ROYAL IPR SECURITY SERVICES (PVT) LTD________________The Security For Intellectual Property

39. Rights conferred by registration.- (1) A registered trade mark shall be a personal property.

(2) The proprietor of a registered trade mark shall have exclusive rights in the trade mark which are infringed by use of the trade mark in Pakistan without his consent.

(3) Without prejudice to the rights of the proprietor of a registered trade mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the trade mark is infringed.

(4) References in this Ordinance to the infringement of a registered trade mark shall be to any such infringement of the rights of the proprietor.

(5) The rights of the proprietor shall have effect from the date of registration:

Provided that no infringement proceedings shall begin before the date on which the trade mark is in fact registered.

(6) The rights conferred by registration of trade marks under this Ordinance shall extend to trade marks registered under the Trade Marks Act, 1940 (V of 1940).

40. Infringement of registered trade mark.- (1) A person shall infringe a registered trade mark if such person uses in the course of trade a mark which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if such person uses in the course of trade a mark where because-

(3) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark in relation to-

(4) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which-

is identical with or deceptively similar to the trade mark; and
is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(5) A person shall infringe a registered trade mark if the person uses such registered trade mark as his trade name or part of his trade name.

(6) A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without the consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark.

(7) A person who applies a registered trade mark to material intended to be used for labeling or packaging goods shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.

(8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a registered trade mark, unless he proves that -

having taken all reasonable precautions, he had no reasons to suspect the genuineness of the mark; and
on demand made by tribunal, he gave all the information in his power with respect to the persons from whom he obtained such goods; or
he had ,otherwise acted innocently.

41. Infringement of trade mark by breach of certain restrictions.- Subject to the provisions of section 42, if the proprietor of a registered trade mark or a licensee having power to do so, has caused to be displayed on goods the words "registered goods" in respect of which a trade mark is registered, or on their packaging, or on the container in which they are offered to the public, a notice prohibiting any of the following acts-

apply the trade mark to registered goods or using the trade mark in physical relation to them, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered;
altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods and used in physical relation to them;
if the trade mark has been applied to registered goods, or used in physical relation to them, together with other matter indicating that the proprietor or the licensee has dealt with the goods, removing or obliterating, totally or in part, any representation of the trade mark without totally removing or obliterating the other matters;
applying another trade mark to registered goods or using another trade mark in physical relation to them; or
if the trade mark has been applied to registered goods, or used in physical relation to them, using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the repute of the trade mark,

a person who does or authorizes someone to do any of the foregoing prohibiting acts shall be liable for infringement of the trade mark:

Provided that the trade mark shall not be infringed if the owner of the goods acquired them in good faith and without being aware of the notice of prohibition, or became the owner of the goods by virtue of a title derived from a person who has so acquired them.

42. When a trade mark is not infringed.- (1) A person shall not infringe a registered trade mark when-

(a) the person uses in good faith-

(i) the person's name or the name of the person's place of business, so long as such use does not result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right; or

(ii) the name of the predecessor in business of the person or the name of the predecessor's place of business;

(b) the person uses a mark in good faith to indicate-

(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(ii) the time of production of goods or of the rendering of services;

(c) the person uses the trade mark in good faith to indicate the intended purpose of goods, in particular as accessories or spare parts, or services; or
(d) the person uses the trade mark for the purposes of comparative advertising.

(2) If the right to the use of a trade mark given under section 39 by registration is subject to any conditions or limitations entered on the Register, such right shall not be deemed to be infringed by the use of any such trade mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in or in relation to services provided by, in any place, or in relation to goods or services to be exported to any market, or in any other circumstances, to which, having regard to any such limitations the registration does not extend.

(3) Where registration of a trade mark is subject to a disclaimer, a person shall not infringe the trade mark by using disclaimed part of the trade mark.

43. Registration to be prima facie evidence of validity.- In all legal proceedings relating to a trade mark registered under this Ordinance or under the Trade Marks Act, 1940 (V of 1940), the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.

44. Registration to be conclusive as to validity after five years.- In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall, after the expiration of five years from the date of its original registration, be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of sub-section (3) of section 14.

45. Saving for words used as name or description of an article or a substance.- (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word which the trade mark contains or of which it consists as the name or description of an article, substance or service:

Provided that if it is proved either-

(a) that there is a famous and established use of the said word as the name or description of the article, substance or service by a person or persons carrying on trade therein, not being use in relation to goods or services connected in the course of trade with the proprietor or a licensee of the trade mark or in the case of a certification trade mark in relation to goods or services certified by the proprietor; or

(b) that the article or substance has been manufactured under a patent in force at or granted after the commencement of this Ordinance, that a period of two years or more after the caser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance,

the provisions of sub-section (2) shall apply.

(2) Where the facts mentioned in clause (a) or (b) of the proviso to sub-section (1) are proved with respect to any words, then-

(a) for the purposes of any proceedings under section 96, if the trade mark consists solely of such words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, or of the service or of any services of the same description, as the case may be , shall be deemed to be an entry wrongly remaining on the Register; or

(b) for the purposes of any other legal proceedings relating to the trade mark-

if the trade mark consists solely of such words, all rights of the proprietor under this Ordinance or any other law for the time being in force to the use of the trade mark; or
if the trade mark contains such words and other matter, all such rights of the proprietor to the use of such words,

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CHAPTER- V- INFRINGEMENT PROCEEDINGS

46. Action for infringement.- (1) Save as otherwise provided in this Ordinance, an infringement of a registered trade mark shall be actionable by the proprietor of the trade mark.

(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trade mark as is available in respect of the infringement of any other property right.

(3) Nothing in this Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof.

47. Order for erasure of offending mark.- (1) Where a person is found to have infringed a registered trade mark, the Court may make an order requiring him-

to cause the offending trade mark to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control; or
to secure the destruction of the infringing goods, material or articles, if is not reasonably practicable for the offending trade mark to be erased, removed or obliterated.

(2) If an order under sub-section (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the mark, or for destruction, as the case may be.

48. Order for delivery up of infringing goods, material or articles.- (1) The proprietor of a registered trade mark may apply to the Court for an order for the delivery up to him, or such other person as the Court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business.

(2) An application shall not be made after the expiry of the period specified in section 50, and no order shall be made unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 51.

(3) A person to whom any infringing goods, material or articles are delivered in pursuance of an order under this section shall, if an order under section 51 has not been made, retain them pending the making of an order, or the decision not to make an order, under that section.

(4) Nothing in this section shall affect any other power of the Court.

49. Meaning of "infringing goods, material or articles".- (1) Subject to sub-section (2), goods shall be "infringing goods" in relation to a registered trade mark, if they or their packaging bear a mark identical or deceptively similar to that mark and-

(a) the application of the mark to the goods or their packaging was an infringement of the registered trade mark;

(b) the goods are proposed to be imported into Pakistan and the application of the mark in Pakistan to them or their packaging would be an infringement of the registered trade mark; or

(2) Nothing in sub-section (1) shall be construed as affecting the importation of goods which may be lawfully imported into Pakistan.

(3) Material shall be "infringing material" in relation to a registered trade mark, if it bears a mark identical or deceptively similar to that mark and either it is-

(a) used for labeling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark; or

(b) intended to be so used and such use would infringe the registered trade mark.

(4) "Infringing articles" in relation to a registered trade mark, means such articles which-

(a) are specifically designed or adapted for making copies of a mark identical or similar to that mark; and

(b) a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.

50. Period after which remedy of delivery be not available.- (1) An application for an order under section 48 shall not be made after the expiry of three years from,

(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging;

(b) in the case of infringing material, the date on which the trade mark was applied to the material; or

except as provided in sub-section (2).

(2) If during the whole or part of the period specified in sub-section (1), the proprietor of the registered trade mark-

(a) is under a disability; or

(b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the expiry of three years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

Explanation .-In this sub-section the expression "disability" shall have the same meaning as in the Limitation Act, 1908 (IX of 1908).

51. Order as to disposal of infringing goods, material or articles.- (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 48, an application may be made to the Court-

(a) for an order that they be destroyed or forfeited to such person as the Court may think fit; or

(b) for a decision that no such order should be made.

(2) In considering what order, if any should be made, the Court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the proprietor and any licensee and protect their interests.

(3) Where there are more persons than one interested in the goods, materials or articles, the Court shall make such order as it thinks just.

(4) If the Court decides that no order should be made under this section, then the person, in whose possession, custody or control the goods, material or articles were before being delivered shall be entitled to their return.

52. Remedy for groundless threats of infringement proceedings.- (1) Where a person threatens to bring an action against another person on the ground that the other person has infringed-

(a) a registered trade mark; or

(b) a trade mark alleged by the person to be registered,

any person aggrieved by the threat may bring proceedings for relief against the person making the threat.

(2) The relief may be applied for any of the following, namely:-

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; or

(3) The plaintiff shall be entitled to any relief specified in sub-section(2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute, or if done would constitute, an infringement of the registered trade mark concerned.

(4) If that is shown by the defendant, as provided under sub-section (3), the plaintiff shall be entitled to any relief specified in sub-section (2), if he shows that the registration of the trade marks is invalid or liable to be revoked in a relevant respect.

(5) The mere notification that a trade mark is registered, or that an application for registration has been made, shall not constitute a threat of proceedings for the purposes of this section.

(6) The provisions of this section shall not make a lawyer, advocate or attorney liable to an action for an act done in his professional capacity on behalf of a client.