Choose Language
China United States United Kingdom South Korea India Pakistan Indonesia Vietnam Canada Japan Argentina France Australia Singapore Egypt

B2B Marketplace | Sign In | Join Free


Pakistan Laws & Procedures for Licensing & Investing

Discuss importing regulations of Pakistan, including tariffs, prohibitions, licensing requirements, documentation, etc.

Pakistan Laws & Procedures for Licensing & Investing

Postby bridgat » Sun Nov 16, 2008 1:51 pm

Laws & Procedures for Licensing & Investing: Trade Mark Ordinance

Summary

The Government of Pakistan enacted the Trade Marks Ordinance on April 13, 2001, which provides for registration and better protection of trade marks and for the prevention of the use of fraudulent marks. The Ordinance sets forth the details of requirements for registration of trade marks, reasons for refusal of registration, grounds for opposition of registration, rights conferred by registration, what constitutes infringement of registered trade marks, assignment and transmission of trademarks, procedures to bar imports of infringing goods, revocation of trade mark registration, rights under the Paris Convention and offences and penalties. The 70_page ordinance replaces the Trade Marks Act 1940, which provided trade mark protection but did not meet some of the provisions of the WTO Agreement. This report summarizes only key provisions of the Ordinance.

Registration of Trade Marks

The federal government, through notification in the official gazette, shall appoint the Registrar of Trade Marks. The Registrar shall have the powers of a civil court in receiving evidence, administering oaths, enforcing attendance of witnesses, compelling discovery of documents, granting certificates of validity, awarding any party such compensation as the Registrar may consider reasonable and imposing fines. An appeal against a decision of the Registrar shall lie in the high court. The Trade Marks Registry (already established by the Trade Marks Act 1940) shall be used to carry out the purposes of this ordinance. The federal government shall also establish branch offices of the Trade Marks Registry at various places to facilitate the registration of trade marks. The Trade Mark Registry shall maintain records of registered trade marks in the register, with the names, addresses and descriptions of proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of licensees, disclaimers and other matters relating to registered trade marks. The Registrar shall manage and control this registry. The Registry shall be open to public inspection at the Trade Marks Registry. The entries in the Registry certified by the Registrar and sealed with the seal of the Trade Marks Registry can be used as evidence in all high courts and district courts of Pakistan.

According to the Ordinance, a trade mark may be registered for goods, services or both. The classification of goods and services shall be made according to the international classification of goods and services. The Registrar shall also publish the classification of goods and services in alphabetical order. The decision of the Registrar as to which class a good or service belongs shall be final.

Trade marks shall not be registered for the following reasons:

__ If they do not meet the Ordinance's definition of a trade mark,

__ If they are devoid of any distinctive character,

__ If they consist exclusively of marks or indications which may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services or other characteristics of goods and services,

__ If they consist exclusively of marks or indications that have become customary in current language or in established practices of trade,

__ If it consists exclusively of a shape that results from the nature of a good itself, a shape of a good that is necessary to obtain a technical result or a shape that gives substantial value to the good,

__ If it is likely to deceive or cause confusion among the minds of consumers,

__ If it is denied protection in the high courts or district courts, or

__ If it is likely to hurt the religious sentiments of any class, or contrary to any law in force or against morality.

The names of single chemical elements or single chemical compound or those chemicals declared by the who as international non_proprietary names shall not be registered as trade marks for chemical substances preparations. A trade mark may be limited wholly or in part to one or more specified colors.

A trade mark shall also not be registered if it is identical with an earlier trade mark and the good or service for which the trade mark is applied is identical with the good or service for which the earlier trade mark is registered. A trade mark shall not be registered where it is identical or similar to an earlier trademark and is to be registered for similar or identical goods, and there exists a likelihood of confusion on the part of the public. A trade mark shall also not be registered even for a good or service that is not similar to a good or service for which the earlier trade mark has been registered if this trade mark has a reputation in Pakistan and the later trade mark is likely to take unfair advantage of or be detrimental to the reputation of the earlier trade mark.

The Registrar may refer the matter to the high court or district court for a determination of proprietary rights where separate applications are made by different persons for registration of trade marks that are identical or resemble each other. If an applicant proves that there has been honest concurrent use of the trade mark for which registration is sought, the Registrar shall not refuse the registration unless other proprietors of that trade mark raise an objection.

A proprietor of a trade mark may apply for registration of the whole and the part as separate trade marks if that proprietor is entitled to exclusive use of any part separately. Trade marks may be registered as a series in one registration, including where a person is a proprietor of several trade marks for the same goods and services o goods and services that resemble each other but differ in statements and representations of number, quality or names of places, in feature of non_distinctive character that do not substantially affect the identity of trade mark, or in color or any other part of the trade mark.

The court may require a proprietor to disclaim the right to any part that is not separately registered as a trade mark in that proprietor's name, or any matter common to the trade or otherwise of non_distinctive character, as a condition of entering the trade mark into the Register. Such a disclaimer shall not affect any rights of the proprietor of the trade mark except for the rights for which a disclaimer was made.

Co_ownership of Trade Marks

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. A co_proprietor may not grant a license to the use of registered trade mark or assign or charge his share in the registered trade mark without the consent of the other co_proprietor(s). Infringement of trade mark proceedings may be brought up by any of the co_proprietors but that co_proprietor may not, without the leave of the high court or district court, proceed with the action unless any other proprietor is either joined as a plaintiff or added as a defendant.

Paris Convention Applications

The new ordinance incorporates throughout provisions bringing the Paris Convention procedures into Pakistan's trade mark law. In particular, the ordinance provides that a Paris Convention application (an application made by a person for registration of a trade mark in one or more than one convention countries) has a right to priority for the registration of a trade mark if it is made within six months from the date on which a convention application or the first convention application was made. Any filing in a convention country that is equivalent to a regular national filing (regular national filing is defined to mean a filing that is adequate to establish the date on which the application was filed in that country) under its domestic legislation or an international agreement shall be treated as giving rise to this priority.

The owner of a trade mark entitled to protection under the Paris Convention as the owner of a well_known trade mark shall be entitled to enjoin the use of the trade mark which is identical or deceptively similar to this trade mark in Pakistan. A trade mark that consists or contains the flag, state emblem or official mark or hallmark of a convention country shall not be registered without the authorization the competent authorities of that country. Emblems of the international organizations protected under the Paris Convention shall also not be registered without the authorization of the concerned international organizations.

Examination of Applications

If it appears to the Registrar that the requirements for registration are not met, the Registrar shall inform the applicant and give the applicant an opportunity to make representations or to amend the application. In the case of refusal or conditional acceptance, the Registrar shall state in writing the grounds for this decision. The Registrar shall publish the application for registration in the trade marks journal when an application for registration of trade mark has been accepted. The publication of the trade mark in the journal shall constitute sufficient notice of acceptance of the trade mark for all legal purposes.

Any person may give notice to the Registrar of opposition to the registration within two months from the date of publication or re_publication of an application for registration. The notice shall be given in writing and shall include the grounds for opposition. The Registrar shall serve this notice to the applicant and ask the applicant to submit a counter statement addressing the grounds for filing of the application for registration.

Grounds of Opposition

The registration of a trade mark may be opposed on the following grounds:

__ The applicant does not intend to use or authorize the use of trademark in Pakistan or assign the trade mark to a corporation for use in Pakistan,

__ The applicant is not the proprietor of the trade mark,

__ The application or document filed in support of the application was amended contrary to the provisions of the Ordinance,

__ The Registrar accepted the application on the basis of false evidence,

__ The trade mark is identical or deceptively similar to a well known trade mark, or

__ The trade mark contains or consists of a mark that is a geographical indication for goods originating in a country other than the country in which the relevant goods originated.

Duration and Renewal of Registration

A trade mark shall be registered for a period of ten years from the date of registration. The registration may be renewed for a further period of ten years. A request for renewal should be made, along with payment of the renewal fee, before the registration expires. Renewal shall take effect from the date of expiration of the original registration. The renewal or restoration of the registration of a trade mark shall be published in the Trade Marks Journal. A proprietor may surrender a registered trade mark for some or all goods for which it was registered.

Rights Conferred by Registration

A registered trade mark shall be the personal property of the proprietor. The proprietor shall have the right to obtain relief under the ordinance if the trade mark is infringed. Infringement proceeding shall, however, not begin before the date on which the trade mark is registered.

Infringement of Registered Trade Marks

A person shall infringe a registered trade mark under the following circumstances:

__ If that person uses, in the course of trade, a mark that is identical to the registered trade mark in relation to goods and services similar to goods and services for which the trade mark has been registered or where the mark used is deceptively similar to the registered trade mark in relation to goods or services identical or similar to goods and services for which the trade mark has been
registered,

__ If that person uses, in the course of trade, a mark that is identical or deceptively similar to a registered trade mark in relation to goods and services of the same description or are closely related goods or services for the trade mark has been registered,

__ If that person uses, in the course of trade, a mark that is identical or deceptively similar to a registered trade mark in relation to goods and services that are not similar, but where the registered trade mark is well known and the use of the mark takes unfair advantage of or is detrimental to the distinctive character of the mark,

__ If that person uses a registered trade mark as that person's trade name or as part of that person's trade name,

__ If that person uses a registered trade mark as that person's domain name (a domain name is defined as a mark which is a user_friendly substitute for an internet address), or

__ If the trade mark is applied to a good whose physical condition has been altered from the one originally offered to public or if any representation of the trade mark applied to registered goods has been altered, partially removed or obliterated.

A person who applies a registered trade mark to material to be used for labeling or packaging shall be treated as a party to the infringement of the trade mark. A person who sells or offers goods for sale or manufactures any goods bearing a mark that infringes a registered trade mark shall also be treated as a party to the infringement unless that person proves his or her innocence.

A trade mark shall not be infringed if a person uses a mark to indicate the kind, quality, quantity, intended purpose of use, value, geographical origin or some other characteristic of a good or service in good faith, or a person uses the trade mark for the purposes of comparative advertising. A trademark is also not infringed where a person uses a disclaimed part of a trade mark.

Where a trade mark has been infringed, the same type of injunction or monetary relief is available to the proprietor of a trade mark as available in the case of infringement of any other property right. A high court or a district court may order a person who has infringed a trade mark to remove, erase or obliterate the trade mark from infringing goods, material or articles in that person's possession or custody, or order that person to destroy the infringing goods, material or articles where it is not possible for the offending trade mark to be erased, removed or obliterated. The proprietor of a registered trade mark may also apply to the court to order the delivery of infringing goods, material or articles to the proprietor or to a person designated by the court for this purpose. The remedy of delivery is not available however, after the expiration of three years from the date on which the trade mark was applied to the goods or their packaging, to the material or, in the case of infringing articles, the date on which they were made (although this statute of limitations is tolled where the proprietor is under a disability or is prevented by fraud or concealment from discovering the relevant facts.) Where infringing goods, material or articles have been delivered pursuant to the court order, a proprietor may file an application to the court requesting that they be destroyed or forfeited to such person as the court may think fit. The court shall make the final decision in this regard.

In the case of groundless threats of infringement proceedings, a court may provide a relief to the concerned person in the form of a declaration that the threats are unjustified, an injunction against the continuance of threats or require the payment of damages for any loss the concerned person has sustained by these threats. The ordinance makes clear, however, that the mere notification that a trade mark is registered shall not constitute a threat of proceedings.

Importation of Infringing Goods

A proprietor of a registered trade mark may give a notice in writing to the Collector of Customs stating that he or she owns the registered trade mark, that the infringing goods, material or article bearing that trade mark are being imported into Pakistan, and that the are subject to the control of customs authorities. The notice should accompanied by an undertaking by the proprietor to indemnify the custom authorities and to compensate an importer, consignee or owner of the goods for any loss or damage resulting from the wrongful suspension or clearance of goods. The Collector of Customs may also require the applicant to provide a security sufficient to protect the importer, consignee or owner of these goods. The Collector of Customs will seize the goods bearing the infringing trade mark and give a notice of seizure in writing to the importer, consignee or owner. The collector will also send a notice to the applicant giving the full name and address of the importer, consignee or owner. The forfeited goods shall not be disposed of in such a manner that may facilitate re_exporting counterfeit trade mark goods, by removing the trade marks which have been affixed to the counterfeit trade mark goods or by local sale of such goods. The Collector of Customs may release the goods to their importer, consignee or owner if the court so decides.

Assignment and Transmission

A registered trade mark can be transmitted by assignment, testamentary disposition or operation of law in the same way as any other personal or movable property. An assignment or transmission of a registered trade mark may be partial, applying to some but not all of the goods and services for which the trade mark is registered or to the use of trade mark in a particular manner or particular locality. An assignment or transmission of a registered trade mark shall be entered in the Register. Unless an application ha been made for their registration, an assignment or transmission shall be ineffective for persons acquiring a conflicting interest in the registered trade mark a license to use the trade mark shall not be effective unless it is in writing and signed by or on behalf of the grantor. A licensee may grant a sub_license only where the license so provides.

Revocation of Registration

A trade mark registration may be revoked on the following grounds

__ The trade mark has not been put to use by the proprietor or by the authorized users for the goods and services for which it has been registered in Pakistan within the period of five years after the date of completion of the registration procedure,

__ The use of the trade mark has been suspended for an uninterrupted period of five years without any sound reason,

__ The trade mark has become a common name for the goods and service for which it has been registered due to the inactivity of the proprietor, or

__ The proprietor has used the trade mark in such way that it is liable to mislead the public, particularly about the nature, quality or geographical origin of goods and services.

Where the registration of a trade mark is revoked or declared invalid on the grounds that registration was secured in bad faith, the applicant shall be barred from applying for registration of a trade mark for the identical or similar product for two years from the date of revocation or invalidation.

Collective Marks, Certification Marks and Domain Names

The Trade Marks Ordinance also protects collective marks, certification marks and domain names, subject to specific provisions laid out in the first, second and third schedules, respectively, of the ordinance.

Offences and Penalties

Any person who applies a false trade description to a good or service, makes a false indication regarding a country in which a good or service was produced or uses a false name or address, tampers with , alters or effaces an indication of origin of goods shall be punished with imprisonment of a term from three months to two years, with a fine of not less than rs.50,000 (US$ 794), or both. Subsequent offences carry higher penalties. A person who makes or causes to be made false entries in the register shall be punished with imprisonment of a term from three months to two years, a fine of not less than rs.50,000 ($ 794), or both. Any person falsely representing a trade mark as registered shall be punished with imprisonment of a term from one to six months, a fine of not less than rs.20,000 ($317), or both. The high court or the district court may order that 50 percent of the fine imposed by it be paid as compensation to a party whose rights have be infringed.

International Arrangements

Without prejudice to the articles 3 and 4 of the agreement on Trade Related Aspects of Intellectual Property Rights, 1994, the federal government, through notification in the Official Gazette, may enter into reciprocal arrangements with other governments for carrying out the objectives of this ordinance.
bridgat
 
Posts: 1180
Joined: Thu Nov 13, 2008 12:51 am

Return to Pakistan

Who is online

Users browsing this forum: No registered users and 0 guests