- THE REVISED TRADE MARKS RULES, 1963
- THE REVISED TRADE MARKS RULES, 1963
- PART-1
- CHAMPTER-I
- CHAMPTER-III
- CERTIFICATES
- INSPECTION OF DOUMENTS BY THE PUBLIC
- APPLICATIONS TO HIGH COURT
- SPECIAL PROVISIONS FOR CERTIFICATION TRADE MARKS
- CHAPTER-II.-RULES UNDER SUB-SECTION (3) SECTION 64
- CHAPTER-III.-ADVISORY COMMITTEE
- REGISTRATION OF TRADE MARKS AGENTS
- FORM TM-1
- FORM TM-7
- FORM TM-8
- FORM TM-10
- The date of assignment was the _______________ day of__________ 19___
- Certificate of Registration as a trade mark agent
- THE REVISED TRADE MARKS RULES, 1963
1940: Act-V STATUTORY RULES AND ORDERS 1
(Under section 84,-Revised Trade Marks Rules)
S.R.O.699(K) 63, dated the 10th September, 1963.-In exercise of the powers conferred by section 84 of the Trade Marks Act, 1940 (V of 1940), the Government of Pakistan is pleased to publish the following Trade Marks Rules. They will come into effect immediately:-
Short title and commencement.-(1) These rules may be called the Revised Trade Marks Rules, 1963.
(2) They shall come into force at once. Definitions.- In these rules, unless there is anything repugnant in the subject or context,- “Act” means the Trade Marks Act, 1940; “Branch Registry” means a Branch of Trade Marks Registry established under rule 139; “Form” means a form set forth in either the Second or the Third Schedule to these rules; “Journal” means the Trade Mark Journal; “Section” means a section of the Act; “Specification” means the designation of goods in respect of which a trademark, or a registered user of a trademark, is registered or proposed to be registered. 1940: Act-V STATUTORY RULES AND ORDERS 2
(Under section 84,-Revised Trade Marks Rules)
Fees.-(1) The fees to be paid in respect of applications and registration and other matters under the Act shall be those specified in the First Schedule to these rules, hereinafter referred to as the prescribed fees.
(2)(a) Fees may be paid in cash at the Trade Marks Registry, or may be sent by money order or postal order or cheque, payable to the Registrar.
(b) Cheques not carrying the correct addition for commission, and other cheques on which the full value cannot be collected in cash within the time allowed for payment of the fee shall be accepted only at the discretion of the Registrar.
(c) Stamps shall not be received in payment of fees.
Forms.-The forms set forth in the Second and the Third Schedules to these rules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases. Size, etc. of documents.-(1) Subject to any other directions that may be given by the Registrar, all applications, notices, statements or other documents, except trademarks authorized or required by the Act or these rules to be made, left with or sent to the Trade Marks Registry or left with or sent to the Registrar or the [Federal Government] shall be written, typewritten, lithographed or printed in the English language in large and legible characters with deep permanent ink upon strong paper, and, except in the case of affidavits, on one side only, of a size of approximately 13 inches by 8 inches, and shall have on the left hand part thereof a margin of not less than one inch and a half.
(2) Duplicate documents including trademarks shall be filed at the Trade Marks Registry, if at any time required by the Registrar.
Signature of documents.-(1) A document purporting to be signed by a partnership shall be signed by at least one of the partners and a document purporting to be signed by a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate. A document purporting to be signed by any other association of persons shall be sign by the President, Chairman or Principal Secretary of the Association or by any other person who appears to the Registrar to be duly qualified. The capacity in which an individual signs a document on behalf of a partnership or a body corporate or other association of persons shall be stated below his signature. 1940: Act-V STATUTORY RULES AND ORDERS 3
(Under section 84,-Revised Trade Marks Rules)
(2) Signatures to any document if written in characters other than Roman, or if not clearly legible shall be accompanies by a transliteration in English and in block capitals.
Service of documents.- All applications, notices, statements, papers having representations affixed thereto, or other documents authorized or required by the Act or these rules to be made, left or sent, at or to the Trade Marks Registry or with or to the Registrar or the [Federal Government] or any other person may be sent through the post by a prepaid letter; any application or any document so sent shall be deemed to have been made, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post. Particulars of applicants and other persons.- (1) Names and addresses of applicants and other persons shall be given in full, together with their nationality and such particulars, if any, of caste or calling as are necessary for identification. In the case of a firm, the full name and nationality of every partner thereof shall be stated.
(2) The address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of trade or business of the person whose address is given.
(3) In the case of a body corporate or firm or an association the country of incorporation and the nature of registration, if any, as the case may be, shall be given.
Address for service.-(1) Every applicant or opponent in any proceeding under the Act or these rules, who does not reside or carry on business within Pakistan shall given an address for service in Pakistan and such address may be treated as the actual address of that persons for all purposes connected with the proceeding in question.
(2) Every person who is registered as a proprietor or registered user of a trademark or who is about to be registered as such may, if he so desires, give upon Form TM-50 an address for service in Pakistan for entry in the register, and such address entered in the register may be treated as the actual address of that person for all purposes connected with the trademarks. All applications on Form TM-50 under this rule shall be signed by the person about to be registered or the registered proprietor or registered user, as the case may be or by an agent expressly authorized by him for the purpose of ;such application.
1940: Act-V STATUTORY RULES AND ORDERS 4
(Under section 84,-Revised Trade Marks Rules)
(3) In any case in which no address for service is entered in the register, the Registrar may treat the trade or business address of the registered proprietor or registered user of a trademark as therein entered as his address for service or all purposes connected with the trademark.
(4) Any written communication addressed to a person as aforesaid at an address for service given by him or at an address treated by the Registrar as his address for service, shall be deemed to be properly addressed.
(5) Unless an address for service as required in sub-rule (1) is given the Registrar shall be under no obligation to send any notice that may be required by the Act or these rules, and no subsequent order or decision in the proceedings shall be called in question on the ground of any such non-service of notice.
Agency.- The authorization of an agent for the purpose of section 80 shall be executed on Form TM-48.
Classification of goods.- For the purposes of the registration of trademarks and of these rules, goods shall be classified in the manner specified in the Fourth Schedule to these rules.
Form of application.- An application to the Registrar for the registration of a trademark shall be signed by the applicant. For a trademark other than a defensive trademark, the application shall be made on Form TM-1, if in respect of non-textile goods. Application to be confined to one class.-(1) Every application for the registration of a trademark shall be in respect of goods in one class only of the Fourth Schedule to these rules.
(2) Separate applications.- Applications for the registration of the same trademark in different classes shall be treated a separate and distinct applications, and in all cases where a trademark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 75 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.
1940: Act-V STATUTORY RULES AND ORDERS 5
(Under section 84,-Revised Trade Marks Rules)
Statement of user in application.- An application to register a trademark shall contain a statement of the period during which, and the person by whom, it has been used in respect of the goods mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used. Representation of marks.- Every application for the registration of trademark, and where additional copies of the application are required, every such copy shall contain a representation of the mark in the space provided on the application form for that purpose. Where the representation exceeds such space in size, the representation shall be mounted upon lien, tracing cloth or such other material as the Registrar may consider suitable. Part of the mounting shall be affixed in the space aforesaid and the rest may be folded. Additional representations.- Every application for the registration of a trademark shall, except as hereinafter provided, be made in duplicate and shall be accompanied by six additional representations of the mark on the application and its duplicate and the additional representation shall correspond exactly with the another. The additional representations shall in all cases be noted with all such particulars as may from time to time be required by the Registrar. Such particulars shall, if required, be signed by the applicant. Representation to be durable.- All representations of trademarks must be of a durable nature and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approximately 13 inches by 8 inches, leaving a margin of not less than one inch and-a-half on the left hand part of the sheet. Specimens of the mark in exceptional cases.- Where a representation of a trademark cannot be given in the manner set forth in rule 18, a specimen or copy of the trademark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient. Series of trademarks.- Where an application is made for the registration of a series of trademarks under sub-section (3) of section 20 copies of representations of each trademark of the series shall accompany the application in the manner set forth in rules 16 and 17. 1940: Act-V STATUTORY RULES AND ORDERS 6
(Under section 84,-Revised Trade Marks Rules)
Transliteration.- Where a trademark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, and on each of the accompanying representations, a sufficient transliteration to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant. Translation.- Where a trademark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.
PROCEDURE ON RECEIPT ON RECEIPT OF APPLICATION FOR REGISTRATION OF A TRADEMARK
Acknowledgement of receipt of application.- Every application for the registration of a trademark in respect of any goods shall, on receipt, be acknowledged by the Registrar. Search .- Upon receipt of an application for the registration of a trademark in respect of any goods the Registrar shall cause a search to be made amongst mark in respect of any goods the Registrar shall cause a search to be made amongst the registered marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so. Objection to acceptance.- (1) If, on consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.
(2) Unless within [two months] from the date of the communication mentioned in sub-rule (1), the applicant alters his application according to the proposal aforesaid, or sends his observations to the Trade Marks Registry or applies for a hearing, the application shall be deemed to have been abandoned and no further reference to the applicant shall be necessary.
1940: Act-V STATUTORY RULES AND ORDERS 7
(Under section 84,-Revised Trade Marks Rules)
(3) An application which is treated as abandoned under sub-rule (2) or sub-section (3) of section 16 may be restored [within two months] to the file on sufficient cause being shown to the satisfaction of the Registrar and on an application to that effect being made in Form TM-56 accompanied by a statement of the case.
Decision of Registrar.-(1) The decision of the Registrar at a hearing under rule 24, or without a hearing if the applicant has duly communicated his observations, in writing, and has stated that the does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant intends to appeal from such decision he may within one month from the date of such communication apply on ;Form TM-15 to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.
(2) In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues a statement in writing under sub-rule (1).
(3) The date when such statement is sent shall be deemed to be the date of the Registrar’s decision for the purpose of appeal.
Application for registration and proceedings relating thereto.- An application for the registration of a defensive trademark under section 38 shall be made on Form TM-3 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by an affidavit made by the applicant. The applicant may send with this affidavit or subsequently such other evidence as he may desire to furnish, and the Registrar shall consider the whole of the evidence before deciding the application. In all other respects and where they are appropriate and it is not otherwise stated, these rules shall apply to such application as they apply to applications for the registration of ordinary trademark.
Manner of advertisement.- An application for the registration of trademark required or permitted to be advertised by sub-section (1) of section 15 shall be advertised in the Journal during such time and in such manner as the Registrar may direct. In the case of an application with which the Registrar proceeds only 1940: Act-V STATUTORY RULES AND ORDERS 8
(Under section 84,-Revised Trade Marks Rules)
after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trademark or of another applicant the words “By Consent” shall appear in the advertisement. If no representation of the trademark be included in the advertisement of the application, the Registrar shall mention in such advertisement the place or places where a specimen or representation of the trademark may be inspected.
Wood block or Electro-type.- For the purposes of advertisement in the Journal, the applicant may, [within two months] supply or be required to supply a printing block (or more than one, if necessary) of the trademark satisfactory to the Registrar, of such dimensions as may from time to time be approved or directed by the Registrar, or shall supply such information or other means of advertising the trademark as may be required by the Registrar, and the Registrar, if dissatisfied with the printing block supplied by the applicant or his agent, may require a fresh block before proceeding with the advertisement. Any printing block so sent to the Registrar shall be retained by the Trade Marks Registry. Advertisement of series.- Where an application relates to a series of trademarks differing from one another in respect of the particulars mentioned in sub-section (3) of section 11, the applicant may be required to supply a printing block (or more than one, if necessary) satisfactory to the Registrar of any or of each of the trademarks constituting the series, or the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in which the several trademarks differ from one another.
Notice of opposition.- The time within which a notice of opposition to the registration of a trademark may be given, shall be [two] months from the date of advertisement of the application for registration, in the Journal. Such notice shall be on Form TM-5. Particulars to be given in the notice.- The notice shall be given in duplicate, and shall include a statement of the grounds [fully supported by documents] upon which the opponent objects to the registration. If registration is opposed on the ground that the trademark in question resembles any marks already on the register, the registration numbers of such trademarks and the dates of the Journals in which they have been advertised shall be set out. 1940: Act-V STATUTORY RULES AND ORDERS 9
(Under section 84,-Revised Trade Marks Rules)
Counter-statement.- The counter-statement required by sub-section (3) of section 15 shall be sent in duplicate on Form TM-6 [fully supported by documents within one month] from the receipt by the applicant of the duplicate notice of opposition. The applicant shall also set out in the counter-statement what facts, if any, alleged in the notice of opposition, are admitted by him.
Rules 33 to 35 omitted ibid, item (6) (w.e.f. 01-07-1977)
THE REVISED TRADE MARKS RULES, 1963
THE REVISED TRADE MARKS RULES, 1963
PART-1
CHAMPTER-I
PRELIMINARY
CHAMPTER-II
CLASSIFICATION
APPLICATION FOR REGISTRATION
DEFENSIVE TRADEMARKS
ADVERTISEMENT OF APPLIATION
OPPOSITION TO REGISTRATION