53.Infringing goods, material or articles may be treated as prohibited.- (1) The proprietor of the registered trade mark may give notice in writing to the Collector of Customs that-
- he is the proprietor of the registered trade mark;
- at a time and place specified in the notice, goods which, in relation to that registered trade mark are infringing goods, material or articles, or bear false indications as to their source or the identity of their manufacturer are expected to arrive in Pakistan from outside Pakistan and that they are subject to the control of the customs authorities under the Customs Act, 1969 (IV of 1969); and
- he requests the Collector of Customs to treat such goods as prohibited goods.
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54. Notice for intervention by customs authorities.- When any notice to the Collector of Customs is made under section 53, it shall be accompanied by an undertaking by the person sending the notice to indemnify the customs authorities concerned and to compensate any importer, consignee or owner of the goods for loss or damage resulting from the wrongful suspension of clearance of goods.
55. Furnishing of security or equivalent assurance to customs authority.- The Collector of Customs may require an applicant to provide a security or equivalent assurance sufficient to protect the importer, consignee or owner of the goods but such security or equivalent assurance shall not be such as to unreasonably deter recourse to these procedures.
56. Collector of Customs may seize goods bearing infringing trade mark.- If goods to which section 53 applies-
| (a) bear on them a trade mark which, in the opinion of the Collector of Customs, is identical with, or deceptively similar to the registered trade mark; and
(b) are goods in respect of which the trade mark is registered, |
the Collector of Customs shall seize the goods unless he is satisfied that there are no reasonable grounds of believing that the trade mark shall be infringed by the importation of the goods and the seized goods shall be kept in a secure place as directed by the Collector of Customs.
57. Notice of seizure.- The Collector of Customs shall, as soon as practicable-
- give, either personally or by urgent post, to the importer, consignee or owner of the goods a notice of seizure in writing identifying the goods and stating that they have been seized under section 56; and
- (b) give to the applicant a notice in writing-
| (i) identifying the goods and stating that they have been seized under section 56;
(ii) giving the full name and address of the importer, consignee or owner of the goods and any information that the Collector of Customs has and believes, on reasonable grounds, to be likely to help the applicant to identify the importer or the owner of the goods; and
(iii) stating that the goods shall be released to the importer, consignee or owner of the goods unless the applicant brings an action for infringement of the registered trade mark in respect of goods before a Court having jurisdiction in the matter and gives the Collector of Customs notice in writing of the action, within the period of ten working days after the applicant has been given the notice, or if the Collector of Customs extends the period under sub-section (1) of section 60, within such extended period. |
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58. Forfeiture of goods.- If the importer, consignee or owner of any seized goods, at any time before the applicant starts an action for infringement of the trade mark in respect of goods, by notice in writing to the Collector of Customs, gives consent to the goods being forfeited by the Collector of Customs, the goods shall be so forfeited by the Collector of Customs.
59. Release of goods.- (1) The Collector of Customs shall release the seized goods to their designated importer, consignee or owner if, within the specified period, the applicant has not-
| (a) brought an action for infringement of the registered trade mark in respect of the goods; and
(b) given to the Collector of Customs notice in writing of the action. |
(2) The Collector of Customs shall also release the seized goods to their designated importer, consignee or owner if-
| (a) before the end of the prescribed period, the applicant, by notice in writing to the Collector of Customs, consented to the release of the goods; and
(b) at that time,
| (i) the applicant has not brought an action for infringement of the registered trade mark in respect of the goods; or
(ii) the action brought by the applicant has been withdrawn. |
|
(3) The Collector of Customs may release the seized goods to their designated importer, consignee or owner before the end of the specified period if,
| (a) having regard to information that has come to his knowledge after the goods were seized, he is satisfied that there are no reasonable grounds of believing that the registered trade mark has been infringed by the importation of the goods; and
(b) the applicant has not so far brought an action for infringement of the registered trade mark in respect of the goods, or has not informed him of such an action. |
60. Action for infringement against importation of infringing goods.- (1) The applicant may bring an action for infringement of a registered trade mark in respect of the seized goods and give a notice to the Collector of Customs, subject to the provisions of clause (b), within ten working days specified in the notice given to the applicant in respect of the goods, under section 57 or if-
| (i) the applicant has, before the expiry of the specified period, applied in writing to the Collector of Customs for a extension of the specified period; and
(ii) the Collector of Customs, being satisfied that in the circumstances of the case it is fair and reasonable to do so, has extended the specified period for a number of working days not exceeding ten days, |
within that period so extended by the Collector of Customs. (2) The Court hearing the action-
| (a) may, on the application of any person, allow that person to be joined as a defendant in the case; and
(b) shall allow the Collector of Customs, or his duly authorised officer, to appear and be heard. |
(3) Subject to sub-section (4), in addition to any relief that the Court may grant apart from the provisions of this section, the Court may-
- at any time, if it thinks it just, order that the seized goods be released to their designated owner subject to such conditions that the Court considers fit to impose; or
- order that the seized goods be forfeited.
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(4) The Court shall not make any order which may facilitate-
- re-exporting of the counterfeit trade mark goods;
- removing of the trade marks which have been affixed to the counterfeit trade mark goods without authorization; and
- local sale of such goods.
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(5) If the Court decides that the registered trade mark was not infringed by the importation of the goods and the designated importer, consignee or owner of the goods, satisfies the Court that he has suffered losses or damage because the goods were seized, the Court may order the applicant to pay the defendant compensation, in the amount determined by the Court, for any part of the loss or damage that is attributable to any period beginning on or after the day on which the action was brought.
(6) If, after three weeks from the day on which the action was brought, there is not in force at any time an order of the Court preventing the goods from being released, the Collector of Customs shall release the goods to their designated importer, consignee or owner.
(7) If the Court orders that the goods be released, the Collector of Customs shall, subject to section 63, comply with the order.
61. Action for infringement by licensee in relation to any seized goods.- If an exclusive licensee of a registered trade mark is an applicant in relation to any seized goods, the licensee may commence an action for the infringement of the registered trade mark in respect of the goods within the required period without first ascertaining whether the proprietor is willing to bring the action.
62. Disposal of forfeited goods.- (1) Subject to sub-section (2), any goods forfeited under the provisions of this Chapter shall be disposed of by the Collector of Customs in the manner as if the goods were forfeited under the Customs Act, 1969 (IV of 1969).
(2) The Collector of Customs shall not dispose of goods in a manner which may facilitate-
- re-exporting of the counterfeit trade mark goods;
- removing of the trade marks which have been affixed to the counterfeit trade mark goods without authorization; and
- local sale of such goods.
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63. Power of the Collector of Customs to retain control of goods.- Notwithstanding anything contained in this Chapter, the Collector of Customs shall not-
| (a) release, or dispose of, any goods; or
(b) take any action in relation to the goods to give effect to any order of a Court under section 60, |
and Collector of Customs shall apply to Court to request that the goods are required and he may be allowed to retain control of the goods under any law for the time being in force.
64. Insufficient security.- If security given under section 55 by the applicant who gave notice in respect of a registered trade mark under section 53 or section 61 is not sufficient to meet the expenses incurred by the Federal Government as a result of the action taken by the Collector of Customs under this Chapter, because of the notice, the amount of the difference in the expenses and the amount of security-
| (a) shall be a debt due by the applicant to the Federal Government; and
(b) shall be recovered by the Federal Government under section 202 of the Customs Act, 1969 (IV of 1969). |
65. The Federal Government not be liable to loss, etc., suffered because of seizure.- The Federal Government shall not be liable to any loss, damage or delays suffered by a person-
| (a) because the Collector of Customs seized or failed to seize goods under this Chapter; or
(b) because of release of any seized goods. |
66. Power of the Collector of Customs to make regulations.- The Collector of Customs may make regulations prescribing the form in which notices shall be made and requiring the person making the notices to furnish evidence as to the ownership and to comply with such other conditions as may be specified which may include the payment of a fee to cover the administrative costs.
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CHAPTER IX.- USE OF TRADE MARKS AND LICENSEES
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
authorized 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-
- in relation to some but not all of the goods or services for which the trade mark is registered; or
- in relation to use of the trade mark in a particular manner or a particular locality.
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(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-
- refuses to do so; or
- fails to do so within two months after being called upon,
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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-
- the terms of the license; and
- any pecuniary remedy already awarded or available to either of them in respect of the infringement;
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| (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) of 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
