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

1. General.- The provisions of this Ordinance shall apply to collective marks subject to the provisions contained in this Schedule.

2. Signs of which a collective mark may consist.- In relation to a collective mark the reference in clause (xlviii) of section 2 to distinguish goods or services of one undertaking form those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

3. Indication of geographical origin.- (1) Notwithstanding the provisions of clause (c) of sub-section (1) of section 14, a collective mark may be registered which consist of marks or indications which may serve, in trade, to distinguish the geographical origin of the goods or services.

(2) The proprietor of such a mark shall not be entitled to prohibit the use of the marks or indications in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.

4. Collective mark not to be misleading as to character or significance.- (1) A collective mark shall not be registered if the public is liable to be mislead as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a collective mark.

(2) The Registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark.

(3) Notwithstanding the provisions of sub-section (7) of section 27, an application may be amended so as to comply with any such requirement.

5. Regulations governing use of collective mark.- (1) An application for registration of a collective mark may be filed with the Registrar along with regulations governing the use of the mark.

(2) The regulations referred to in sub-para (1) shall specify the persons authorized to use the mark, the conditions of membership of the association and, where they exist, the conditions of the use of the mark, including any sanctions against misuse.

(3) Any further requirements with which the regulations referred to in sub-para (1) shall have to comply may be imposed as may be prescribed.

6. Approval of regulations by the Registrar.- (1) A collective mark shall not be registered unless the regulations governing the use of the mark-

(a) comply with the requirements of para (2) of para 5 and any further requirements as may be prescribed; and

(b) are not contrary to public policy or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the publication for registration of a collective mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee failing which the application shall be deemed to have been withdrawn.

7. Procedure of acceptance or refusal of application.- (1) The Registrar shall consider whether the requirements specified in sub-para (1) of para 6 are duly met.

(2) If it appears to the Registrar that such requirements 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 file amended regulations.

(3) If the applicant fails to satisfy the Registrar that such requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar shall refuse the application.

(4) If it appears to the Registrar that such requirements, and the other requirements for registration, are met he shall accept the application and shall proceed in accordance with section 28.

8. Regulations to be published.- (1) The regulations governing the use of a collective mark shall be published and notice of opposition may be given, and observation may be made, relating to the matters specified in sub-para (1) of para 6.

(2) The provisions of sub-para (1) shall be in addition to any other grounds on which the application may be opposed or observations made.

9. Regulations to be open to inspection.- The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the Register.

10. Amendment of regulations.- (1) An amendment of the regulations governing the use of a registered collective mark shall not be effective unless and until the amended regulations are filed with the Registrar and accepted by him.

(2) Before accepting any amended regulations the Registrar may, in any case where it appears to him expedient to do so, cause them to be published.

(3) If the Registrar does so, a notice of opposition may be given, and observations may be made, relating to the matters specified in sub-para (1) of para 6.

11. Infringement of rights of authorized user.- The following provisions shall apply in relation to an authorized user of a registered collective mark as in relation to a licensee of a trade mark, namely:-

(a) sub-section (7) of section 40;

(b) sub-section (2) of section 51; and

12. Infringement of a registered collective mark.- (1) The provisions of this para shall have effect as regards the rights of an authorized user in relation to infringement of a registered collective mark.

(2) An authorized user shall be entitled, subject to any agreement to the contrary between him and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter which affect his interests.

(4) Where infringement proceedings are brought under this para, the authorized user 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.

(5) The provisions of para (4) shall not affect the granting of interlocutory relief on an application by an authorised user alone.

(6) A proprietor who is added as a defendant as provided in sub-para (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(7) In infringement proceedings brought by the proprietor of a registered collective mark, any loss suffered or likely to be suffered by authorised user 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 such users.

13. Additional grounds for revocation of registration.- Apart from the grounds of revocation provided for in section 73, the registration of a collective mark may be revoked on any of the following grounds, namely:-

that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in sub-para (1) of para 4
that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or
that an amendment of the regulations governing the use of mark has been made so that such regulations-

no longer comply with the requirement of sub-para (2) of para 5, and any further conditions as may prescribed; or
are contrary to public policy or to accepted principles of morality.

14. Additional grounds for invalidity of registration.- Apart from the grounds of invalidity provided for in section 80, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of sub-para (1) of para 4, or sub-para (1) of para 6.

1. General.- The provisions of this Ordinance shall apply to certification marks subject to the provisions contained in this Schedule.

2. Signs of which certification mark may consist.- In relation to a certification mark the reference in clause (xlviii) of section 2 to distinguish goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not.

3. Indication of geographical origin.- (1) Notwithstanding the provisions of clause (c) of sub-section (1) of section 14, a certification mark may be registered which consist of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.

(2) The proprietor of such a mark shall not be entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.

4. Nature of proprietor's business.- A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.

5. Certification mark not to be misleading as to character or significance.- (1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a certification mark.

(2) The Registrar may, accordingly, require that a mark in respect of which application has been made for registration include some indication that it is a certification mark.

(3) Notwithstanding the provisions of sub-section (7) of section 27, an application may be amended so as to comply with any such requirement.

6. Regulations governing use of certification mark.- (1) An application for registration of a certification mark may be filed with the Registrar along with regulations governing the use of the mark.

(2) The regulations referred to in sub-para (1) shall indicate who shall be authorized to use the certification mark, the characteristics to be certified by the mark, how the certifying body shall test those characteristics and supervise the use of the mark, the fee, if any, to be paid in connection with the operation of the mark and the procedures for resolving disputes.

(3) Any further requirements with which the regulations referred to in sub-para (1) shall have to comply may be imposed as may be prescribed.

7. Approval of regulations by the Registrar.- (1) A certification mark shall not be registered unless-

the regulations governing the use of the mark-

comply with the requirements of sub-para (2) of para 6, and any further requirements, as may be prescribed; and
are not contrary to public policy or to accepted principles of morality; and

the applicant is competent to certify the goods or services for which the mark is to be registered.

(2) Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee, failing which the application shall be deemed to be withdrawn.

8. Procedure for acceptance or refusal of application.- (1) The Registrar shall consider whether the requirements specified in sub-para (1) of para 7 are met.

(4) If it appears to the Registrar that such requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 28.

9. Regulations to be published.- The regulations governing the use of a registered certification mark shall be published and notice of opposition may be given, and observations may be made, relating to the matters specified in sub-para (1) of para 7, in addition to any other grounds on which the application may be opposed or observations made.

10. Regulations to be open to inspection.- The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the Register.

11. Amendment of regulations.- (1) An amendment of the regulations governing the use of a registered certification mark shall not be effective unless and until the amended regulations are filed with the Registrar and accepted by him.

(2) Before accepting any amended regulations the Registrar may, in any case where it appears to him expedient to do so, cause them to be published.

(3) If he does so, a notice of opposition may be given, and observations may be made, relating to the matters specified in sub-para (1) of para 7.

12. Consent to assignment of registered certification mark.- The assignment or other transmission of a registered certification mark shall not be effective without the consent of the Registrar.

13. Infringement of rights of authorised user.- The following provisions shall apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark, namely:-

14. Court to take into account loss suffered by authorised users.- In infringement proceedings brought by the proprietor of the registered certification mark any loss suffered or likely to be suffered by authorised user 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 such users.

15. Additional grounds for revocation of registration.- Apart from the grounds of revocation provided for in section 73, the registration of a certification mark may be revoked on any of the following grounds, namely:-

(a) that the proprietor has begun to carry on such a business as is specified in para 4;

(b) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in sub-para (1) of para 5;

(c) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark;

(d) that an amendment of the regulations has been made so that the regulations-

(i) no longer comply with the requirements of sub-para (2) of para 6, and any further conditions as may be prescribed; or

(ii) are contrary to public policy or to accepted principles of morality; or

(e) that the proprietor is no longer competent to certify the goods or services for which the mark is registered.

16. Additional grounds for invalidity of registration.- Apart from the grounds of invalidity provided for in section 80, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of para 4, sub-para (1) of para 5 or sub-para (1) of para 7.

1. General.- The provisions of this Ordinance shall apply to domain names subject to the provisions contained in this Schedule.

2. Requirements for registration.-(1) A domain name if used as a source identifier may be registered as a trade mark in respect of relevant goods or services.

(2) The applicant for registration of domain name shall show that he offers goods or services via Internet using the domain name. Such evidence shall be in the form of specimen showing use of the domain name as a source identifier.

Explanation. - For the purposes of this para, use of a domain name shall be taken as source identifier if it is used on Internet to distinguish goods or services of one undertaking from the other provided that use of a domain name as a mere directional reference, similar to use of a telephone number or business address shall not be taken as use of the domain name as a source identifier.

(3) Provisions may be made by rules for further identification and classification of computer related services associated with Internet.

3. Indication of geographical origin.- (1) Notwithstanding the provisions of clause (c) of sub-section (1) of section 14, a domain name may be registered which consist of marks or indications which may serve, in trade, to distinguish the geographical origin of the goods or services.

4. Domain name not to be misleading as to character or significance.- (1) A domain name shall not be registered if the public is liable to be mislead as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a domain name.

(2) The Registrar may, accordingly, require that a mark in respect of which application has been made for registration include some indication that it is a domain name.

(3) Notwithstanding the provisions of sub-section (7) of section 27, an application may be amended so as to comply with any such requirement.

5. Procedure for acceptance, opposition and registration.- The provisions of this Ordinance for acceptance, registration and opposition as they apply to trade marks shall also apply to the domain names.

6. Term of registration and renewal.- Notwithstanding the provisions of sections 32 and 33, a domain name shall be registered for a period of five years from the date of registration and may be renewed for further periods of like term, as long as, the domain name is in actual use on Internet.

7. Provisions of section 73 not to apply to domain names.- The provisions of section 73 shall not apply to domain names.

8. Rules.- Provisions may be made by rules for further identification and classification of computer related services associated with Internet.

(a) "existing registered mark" means a trade mark or certification mark registered under the Trade Marks Act, 1940 (V of 1940), immediately before the commencement of this Ordinance;

(b) "1940 Act" means the Trade Marks Act, 1940 (V of 1940) ; and

(c) "old law" means the 1940 Act and any law for the time being in force, applying to existing registered marks immediately before the commencement of this Ordinance.

(2) For the purposes of this Schedule,-

(a) an application shall be treated as pending on the commencement of this Ordinance if it was made but not finally determined before such commencement; and

(b) the date on which it was made shall be taken to be the date of filing under the 1940 Act.
2. Existing registered trade mark.- (1) The existing registered marks shall be transferred, on the commencement of this Ordinance, to the Register, and shall have effect, subject to the provisions of this Schedule, as if registered under this Ordinance.

(2) The existing registered marks registered as a series under sub-section (3) of section 11of the 1940 Act shall be similarly registered in the new Register.

(3) Provisions may be made by rules for putting such entries in the same form as is required for entries under this Ordinance.

(4) In any other case notes indicating that the existing registered marks are associated with other marks shall cease to have effect on the commencement of this Ordinance.

3. Disclaimer, limitations and conditions.- A disclaimer, limitation or condition entered on the register kept under the 1940 Act in relation to an existing registered mark immediately before the commencement of this Ordinance shall be transferred to the Register and have effect as if entered on the Register in pursuance of section 15.

4. Effect of infringement.- (1) The provisions of sections 39 to 42 shall apply in relation to an existing registered mark as from the commencement of this Ordinance and the provisions of section 46 shall apply in relation to infringement of an existing registered mark committed after the commencement of this Ordinance, subject to sub-para (3).

(2) The old law shall continue to apply in relation to infringement committed before the commencement of this Ordinance.

(a) an existing registered mark; or

(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after the commencement of this Ordinance any use which did not amount to infringement of the existing registered mark under the old law.

5. Infringing goods, material and articles.- The provisions of section 48 shall apply to infringing goods, material or articles made before or after the commencement of this Ordinance.

6. Rights and remedies of licensee or authorised user.- (1) The provisions of section 75 shall apply to license granted before the commencement of this Ordinance, but only in relation to any infringement committed after such commencement.

(2) The provisions of para 14 of the Second Schedule shall apply only in relation to infringement committed after the commencement of this Ordinance.

7. Co-ownership of registered trade mark.- The provisions of section 24 shall apply as from the commencement of this Ordinance to an existing registered trade mark of which two or more persons were, immediately before such commencement, registered as joint proprietor:

Provided that so long as the relations between the joint proprietors remain such as are described in sub-section (2) of section 17 of the 1940 Act, there shall be taken to be an agreement to exclude the operation of sub-sections (2) and (3) of section 24.

8. Assignment of registered trade mark.- (1) The provisions of section 67 shall apply to transactions and events occurring after the commencement of this Ordinance in relation to an existing registered trade mark, and the old law shall continue to apply in relation to transactions and events occurring before such commencement.

(2) The existing entries under section 35 of the 1940 Act shall be transferred on the commencement of this Ordinance to the Register, and shall have effect as if made under section 70.

(3) An application for registration under section 35 of the 1940 Act, which is pending before the Registrar on the commencement of this Ordinance shall be treated as an application for registration under section 70 and shall proceed accordingly:

Provided that the Registrar may require the applicant to amend his application so as to conform with the requirements of this Ordinance.

(4) An application for registration under section 35 of the 1940 Act, which has been determined by the Registrar but not finally determined before the commencement of this Ordinance shall be dealt with under the old law, and the provisions of sub-para (2) shall apply in relation to any resulting entry in the Register.

(5) Whether before the commencement of this Ordinance, a person has become entitled by assignment or transmission to an existing registered trade mark but has not registered his title, any application for registration after such commencement shall be made under section 70.

(6) In cases to which the provisions of sub-para (3) or (5) applies, the provisions of sub-section (2) of section 35 of the 1940 Act shall continue to apply, and the provisions of sub-section (3) of section 68 shall not apply, as regards the consequences of failing to register.

9. Licensing of registered trade mark.- (1) The provisions of section 73 and sub-section (2) of section 74 shall apply only in relation to licensees granted after the commencement of this Ordinance, and the old law shall continue to apply in relation to licenses granted to authorized users before the commencement of this Ordinance.

(2) The existing entries under section 39 of the 1940 Act shall be transferred on the commencement of this Ordinance to the Register, and shall have effect as if made under section 70.

(3) Provisions may be made by rules for putting entries referred to in sub-para (2) in the same form as is requires for entries made under this Ordinance.

(4) An application for registration as a registered user which is pending before the Registrar on the commencement of this Ordinance shall be treated as an application for registration of a licence under sub-section (1) of section 70 and shall proceed accordingly:

Provided that the Registrar may require the applicant to amend his application so as to conform with the requirements of this Ordinance.

(5) An application for registration as a registered user which has been determined by the Registrar but not finally determined before the commencement of this Ordinance shall be dealt with under the old law, and the provisions of sub-para (2) shall apply in relation to any resulting entry in the Register.

(6) Any proceedings pending on the commencement of this Ordinance under section 42 of the 1940 Act shall be dealt with under the old law and any necessary alteration shall be made to the Register.

10. Pending applications for registration.- (1) An application for registration of a mark under the 1940 Act which is advertised under sub-section (1) of section 15, or the proviso to that sub-section of the 1940 Act, or an order has been made for its advertisement before the commencement of this Ordinance shall be dealt with under the old law, subject as provided in the following paras, and if registered, the mark shall be treated for the purpose of this Schedule as an existing registered trade mark.

(2) The provisions of section 12 of the 1940 Act shall be disregarded in dealing, after the commencement of this Ordinance, with an application for registration.

11. Conversion of pending application.- (1) In the case of pending application for registration which has not been advertised under sub-section (1) of section 15, or the proviso to that sub-section of the 1940 Act, neither an order has been made for such advertisement before the commencement of this Ordinance, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Ordinance.

(2) The notice under sub-para (1) shall be in the prescribed form, be accompanied by the appropriate fee and be given no later than twelve months after the commencement of this Ordinance.

(3) The notice under sub-para (1), duly given shall be irrevocable and have the effect that the application shall be treated as if made immediately after the commencement of this Ordinance.

12. Trade marks registered accordingly to old classification.- The Registrar may exercise his powers to secure that any existing registered trade marks which do not conform to the system of classification prescribed under section 12 are brought in conformity with that system.

13. Claim to priority from overseas application.- The provisions of section 25 shall apply to an application for registration under this Ordinance made after the commencement of this Ordinance notwithstanding that the Convention application was made before such commencement.

14. Duration and renewal of registration .-(1) The provisions of sub-section (1) of section 32 shall apply in relation to the registration of a mark in pursuance of an application made after the commencement of this Ordinance, and the old law shall apply in any other case.

(2) The provisions of sub-section (2) of section 32 and section 33 shall apply where the renewal falls due on or after the commencement of this Ordinance, and the old law shall continue to apply in any other case.

(3) In either case referred to in sub-para (2) or (3), it shall be immaterial when the fee is paid.

15. Pending application for alteration of registered trade mark.- An application under section 48 of the 1940 Act, which is pending on the commencement of this Ordinance shall be dealt with under the old law and any necessary alteration shall be made in the Register.

16. Revocation for non-use.- (1) An application under section 37 of the 1940 Act, which is pending on the commencement of this Ordinance shall be dealt with under the old law and any necessary alteration shall be made to the Register.

(2) An application made under clause (a) or (b) of sub-section (1) of section 73 may be made in relation to an existing registered mark at any time after the commencement of this Ordinance:

Provided that no such application for the revocation of the registration of an existing registered mark under section 38 of the 1940 Act may be made until more than five years after the commencement of this Ordinance.

17. Application for rectification.- (1) An application under section 46 or 47 of 1940 Act, which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration shall be made to the Register.

(2) For the purpose of proceedings under section 80 as it applies in relation to an existing registered mark, the provisions of this Ordinance shall be deemed to have been in force at all material times:

Provided that no objection to the validity of the registration of an existing registered mark may be taken on the grounds specified in sub-section (3) of section 17 in conflict with earlier mark registered for different goods.

18. Regulations as to use of certification mark.- (1) Regulations governing the use of an existing registered certification mark deposited at the Trade Marks Registry under the 1940 Act shall be treated after the commencement of this Ordinance as if filed under para 6 of the Second Schedule.

(2) Any request for amendment of the regulations which was pending on the commencement of this Ordinance shall be dealt with under the old law.