in sub-section (5), may not thereafter serve as a basis for
claiming a right of priority.
(7) The manner of claiming a right to priority on the basis of a Convention application shall be such as may be prescribed.
(8) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently.
(9) The reference in sub-section (2) to the applicants "successor in title" shall be construed
accordingly.
26. Application to provide temporary protection during exhibition.- (1) The applicant for registration of a trade mark who has exhibited goods bearing the mark or has rendered services under the trade mark at an official or officially recognized exhibition and who applies for registration of that trade mark, within six months from the day on which the goods bearing the trade mark or the services rendered under the trade mark were first exhibited in the exhibition, shall, on his request, be deemed to have applied for registration of the trade mark on that day.
(2) Evidence of the exhibition of goods bearing the trade mark or services rendered under the trade mark must be given by a certificate issued by the competent authorities of the exhibition, stating the date on which the trade mark was first used in connection with goods or services included in the exhibition.
(3) The provision of this section shall not extend any other priority rights to the applicant in respect of the same trade mark.
(4) The grant of temporary protection in respect of goods or services during exhibition shall be subject to such conditions as may be prescribed.
27. Examination of application.-(1) The Registrar shall, as soon as practicable, examine whether an application for registration of a trade mark satisfies the requirements prescribed under this Ordinance.
(2) For the purposes of sub-section (1), the Registrar shall carry out a search, to the extent as he considers necessary, of earlier trade marks.
(3) If it appears to the Registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representation or to amend the application.
(4) If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse to accept the application.
(5) If it appears to the Registrar that the requirements for registration are met, he shall accept the application absolutely or subject to such conditions or limitations, if any, as he may think fit.
(6) In the case of a refusal or conditional acceptance, the Registrar shall state in writing the grounds of his decision and the materials used by him in arriving thereat.
(7) If the tribunal is of opinion that it is fair and reasonable in all the circumstances of the case to do so, may at any time, whether before or after acceptance, correct any error in, or in connection with, the application or may permit the applicant to amend his application upon such terms as it may think fit:
Provided that no amendment or correction shall be permitted in the application which substantially affects the identity of the trade mark or extends the goods or services covered by the application:
Provided further that if the amendment or correction in the application is permitted after the application has been advertised, the amendment or correction shall also be published.
28. Publication, opposition proceedings and observations.- (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the Journal, and for all legal purposes, advertisement of the trade mark in the Journal shall constitute sufficient notice of acceptance of the trade mark:
Provided that the Registrar may cause an application to be advertised before acceptance where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do:
Provided further that where an application is advertised by reason of any special
circumstances under the above proviso, the Registrar shall simultaneously notify the exceptional
circumstances which led him so to do.
(2) Any person may, within two months from the date of the advertisement or re-advertisement of an application for registration or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the registration.
(3) The notice under sub-section (2), shall be given in writing in the prescribed manner, and
shall include a statement of the grounds of opposition.
(4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within one month from the receipt by the applicant of such copy of the notice of opposition, or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and, if he does not do so he shall be deemed to have abandoned his application.
(5) If the applicant sends the counter-statement referred to in sub-section (4), the Registrar shall serve in the prescribed manner a copy of the counter-statement on the opponent. If the opponent deems necessary, he may within one month from the receipt of such copy of the counter-statement, or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, send to the Registrar in the prescribed manner a rejoinder.
(6) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of the rejoinder to the applicant.
(7) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.
(8) The Registrar shall, unless the proceedings are discontinued or dismissed, after giving to the opponent and to the applicant an opportunity of being heard, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.
(9) If the Registrar is of opinion that it is fair and reasonable in all circumstances of the case to do so, he may, on request made in the prescribed manner, permit correction of any error in, or any amendment of, a notice of opposition, a counter-statement, or a rejoinder on such terms as he thinks just.
29. Grounds of opposition.- (1) The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Ordinance except the ground that the trade mark cannot be represented graphically.
(2) The registration of a trade mark may be opposed on the ground that the applicant does not intend-
- to use, or authorize the use of, the trade mark in Pakistan; or
- to assign the trade mark to a body corporate for use by the body corporate in Pakistan,
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in relation to goods, services or both specified in the application.
(3) The registration of a trade mark may be opposed on any of the following grounds that;
- the applicant is not the proprietor of the trade mark;
- the application, or a document filed in support of the application, was amended contrary to the provisions of this Ordinance;
- the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars; or
- the pre-acceptance advertisement of the application under exceptional circumstances is without sufficient cause or reason.
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(4) The registration of trade mark in respect of particular goods or services may be opposed on the grounds that-
- it is substantially identical with, or deceptively similar to, a well known trade mark, or a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and
- because of the reputation of that other trade mark, the use of the first-mentioned trade mark would cause dilution or would be likely to deceive or cause confusion.
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(5) The registration of a trade mark in respect of particular goods may be opposed on the ground that the trade mark contains or consists of a mark that is a geographical indication for goods originating in-
- a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
- a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originate
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(6) The provisions of clause (b) of sub-section (2) of section 17 shall remain in abeyance if the earlier trade mark application is under opposition.
30. Circumstances in which opposition may proceed in the name of a person other than the person who filed the notice of opposition.- If-
- after a person has given a notice of opposition, the right or interest on which the person relies while giving the notice of opposition becomes vested in another person; and
- the other person-
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- notifies the Registrar in the prescribed manner that the right or interest is vested in him; and
- does not withdraw the opposition,
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the opposition may proceed as if the notice of opposition had been given in that other person's name.
31. Withdrawal of application.-(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
(2) In case the application has been advertised, the withdrawal or restriction under
sub-section (1) shall also be published.
32. Definition of divisional application.- (1) A divisional application means an other application by a person who has already made an application under section 22 for registration of a trade mark in respect of certain goods, services or both and made, in accordance with this section for -
(a) the registration of a part only of the trade mark in respect of any or all those goods, services or both; or
- the registration of the trade mark in respect of some only of the goods, services or both in respect of which registration is sought under the application made under section 22.
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(2) A divisional application for registration of a trade mark or a part of a trade mark may be made only if the application under section 22 for registration of the trade mark is pending.
(3) A divisional application shall proceed as an application made under section 22:
Provided that a divisional application shall be taken to have been filed on the day on which the application under section 22 was filed.
33. Registration.-(1) Where an application has been accepted and-
- no notice of opposition has been given within the period referred to in sub-section (2) of section 28; or
- all opposition proceedings have been withdrawn or decided in favour of the applicant,
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the Registrar shall, within such period as may be prescribed, register the trade mark, unless it appears to him having regard to matters coming to his notice since he accepted the application that it was accepted in error.
(2) A trade mark shall not be registered unless any fee prescribed for the registration is paid within the prescribed period. If the fee is not paid within the prescribed period, the application shall be deemed to have been withdrawn.
(3) A trade mark when registered shall be registered as of the date of filing of the application for registration and that date shall be deemed for the purposes of this Ordinance to be the date of registration.
(4) On the registration of a trade mark the Registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate in the prescribed form of registration, sealed with the seal of the Trade Marks Registry.
(5) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
34. Duration and renewal of registration.- (1 ) A trade mark shall be registered for a period of ten years from the date of registration.
(2) The registration may be renewed under section 35 for a further period of ten years.
35. Renewal of registration.-(1) The registration of a trade mark may be renewed at the request of the proprietor subject to payment of such renewal fee as may be prescribed.
(2) The Registrar shall inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed as may be prescribed.
(3) A request for renewal shall be made, along with the renewal fee, before the expiry of the registration, as may be prescribed, failing which the request may be made and the renewal fee paid within such further period of not less than six months as may be prescribed in which case an additional renewal fee shall be paid within that period.
(4) Renewal shall take effect from the expiry of the previous registration.
(5) Except at the time of first renewal, the Registrar may require that request for renewal be accompanied with evidence of use of the trade mark in Pakistan.
(6) If the registration is not renewed in accordance with the provisions of this section, the Registrar shall remove the trade mark from the Register:
Provided that the Registrar may restore the registration of a trade mark which has been removed from the Register, subject to such conditions, if any, as may be prescribed.
(7) The renewal or restoration of the registration of a trade mark shall be published in the Journal.
36. Effect of removal from Register for failure to pay fee for renewal.- Where a trade mark has been removed from the Register, under this Ordinance, for failure to pay the fee for renewal, it shall nevertheless, for the purposes of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the Register, unless the tribunal is satisfied either-
- that there has been no bona fide use of the trade mark which has been removed during the two years immediately preceding its removal; or
- that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
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37. Alteration of registered trade mark.- (1) Subject to sub-section (2), a registered trade mark shall not be altered in the Register, during the period of registration or on renewal.
(2) The Registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor's name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark.
(3) In case any alteration is made under sub-section (2), the Registrar shall publish such alteration and the objections by any person claiming to be affected by it, in such manner as may be prescribed.
38. Surrender of registered trade mark.- (1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.
(2) The Federal Government may by rules to published in the official gazette, provide-
- as to manner and effect of a surrender, and
- for protecting the interests of other persons having a right in the registered trade mark.
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