Loi sur les marques de commerce de 1940, Pakistan

GOVERNMENT OF PAKISTAN

MINISTRY OF LAW AND PARLIAMENTARY AFFAIRS

(Law Division)

THE

TRADE MARKS ACT, 1940

(V of 1940)

________

(As modified up to the 11^th March, 1979)

THE TRADE MARKS ACT, 1940

CONTENTS

CHAPTER 1

PRELIMNARY

SECTIONS

1.

Short title, extent and commencement.

2.

Definitions.

3.

Application of other laws not barred.

CHAPTER II

The Register and Conditions for Registration

4.

The Register of trade marks.

4.A (Omitted)

5. Registration to be in respect of particular goods.

6. Distinctiveness requisite for registration.

7. Limitation as to colour.

8. Prohibition of registration of certain matter.

9. Use of names of chemical elements barred.

10. Prohibition of registration of identical or similar trade mark

11. Registration of parts of trade marks and of trade marks as a series.

12. Associated trade marks.

13. Registration subject to disclaimer.

CHAPTER III

Procedure for, and Duration of, Registration

14.

Application for registration.

15 Opposition to registration.

16 Registration.

17. Jointly owned trade marks.

18.

Duration and renewal of registration.

19 Effect of removal from register for failure to pay fee for renewal.

CHAPTER IV

EFFECT OF REGISTRATION.

20

No action for infringement of unregistered trade mark.

21.

Right conferred by Registration.

(i)

Trade Marks [1940: Act

SECTIONS

22.

No infringement in certain circumstances.

23.

Registration to be prima facie evidence of validity.

24.

Registration to be conclusive as to validity after seven years.

25.

Saving for vested rights.

26.

Saving for use of name, address, or description of goods.

27.

Words used as name or description of an article or substance.

______________

CHAPTER V

Assignment and Transmission

28.

Power of registered proprietor to assign and give receipts.

29.

Assignability of registered trade marks.

30.

Assignability of unregistered trade marks.

31.

Restrictions on assignment or transmission where multiple exclusive rights would be created.

32.

Restrictions on assignment or transmission when exclusive rights would be created in different

Parts of Pakistan.

33.

Conditions for assignment otherwise than in connection with the goodwill of a business.

34.

Conditions for assignment and transmission of certification trade marks and associated trade marks.

35.

Registration of assignments and transmissions.

_____________

CHAPTER VI

Use of Trade Marks and Registered Users

36.

Proposed use of trade mark by company to be formed.

37.

Removal from register and imposition of limitations on ground of non-use.

38.

Defensive registration of well-known trade marks.

39.

Registered users.

40.

Power of registrar to take proceedings against infringement.

41.

Application for registration as registered user.

42.

Power to Registrar to vary or cancel registration as registered user.

43.

Registered user not to have right of assignment or transmission.

44.

Use of one of associated or substantially identical trade marks equivalent to use of another.

45.

Use of trade mark for export trade, and use when form of trade connection changes.

(ii)

[1940: Act V] Trade Marks

SECTIONS

CHAPTER VII

RECTIFICATION AND CORRECTION OF THE REGISTER.

46.

Power to cancel or vary registration and to rectify the register.

47.

Correction of register.

48.

Alteration of registered trade mark.

49.

Adaptation of entries in register to amended or substituted classification of goods.

________

CHAPTER VIII

CERTIFICATION TRADE MARKS

50.

Provisions of this Act applicable to certification trade marks.

51.

Certification trade mark not to be registered in name of person trading in goods certified thereby.

52.

Determination whether a mark is a certification trade mark.

53.

Application for registration.

54.

Consideration of application for registration by Federal Government.

55.

Opposition to Registration.

56.

Deposit of regulations governing the use of a certification trade mark.

57.

Right conferred by registration.

58.

No infringement in certain circumstances.

59.

Cancellation or varying of registration.

60.

Costs not to be awarded in certain cases.

61.

Decisions of Federal Government to be final.

__________

CHAPTER IX

SPECIAL PROVISIONS FOR TEXTILE GOODS.

62.

Textile Goods.

63.

(Omitted.)

63A (Omitted.)

64.

Restrictions on registration of textile goods.

65.

Refused Textile Marks List.

66.

Advisory Committees.

________

CHAPTER X

OFFENCES AND RESTRAINT OF USE OF ROYAL

ARMS AND STATE EMBLEMS

67. Penalty for falsification of entries in register.

(iii)

Trade Marks [1940: Act V

SECTIONS

68

Penalty for falsely representing a trade mark as registered.

69

Restraint of use of Royal Arms and State Emblems.

________

CHAPTER XI

MISCELLANEOUS

70.

Procedure before the registrar.

71.

Procedure before Federal Government.

72.

Procedure in certain cases of option to apply to a High Court or the Register.

73.

Suits for infringement to be instituted before District Court.

74.

Appearance of registrar in proceedings involving rectification of register.

74A Costs of Registrar in proceedings before High Court.

75.

Evidence of entries in register and things done by Registrar.

76.

Appeals.

77.

Power to High Courts to make rules.

78.

Certificate of validity.

79.

Trade usage, etc., to be taken into consideration.

80.

Agents.

81.

Fees.

82.

Government to be bound.

82A.Power to make reciprocal arrangements with acceding or a non-Acceding State.

83.

Power to make reciprocal arrangements with other Governments.

84.

Power of Federal Government to make rules.

85.

Power to Federal Government to make provision for applications for registration before the coming into force of the remaining provision of Act.

86.

(Omitted.)

________

(iv)

1940: Act V] Trade Marks 1

(Chapter I.- Preliminary)

¹Act No. V of 1940

(11^th March,1940)

An Act to provide for the registration and more effective protection of Trade Marks.

Whereas it is expedient to provide for the registration and more effective protection of trade marks:

It is hereby enacted as follows:-

CHAPTER I

PRELIMINARY

1.-(1) this Act may be called the Trade Marks Act, 1940.

(2) This section and section 85 shall come into force at once; the remaining provision of the Act shall come into force on such date as the Federal Government may, by notification in the official Gazette, appoint in this behalf.

2-(1) In this Act, unless there is anything repugnant in the subject or context,-

(a) “associated trade marks” means trade marks deemed to be, or required to be registered as, associated trade marks under this Act;

(b) “certification trade mark” means a mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registerable as such under the provisions of Chapter VIII in respect of those goods in the name, as proprietor of the certification trade mark, of that person ;

2 Trade Marks [1940: Act V

(Chapter I.- Preliminary)

¹( C ) “District court “ means the Court of the District Judge and includes the court of an Additional District Judge or an Additional Judge or a Joint Judge;

2 * * * * * * *

(e)

“limitations”(with its grammatical variations) means any limitation of the exclusive right to the use of an trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold or otherwise traded in within Pakistan or as to use in relation to goods to be exported to any market outside Pakistan;

(f)

“mark” includes a device, brand, heading, label, any combination thereof;

(g)

“permitted use: means the use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered use, being use such as to comply with any conditions or restrictions to which his registration is subject;

(h)

“prescribed” means prescribed by rules made, in relation to proceedings before High Court , and in other cases, by the Federal Government.

(i)

“registered ” (with its grammatical variations) means registered under this Act;

(j)

“registered trade mark” means a trade mark which is actually on the register;

(k)

“registered user” means a person who is for the time being registered as such under section 41 ;

(n( �/span>

“trade mark” means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person;

(m)

“ transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment;

________________________________________________________________________

1940: ACT V] Trade Marks 3

(Chapter I. Preliminary. Chapter 11.____ The Register and

Conditions for Registration).

(n)

“tribunal” means the Registrar or, as the case may be , the Court before which the proceeding concerned is pending.

(2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references herein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in any other relation whatsoever to such goods.

3-

The provisions of this Act shall be in addition to , and not in derogation of the provisions of any other law for the time being in force.

________

CHAPTER II

THE REGISTER AND CONDITIONS FOR REGISTRATION

4- (1) For the purposes of this Act there shall be established at Karachi a Trade Marks Registry, and a record called the Register of Trade Marks (in this Act referred to as the register) shall kept thereat wherein shall be entered all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be prescribed, but there shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the registrar.

(2) Subject to the superintendence and direction of the Federal Government the register shall kept under the control and management of an officer appointed by the Federal Government , who shall be called the registrar of Trade Marks and is in this Act referred to as the Registrar.

(2A) The Federal Government shall appoint s(one) or more deputy Registrars of Trade Marks to discharge under the superintendence and direction of the Registrar such functions of the Registrar under this Act as the may from time to time authorise

4 Trade Marks [1940: ACT V

(Chapter II. .____ The Register and Conditions for Registration)

them to discharge; and any reference in this Act to the Registrar shall include a reference to any Deputy Registrar when so discharging any such function.

(2B) The ¹ [Federal Government] may be notification in the official Gazette authorize the Registrar to delegate any particular functions of the Registrar to officers other than the Deputy Registrars of Trade Marks. ]

(3)

The register shall at all convenient times be open to the inspection of the public, subject to such conditions and restrictions as may be prescribed.

² [(4) There shall be a seal for the Trade Mark Registry.]

³4A.[Branch of Trade Marks Registry.] Omitted by F.A.O., 1975, Art. 2 and Sch.

5-(1) A trade mark may be registered only in respect of particular goods or classes of goods.

(2)

Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

6- (1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:-

6(a) the name of a company, individual, or firm, represented in a special or particular

manner;

6(b) the signature of the applicant for registration or some predecessor in his business;

6(c) one or more invented words;

6(d) One or more words having no direct reference to the character or quality of the

goods, and not being according to its ordinary signification, a geographical name

or surname or the name of a sect, caste or tribe in ⁴[Pakistan];

6(e) any other distinctive mark, provided that a name, signature, or any word, other

than such as fall within the descriptions in the above clauses, shall not be

registrable except upon evidence of its distinctiveness.

1940: Act V] Trade Marks 5

(Chapter II..___ The Register and Conditions for Registration)

(2) For the purposes of this section, the expression “distinctive” means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, eitner generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal, the tribunal may have regard to the extent to which-

(a) the trade mark is inherently so adapted to distinguish, and

(b)

by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish :

Provided that in the case of a trade mark which has been continuously (either by the applicant for registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to the same goods as those in relation to which registration is applied for, during a period from a data prior to the 25^th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.

7.-(1) A trade mark may be limited wholly or in part to one or more specified colours, and or more specified colours, and any such limitation shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.

So far as a trade mark is registered without limitation of colour it shall be deemed to be registered to be registered for all colours.

8. No trade mark not part of a trade mark is shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-

(a) by reason of its being likely to deceive or to cause confusion or otherwise,

be disentitled to protection in a Court of justice ; or

(b)

be likely to hurt the religious susceptibilities of any class of ¹ [the citizens of

Pakistan] ; or

(c)

be contrary to any law for the time being in force or to morality.

9.

No word which is the commonly used and accepted name of any single chemical

Element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark

6 Trade Marks 1940: Act V]

(Chapter II. .____ The Register and Conditions for Registration)

in respect of a chemical substance or preparation, and any such registration shall, notwithstanding anything in section 24, be deemed for the purposes of section 46 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require :

Provided that this section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

10- (1) Save as provided in sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and ¹ [either already on the register or already registered in any ² [Acceding State or a non-Acceding State] to which section 82A for the time being applies] in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.

(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the registrar may think fit to impose.

(3) Where separate applications are made by different persons to be registered

as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court.

11.-(1) Where are the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the apart as separate trade marks.

(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark.

(3) Where a person claiming to be the proprietor of several trade marks in respect of the same goods or description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of-

(a) statements of the good sin relation to which they are respectively used or proposed to be used; or

[1940: Act v] Trade Marks 7

(Chapter II. – The Register and Conditions for Registration)

8 Trade Marks [1940: Act V

(Chapter 111. – Procedure for, and duration of, Registration)

CHAPTER 111

PROCEDURE FOR, AND DURATION OF, REGISTRATION

14.-(1) any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous .of registering it shall apply in writing to the Registrar in the prescribed manner, and, subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such. amendments, modifications, conditions or limitations, if any, as he may think fit.

(2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the material used by him in arriving thereat.

(3) The tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, .or may permit the applicant to amend his application upon such terms as it may think fit.

15.-(1) When an application far registration of a trade mark has been accepted, whether absolutely or subject to conditions .or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and ) limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:

Provided that the Registrar may cause an application to be advertised before acceptance if it re1ates to -a. trade mark to which clause (e) of sub-section (1) of section 6 applies, or in any other case where it appears to him that it is expedient by-reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do.

(2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice in writing in the prescribed manner to the Registrar of opposition to the registrations.

(3) The Registrar shall serve in the prescribed manner a copy .of the notice on the applicant, and within on the prescribed time the applicant shall send to the Registrar, in the prescribed manner,

a counter-statement of the grounds an which he. relies-for his application, and, if he does not do so, he shall be deemed to have abandoned his application.

(4) If the applicant sends such counter-statement, the-Registrar shall serve in the prescribed manner a copy thereof on the persons giving notice of opposition, and shall, after haring the parties; if so required, and considering-the evidence; decide whether, and subject to; what conditions .or limitations, if any, registration is to .be permitted.

(5) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice,

1940: Act V] Trade Marks 9

(chapter III.-Procedure for, and duration of, Registration)

or an appellant against an order of the Registrar under section 14 or this section. neither resides nor carries on business in ^l[Pakistan], the tribunal may require him to give security for costs of the proceedings before it, and in default of such security being duly given may treat the opposition or application or appeal. as the case may be, as abandoned.

16.-(1) When an application for registration of a trade mark baa been accepted and either has not been opposed and the time for notice of opposition has

expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, or unless the ²(Federal Government] otherwise directs, register the said trade mark, and the trade mark, when registered, shall registered as of the date of the making of the said application, and that date shall, subject to any directions made under section 83 applicable to such trade mark, be deemed for the purposes of this Act to be the date of registration.

(2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the ³[Trade Marks Registry].

(3)

Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

17.-(1) Save as provided in sub-section (2), nothing in this Act' shall authorise the-registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

(2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except

(a) on behalf of both or all of them, or

(b) in relation to an article with which both or all of them

are connected in the course of trade,

Those-persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in the persons as if those rights had been vested in a single person.

18.-(I) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within

10 Trade Marks [1940: Act V

(Chapter IlI.-Procedure for. and duration of, Registration..

Chapter IV.-Effect of Registration.)

the prescribed period, renew the registration of the trade mark for a period of fifteen years from the date of expiration of the original registration or of the last renewal of registration, as the case maybe (which date is in this section referred to as "the expiration of the last registration").

(3) At the prescribed time before the-expiration of the last registration of a trade mark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of ex-piration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register, subject to such conditions (if any) as to its restoration to the register as may be prescribed.

19. Where a trade mark has been removed from the register ¹[under this Act, or from the register of trade mark in any ²[Acceding State or a non-Acceding State] to which section 82A for the time being applies] for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either

(a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

___ _______

CHAPTER IV

EFFECT OF REGISTRATION

20.-(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such predecessor by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off good. as the goods of another person or the remedies in respect thereof.

1940: Act V] Trade Marks 11

(Chapter IV-Effect of Registration)

1(21-(1)) Subject to the provisions of sections 22, 25 and trade mark in respect of any goods shall 2 ** give to that person the exclusive ferried by right to the use of the trade mark in relation to those goods and, registration. without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-

(a)

as being used as a trade mark : or

(b)

to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.

3((2) A person registered in any 4( Acceding state of a non-Acceding State) to which section 82A for the time being applies, as proprietor of a trade mark shall have the same rights in respect thereof as are conferred by this section on a person registered under this Act as proprietor of a trade mark.)

22-(1) The right to the use of a trade mark given under section

21 by registration shall be subject to any conditions or limitations

entered on the register, and shall not be deemed to be infringed by the use of any such mark as a foresaid in any mode, in relation to goods to

be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations the registration does not extend.

(2) The said right to the use of a trade mark shall not be deemed to be infringed by the use of any such mark as aforesaid by any person-

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary

12 Trade Marks [1940: Act V

(Chapter IV-Effect of Registration)

in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.

(3) The use of a registered trade mark, being one of 1)two) or more trade marks registered under this Act or in any 2(Acceding State or a non-Acceding State) to which section 82A for the time-being applies) which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to bean infringement of the right so given to the use of any other of those trade marks.

Registration 23. In all legal proceeding relating to a 3(trade mark registered

to be prima under this Act or in any 2(Acceding State or a non-Acceding that a

fa ie evidence person Is registered as proprietor thereof shall be prima facie evidence

of validity. of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.

24.

In all legal proceedings relating to a registered trade mark, the

Registration original registration of the trade mark shall after the expiration of to be conclusive seven ears from the date of such original registration be taken to be

as to validity valid in all respects unless such registration was obtained by fraud, or after seven year trade mark offends against the provisions of section 8.

25. Nothing in this Act shall entitle the proprietor or a registered user Saving for of a registered trade mark to interfere with or restrain the use by any vested person of a trade mark identical with or nearly resembling it in relation rights. to goods in relation to which that person or a predecessor in title of his

has continuously used that trade mark from a date prior-

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his, or

(b)to the registration of the first-a mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his,

Whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trade in respect of those goods under sub-section (2) of section 10.

Saving for 26. No registration of a trade mark shall interfere with any bona fide use of name use by a person of his own name or that of his place of business, or of address, or the name, or of the name of the place of business, of any of his description predecessors in business, or the use by any person of any bona fide

of goods description of the character or quality of his goods,

1940: Act V) Trade marks 13

(Chapter IV.-Effect of Registration)

not being a description that would be likely to be taken as importing ay such reference as is mentioned in clause (b) section 21 or in clause (b) of section 57.

Words used 27.-(1) The registration of a trade mark shall not be deemed

as name or to have become invalid by reason only of any use after the date description of the registration of any words which the trade mark contains or of

of an article which it consists as the name of description of an article or substance.

Or substance Provided that, if it is proved either-

(a)

that there is a well-known and established use of the said

words as the name or description of the article or substance by

a person or persons carrying on a trade therein, not being use in

relation to goods connected in the course of trade with the

proprietor or a registered user of the trade mark or (in the case

of a certification trade mark) goods certified by the proprietor; or

(b)

that the article or substance has been manufactured under a

patent in force at or granted after the commencement of this

section, that a period of two years or more after the cesser of the

patent has elapsed, and that the said words are the only practicable

name or description of the article or substance,-

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

(2) Where the facts mentioned in clause (a) or clause (b) of the

proviso to sub-section (1) are proved with respect to any words, then-

(a) for the purposes of any proceedings under section 46-

(i) it the trade mark consists solely of such words, the registration

of the trade mark, so far as regards registration in respect of the

article or substance in question or of any goods of the same

description, shall be deemed to be an entry wrongly remaining on

the register;

(ii) if the trade mark contains such words and other matter, the

tribunal, in deciding whether the trade mark shall remain on the

register, so far as regards registration in respect of the article or

substance in question and of any goods of the same description,

may, in case of a decision in favour of its remaining on the register,

require as a condition thereof that the proprietor shall disclaim any

right to the exclusive use in relation to that that article or substance

and any goods of the same description, of such words, provided that

no disclaimer shall affect any rights of the proprietor of a trade mark

except such as arise out of the registration of the trade mark in respect

of which the disclaimer is made;

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

the trade mark-

(i)

if the trade mark consists solely of such words.

all rights of the proprietor under this act or any

14 Trade Marks [1940: Act V

(Chapter IV-Effect of Registration Chapter V-,

Assignment and Transmission)

Other law to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description, or

(ii) if the trade mark contains such words and other matter,

all such rights of the proprietor to the exclusive use of such words, in such relation as aforesaid,

Shall be deemed to have ceased on the date at which the use mentioned in clause (a) of the proviso to sub-section (1) first became well-known and established, or at the expiration of the period of two years mentioned in clause (b) of the said proviso. ______

CHAPTER V ASSIGNMENT AND TRANSMISSION

Power of 28. The person for the time being entered in the register as proprietor

Registered of a trade mark shall, subject to the provisions of this Act and to any

Proprietor to rights appearing from the register to be vested in any other person,

Assign and have power to assign the trade mark, and to give effectual receipts for

And give receipts for any consideration for such assignment.

receipts.

Assign- 29. Notwithstanding anything in any, other law to the contrary,

Ability of a registered trade mark shall, subject to the provisions of this chapter,

Registered be assignable and transmissible whether in connection with the

Trade marks goodwill of a business or not, and in respect either of all of the goods in respect of which it is registered or of some only of those goods.

Assign ability 30. An unregistered trade mark shall be assignable and

Unregistered transmissible whether in connection with the goodwill of a business

Trade marks. Or no.

Provided that, except in connection with the goodwill of a business, assignment or transmission shall be permissible only if-

(a)

at the time of assignment or transmission of the un-registered trade mark it is used in the same business as a registered trade mark, and

(b)

the registered trade mark is assigned or transmitted at the same time and to the same person as the un-registered trade mark, and

(c)

the unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.

Restrictions 31-(1) Notwithstanding anything in sections 29 and 30, a trade mark

on assignment shall not be assignable or transmissible in a case in which as a result

or transmission of the assignment or transmission there would in the circumstances

where multiple subsist, whether under this Act or any other law, exclusive rights in

exclusive relights where multi- more than one of the persons concerned to the use, in

would be created relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks,

1940: Act V] Trade Marks 15

(Chapter V-Assignment and Transmission)

marks, if, having regard to the similarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion.

Provided that an assignment or transmission shall not be deemed to be invalid under this subs-section if the exclusive right subsisting as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within 1(Pakistan) (otherwise than for export there from), or in relation to goods to be exported to the same market outside 1(Pakistan).

(2) The proprietor of a registered trade mark who proposes to

assign it many submit to the registrar in the prescribed manner a statement of case setting out the circumstances and the registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub-

section (1) and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be Conclusive as to the validity or in validity or in validity under sub-section (1) of the assignment in so

far as such validity or invalidity depends, upon the facts set out in the case, but, as regards and certificate in favour of validity, only if a application for the registration under section 35 of the title of the person becoming entitled is made within six months from the date of on which the certificate is issued.

Restrictions 32.notwithstanding anything in section 29 and 30, a trade mark on assignment shall not be assignable transmission there would in the circumstances t or transmission subsist whether under this act or any other law, an exclusive right in when exclu- one of the persons concerned to the use if the trade mark limited to use save rights in relation to goods to be sold, or otherwise trade in, in any place in

Would be 1(Pakistan) and an exclusive right in another of these persons to the created in use of a trade mark nearly resembling the first-mentioned trade ma or different parts of an identical trade mark in relation to goods to be sold, or otherwise of Pakistan traded in, in any other place in 1(Pakistan).

Provided that in any such case, one application in the prescribed manner by the proprietary of a trade mark who proposes mark has been transmitted to him or to a predecessor in title of his since the commencement of this act, registrar of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the said

rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 31 if application

16 Trade Marks [1940: Act V

(Chapter V0 Assignment and Transmission,

vi-Use of Trade Marks and Registered Users)

for the registration under section 35 of the title of the person becoming entitled is made with in six months from the date on which the approval is given or, in the case of a transmission, was made before that dated.

Conditions 33. Where an assignment in respect of any goods of a trade mark

For assignment which is at the time of the assignment used in a business in those good

Wise than s, is made after the commencement of this Act otherwise than in

In connection with connection with the goodwill of that business, the assignment shall not

The goodwill take effect unless the assignee, not later than the expiration of six

A business. Months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, applies to the registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the registrar may direct.

Conditions 34-(1) A certification trade mark shall not be assignable or

For assignment transmissible otherwise than with the consent of the 1(Federal

And transmission Government), for which application shall be made in writing in the

of certification prescribed manner through the Registrar.

trade marks and (2) Associated trade marks shall be assignable and transmissible only

associated trade as a whole and not separately.

mark.

Registration 35-(1) Where a person becomes entitled by assignment or transmission

of assignments to a registered trade mark, he shall apply in the prescribed manner to

and transm- the registrar to register his title, and the Registrar shall on receipt of

issions the application and on proof of tile to his satisfaction, register him as

the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause

particulars of the assignment to transmission to be entered on the register.

(2) Except for the purposes of and appeal against a decision of the registrar under sub-section (1) or of an application under section 46, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1) shall not be admitted in evidence before any tribunal in proof of the title to a trade mark unless the tribunal other wise directs.

______

CHAPTER VI

USE OF TRADE MARKS AND REGISTERED USERS

Proposed 36(1)- No application for the registration of a trade mark in

use of trade respect of any goods shall be refused, nor shall permission for such mark by registration be withheld, on the ground only that it appears that the company to applicant does not use or propose to use the trade mark, if the registrar

be formed. is satisfied that a company is about to be formed and registered under the companies act, 1913 and that VII of 1913 company with a view to the use thereof in relation to those goods by the company.

1940: Act V] Trade Marks 17

(Chapter Vi-Use of Trade Marks and Registered Users)

(2) The tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.

(3) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods is registered in the name of an applicant who relies on intention to assign 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, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.

Removal from 37.-(1) Subject to the provisions of section 38,a

register and registered trade mark may be taken off the register in respect of any of imposition the goods in respect of which it is registered on application in the

of limitations prescribed manner by any person aggrieved to a High Court of to the on ground Registrar, on the ground either-

of non-use (a) that the trade mark was registered without any bona that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being;

Provided that, except where the applicant has been permitted under sub-section (2) of section 10 to register and identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered-

(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or

18 Trade Marks [1940: Act V

(Chapter VI.-Use of Trade marks and Registered Users)

otherwise traded in, in a particular place in 1[Pakistan] (otherwise than for .export from 1[Pakistan]), or in relation to goods to be exported to a particular market outside 1[Pakistan] ; and

(b) a person has been permitted under sub-section (2) of section 10 to register an identical or nearly resembling trade mark in respect of these goods under a registration extending: to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark,

on application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use.

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (I) or of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.

Defensive (38-(1) Where a trade mark consisting of any invented word bas registration become so well-known as respects any goods in relation to which it is of well- registered and has been used, that the use thereof in relation to other

known goods would be likely to be taken as indicating a connection in the trade marks course of trade between those goods and a person entitled to use the

trade mark in relation to the first-mentioned goods. then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and not-withstanding anything in section 37, the trade mark may on application in the prescribed manner by such proprietor be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.

(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply f or the registration thereof in respect of any goods otherwise. than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.

(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks.

1940: Act V] Trade Marks 19

(Chapter Vl. .- Use of Trade Marks and Registered Users)

(4) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of sub-section (I) are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is registered as a defensive trade mark on

the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in sub-section (J),

(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise thon as a defensive trade mark,

(6) Except as otherwise expressly provided in this section, the provisions of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.

39.- (I) A person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.

(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than' the proprietor, for any purpose for which such use is material under this Act or any other law.

40.-(1) Subject to any agreement subsisting between the parties, registered user of a trade mark shall be deemed to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and if the proprietor refuses or neglects to do so within three months after being so-called upon, the registered user

may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.

(2) Notwithstanding anything contained in any other law, a proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

41.- (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user shall make application in writing to the Registrar in the prescribed manner accompanied by an affidavit made by the proprietor, or by some person authorised to the satisfaction of the Registrar to act on his behalf,

(a) giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered

20 Trade Marks [1940: Act V

(Chapter VI.- Use of Trade Marks and Registered Users) .

user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made ;

(b) Stating the goods in respect of which registration is

proposed;

(c) stating any conditions or restrictions proposed with

respect to the characteristics of the goods, to the mode

or place of permitted use, or to any other matter;

(d) stating whether the permitted use is to be for a period

or without limit of period, and, if for a period, the

duration thereof;

and by such further documents, information or evidence as may be required by the Registrar Of as may be prescribed.

(2) When the requirements of sub-section (I) have been com. plied with, if the Registrar is satisfied that in all the circumstances the use of the trade mark in respect of the proposed goods or any of them by the proposed registered user subject to any conditions or restrictions which the Registrar may think proper, would not be contrary to the public interest, the Registrar may registered, subject as aforesaid, the proposed registered user as a registered User in respect of the goods as to which he is so satisfied.

(3) The Registrar shall refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.

(4) The Registrar shall, if so requested by an applicant, take steps for securing that information given for the purposes of an application under this section (other than matter entered in the register) is not disclosed to rivals in trade.

(5) The Registrar shall issue notice in the prescribed manner

(a) of the registration of a person as a registered user,

to any other registered user of the trade mark;

(b) of an application. under section 42, to the registered proprietor, and each registered user (not being the applicant) of the trade mark.

42. Without prejudice to the provisions of section 46, the registration of a person. as a registered user

(a) may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in. writing in the prescribed manner of the registered proprietor of the trade mark;

(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the. trade mark;

(c) may be ca.ncel1ed by the Registrar on the application in. writing in. the prescribed manner of any person on any of the following grounds, namely;

(I) that the registered user has used the trade mark

otherwise than by way of the permitted use, or

[1940: Act V Trade Marks 21

(Chapter VI.-Use of Trade Marks and Registered Users.

Chapter VII.-Rectification and Correction of the Register.)

in such a way as to cause or to be likely to cause, deception or confusion;

(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;

(iii) that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested ;

(d) may be cancelled by the Registrar in respect of any goods in relation to which the trade mark is no longer registered.

43. Nothing in this Act shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.

44.-(1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, If and so far as It shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.

(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed.. to be also a use of any trade mark being a part thereof and registered In accordance with sub-section (1) of section II in the name of the same proprietor.

45.-(1) The application in ¹[Pakistan] of a trade mark to

goods to be exported from ¹[Pakistan] and any other act done in ¹[Pakistan] in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within ¹[Pakistan] would constitute me of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or ,any other law.

(2) The use of a registered trade mark in relation to. goods between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely

to cause deception or confusion on the ground only that the mark has been or is used in relation to goods between which and the person using the mark or any predecessor in his business different form of connection in the course of trade subsisted or subsist.

________

CHAPTER VII

RECTIFICATION AND CORRECTION OF THE REGI TER

46.- (1) On application in the prescribed manner by any person aggrieved to a High Court or to Registrar, the tribunal

1940: Act V] Trade Marks 23

(Chapter VII.- Rectification and correction of the Register

Chapter VIII.-Certification Trade Marks).

Identity thereof, and the registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

2. The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.

3. Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section.

(2). 49.- (1) The Registrar shall not, in exercise of any power conferred on him under clause (a) of sub-section (2) of section 84, make any amendment of the register which would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods;

Provided that this sub-section shall not apply when the Registrar is satisfied that compliance therewith would involve under complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

(2) A proposal so to amend the register shall be notified to the registered proprietor of the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of sub-section (1).

_______

CHAPTER VIII

CERTIFICATION TRADE MARKS

50.- Subject to the provisions of this Chapter, the other provisions of this Act except section 6,21,22,31,32,33,36,37, 38,39,40,41,42 and 43 and sub-section (2) of section 45 shall apply to certification trade marks as they apply to trade marks.

51.- A mark shall not be registerable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified.

24- Trade Marks [1940: Act V

Chapter VIII.-Certification Trade Marks).

52.- In determining whether a mark is adapted to distinguish in accordance with the provisions of clause (b) of sub-section(1) of section 2, the tribunal may have regard to the extent to which

(a)

the mark is inherently so adapted to distinguish in relation to the goods in question; and

(b)

by reason of the use of the mark or of any other circumstances, the mark is in fact so adapted to distinguish in relation to the goods in question.

53.- (1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft of the regulations to be deposited under section 56.

(2) The provisions of section 14 shall have effect in relation to an application under this section as they have effect in relation to an application under the said section, except that for references therein to acceptance of an application there shall be substituted references to authorization to proceed with the application.

(3)

In dealing under the said provisions with an application under this section, the tribunal shall have regard to the like considerations, so far as relevant, as if the application we an application under section 14 and to any other considerations (not being matters within the competence of the Federal Government under section 454) relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark.

54. When authorization to proceed with an application under section 53 has been given, the Registrar shall forward the application to the Federal Government who shall consider the application with regard to the following matters, namely:-

(a)

whether the applicant is competent to certify the goods in respect of which the mark is to be registered;

(b)

whether the draft of the regulations to be deposited under section 56 is satisfactory;

(c)

whether in all the circumstances the registration applied for would be to the public advantage;

and may either^____

(i)

direct that the application shall not be accepted; or

(ii) direct the Registrar to accept the application and approve the said draft of the regulations either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modification of the application or of the regulations, which it thinks requisite having regard to any of the said matters;

1940: Act V] Trade Marks 25

Chapter VIII.-Certification Trade Marks).

but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Federal Government shall not decide the matter without giving to the applicant an opportunity of being heard;

Provided that the Federal Government may, at the request of the applicant made with the concurrence of the Registrar, consider the application with regard to any of the said matters before authorization to proceed with the application has been given so however that the Federal Government shall be at liberty to reconsider any matter on which it has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft of the regulations.

55 (1) When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the provisions of section 15 shall have effect in relation to the registration of the mark as if the application had been an application under section 14;

Provided that, in deciding under the said provisions the tribunal shall have regard only to the considerations referred to in sub-section (3) of section 53, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Federal Government under sub section (2) of this section of any opposition relating to any of the matters referred to in section 54.

(2)

When notice of opposition is given relating to any of the matters referred to in section 54, the Federal Government shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions of limitations, or amendments or modifications, if any, of the application or of the regulations to be deposited under section 56, registration is, having regard to those matters, to be permitted.

56 (1) There shall be deposited at the Trade Marks Registry in respect of every mark registered as a certification trade mark regulations approved by the Federal Government for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorize the use of the certification trade mark, and may contain any other provisions which the Federal Government may be general or special order require or permit to be inserted therein (including provisions conferring a fight of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorize the use of the certification trade mark in accordance with the regulation); and regulations so deposited shall be open to inspection in like manner as the register.

(2) The regulations so deposited may on the application of the registered proprietor be altered by the Registrar with the consent of the Federal Government.

26 Trade Marks [1940: Act V

(Chapter VIII.-Certification Trade Marks).

(3)

The federal Government may cause such application to be advertised in any case where it appears to it expedient so to do, and where it does so, if within the time specified in the advertisement any person gives notice of opposition to the application, the Federal Government shall not decide the matter without giving the parties an opportunity of being heard.

57. (1) Subject to the provisions of sections 25, 26 and 58, the registration of a person as proprietor of a certification trade mark in respect of any goods hsll, give to that person the exclusive right to the use of the certification trade mark in relation to those goods, and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the mark or a person authorized by him in that behalf under the regulations deposited under section 56, using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either.

(a) as being used as a certification trade mark; or

(b)

to import a reference to some person having the right either as proprietor, . or by his authorization under the said regulations, to use the mark, or to . goods certified by the proprietor.

(2). a person registered in any Acceding State or a non-Acceding State to. Which section 82A for the time being applies, as proprietor of a. certification trade mark shall have the same rights in respect thereof as are . Conferred by this section on a person registered under this Act as. proprietor of a certification trade mark).

58.- (1) The right to the use of a certification trade mark given under section 57 by registration shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in any place, in relation to goods to be exported to any market, or in any other circumstances, to which having regard to any such limitations, the registration does not extend.

(2) The said right to the use of a certification trade mark shall not be deemed to be infringed by the use of any7 such mark as aforesaid by any person:-

(a) in relation to goods certified by the proprietor of the mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorization under the relevant regulations

[1940: Act V] Trade Marks 27

(Chapter VIII.-Certification Trade Marks).

has applied the mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the mark, or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the mark has been used without infringement of the right given as aforesaid or might for the time being be so sued, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods are certified by the proprietor;

Provided that clause (a) shall not apply to the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are mentioned in the clause if such application is contrary to the said regulations.

(3) Where a certification trade mark is one of two or more certification trade marks registered under this Act or in any Acceding state of non-Acceding State to which section 82A for the time being applies, which are identical or nearly resemble to the use of that mark given by registration, shall not be deemed to be an infringement of the right so given to the use of any other of those marks.

59. - (1) The federal Government may, on the application in the prescribed manner of any person aggrieved or on the recommendation of the Registrar, and after giving the proprietor an opportunity of opposing the application or recommendation, make such order as it thinks fit for expunging or varying and entry in the register relating to a certification trade mark, or for varying the deposited regulations, on any of the following grounds, namely:-

(a)

that the proprietor is no longer competent, in the case of any of the goods in respect of which the mark is registered, to certify those goods;

(b)

that the proprietor has failed to observed any provision of the deposited regulations to be observed on his part;

(c)

that it is no longer to the public advantage that the mark should be registered;

(d)

that it is requisite for the public advantage that, if the mark remains registered, the regulations should be varied;

and neither a High Court nor the Registrar shall have any jurisdiction to make an order under section 46 on any of those grounds.

(2) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under sub-section(1),

28 Trade Marks [1940: Act V]

(Chapter VIII.-Certification Trade Marks. Chapter IX.- Special

Provisions for Textile Goods.)

60. The Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorize the use of the mark.

61. Save as otherwise expressly provided in this Chapter, every decision of the federal Government under this Chapter shall be final.

__________

CHAPTER IX

SPECIAL PROVISIONS FOR TEXTILE GOODS

62.

The ¹[Federal Government] shall prescribe classes of goods (in this Chapter referred to as textile goods) to the trade marks used in relation to which the provisions of this Chapter shall apply; and subject to the said provisions, the other provisions of this Act shall apply to such trade marks as they apply to trade marks used in relation to other classes of goods.

63.

[Separate Trade Marks Registry at Bombay.] Omitted by the

Trade Marks (Amdt.) Act, 1943 (XV of 1943), s.6.

63A. [jurisdiction of Bombay Registrar and Registrar in respect of trade marks used in relation to textile goods.] Omitted by the Trade Marks (Amdt.) Act, 1943 (XV of 1943), s.6.

²[64.-(1) In respect of textile goods being piece goods-

(a) no mark consisting of a line heading alone shall be registrable as a trade mark;

(b) a line heading shall not be deemed to be adapted to distinguish;

(c) the registration of a trade mark shall not give any exclusive right to the use of a line heading.

(2) In respect of any textile goods, the registration of letters or numerals, or any combination thereof, shall be subject to such conditions and restrictions as may be prescribed.

³[65. Trade marks in respect of textile goods of which registration has been refused shall be entered by entered by the Registrar in a list called the Refused Textile Marks List, and the said list shall at all convenient times be open to the inspection of the public subject to such conditions and restrictions as may be prescribed.]

³[66.-(1). The ¹[The Federal Government] may in the prescribed manner constitute on or more Advisory Committees of persons versed in the usages of the textile trade for the purpose of this section.

[1940: Act V] Trade Marks 29

(Chapter IX.__Special Provisions for Textile Goods.

(Chapter X.__Offence and Restrains of use of Royal Arms

and State Emblems.)

(2) The Registrar 1* * * shall consult any such Committee with respect to any circumstances peculiar to the textile trade arising on an application to registrar a trade mark in respect of textile goods.

(3) The place of meeting and the conduct of business of such committee shall be determined by rules made under this Act.

______

CHAPTER X

OFFENCES AND RESTRAINT OF USE ROYAL ARMS

AND STATE EMBLEMS

67. If any person makes, or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders, or a causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

68. _ (1) 2[On and after the 1^st day of January 1947,] no person shall make any representation_

68. (a) with respect to a mark not being a registered trade mark, to the

effect that it is a registered trade mark ; or

(b) with respect to a part of a registered trade mark not being a part

separately registered as a trade mark ; to the effect that it is a

separately registered as a trade mark; or

(c) to the effect that a registered trade mark is registered in respect of a

goods in respect of which it is not in fact registered ; or

(d) to the effect that the registration of a trade mark gives an exclusive

right use thereof in any circumstances in which, having regard to

limitations entered on the register, the registration does not in fact

give that right.

(2) If any person contravenes any of the provisions of subsection (1), he shall be punishable with imprisonment for a term which may extend to six months, or with fine which may extend to five hundred rupees, or with both.

(3) For the purpose of this section, the use in 3[Pakistan] in relation to a trade mark of the word “registered”, or of any

30 Trade Marks 1940: Act V]

(Chapter X.__Offence and Restrains of use of Royal Arms

and State Emblems.)

other expression referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except__

(a)

where that word or other expression is used in direct association with other words delineated in characters at least as large as those in which that word or other expression is delineated and indicating that the law of a country outside 1[Pakistan], being a country under the law of which the registration referred to is in fact in force ; or

(b)

where that other expression is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a) ; or

(c)

where that word is used in relation to a mark registered as a trade mark under the law of 2[an Acceding State or a Country outside Pakistan] and in relation solely to goods to be exported to that country.

3[(4) Nothing in this section shall__

(a)

apply to a trade mark, application for the registration of which has been

made before the 1^st day of January 1947, until such application has been disposed of ;

(b)

effect the use of the word “registered” in respect of a trade mark

registered in any 4[Acceding State or a non-Acceding State] to which section 82A for the time being applies, or until the application has been disposed of ; in respect of a trade mark, application for the registration of which has been made in any such 4[Acceding State or a non-Acceding State] before the aforesaid date.]

Restraint 69. If a person, without due authority, used in connection with any trade,

Of use of business, calling or profession __

Royal Arms (a) the Royal Arms 5[or Government Arms] (or arms so closely resembling

And State the same as to be calculated to deceive) in such manner as to be

Emblems. Calculated to lead to the belief that he is duly authorized so to use the

Royal Arms 5[or government Arms], or

(b)

6[name, title and semblance of Quaid-I-Azam Muhammad Ali Jinnah

and any variations thereof or] any device, emblems or title in such manner as to be calculated to lead to the belief that he is employed by, or supplies goods to, or is connected with, His Majesty’s Government or the 7[Federal Government]

[1940: Act V] Trade Marks 31

(Chapter X.__Offence and Restrains of use of Royal Arms

and State Emblem. Chapter X1. __Miscellaneous.)

or any Provincial Government or any department of any such

Government, 1[or]

69-2[(c) the emblems, the official seal and the name or any abbreviation of the

name of the United Nations or any subsidiary body set up by the United Nations or of the World Health Organization in such manner as is to be calculated to lead to the belief that he is duly authorized by the Secretary- General in the case of the United Nations or by the Director General of the World Health Organization in the case of that Organization to use that emblems seal or name,]

he may, at the suit of any person who is authorized to use such Arms or such device, emblem or title or of the Registrar, 3* * * be restrained by injunction from continuing so to use the same .

4[Provided that nothing in this section shall be construed as affecting the right, if any, of the proprietor of a trade mark containing any such Arms, device, emblem or title to continue to use such trade mark.]

______

CHAPTER X1

MISCELLANEOUS

70. In all proceeding under this Act before the Registrar__

(a)

the Registrar shall have all the power of a Civil Court for the purposes of

receiving evidence, administering oaths, enforcing the attendance of witnesses compelling the discovery and production of documents and issuing commissions for the examination of witnesses;

(b)

evidence shall be given by affidavit, provided that the Registrar may, if he

thinks fit, take oral evidence in lieu of , or in addition to, such evidence by

affidavit.

(c)

the Registrar shall not exercise any power vested in him by this Act or the

rules made there under adversely to any party duly appearing before him with out (if required in writing within the prescribed time so to do) giving such party an opportunity of being heard;

(d) the Registrar may, save as otherwise expressly provided in this Act, and subject to any rules made in this behalf under, section 84, make such orders as to costs as he considers reasonable, and any order shall be executable as a decree of a Civil Court.

32 Trade Marks [1940: Act V]

(Chapter X1. __Miscellaneous.)

71. In all proceedings under this Act before the Government], evidence shall be given by affidavit, provided that the 1[Federal Government ] may, if it

fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purposes have the powers of a Civil Court referred to in clauses (a) of section 70.

72. where under this Act an applicant has the option of making Application either to a High Court or to the Registrar,_

(a) if any suit or other proceedings concerning the trade mark in question is pending before a High Court or a District

the application shall be made to that High Court or, as the

case may be, to the High Court within whose jurisdiction that

District Court is situated ;

(b) if any other case the application is made to the Registrar may, if he

thinks fit, refer the application any stage of the proceedings to a High Court.

73. No suits for the infringement of a trade mark or relating to any right in a trade mark shall be instituted in District Court having jurisdiction to try the suit.

74. _(1) In any suit or other legal proceedings in which the relief sought , includes alteration or rectification of the registration In proceeding the Registrar shall have the right to appear and be heard, and shall appear if so directed by the tribunal.

(2) Unless the tribunal otherwise directs, the Registrar in lieu of appearing, submit a statement in writing signed him, giving such particulars as he thinks proper of the

proceedings before him relating to the matter in , or of the grounds of any decision given by him or of the practice of the [Trade Marks Registry] in cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the suit or other proceeding. 3 * * * * * *

⁴[74-A. In all proceeding under this Act before a High Court the costs

of the Registrar shall be in the discretion of the High Court, but the

Registrar shall not be ordered to pay the costs of any of the parties.]

75- (1) A printed or written copy of any entry in the register, purporting to be certified by registrar Registrar and sealed with the seal of the 2[Trade Marks Registry], shall be admitted in evidence

[1940: Act V] Trade Marks 33

(Chapter X1. __Miscellaneous.)

in all courts in 1[Pakistan] and in all proceeding

without further 2[proof or production]of the original.

(2) A certificate purposes to be under the hand of the Registrar

as to any entry, matter or things that he is authorized by this Act or the rules to makes or do shall be prima facie evidence of the entry having been made, and of the content thereof, or of the matter or thing having been done or not done.

76. _(1) Save as otherwise expressly provided in this Act, an

appeal shall lie, within the period prescribed by the 3[Federal

government] from any decision of the Registrar under 4** *

under this Act or the rules made there under to the High Court having jurisdiction. Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, the appeal shall be made to that High Court or, as the case may be, to the High Court within whose

jurisdiction that District Court is situated.

(2)

In an appeal by an applicant for registration against a decision

of the Registrar under section 13 or section 14 or section 15, shall

not be open, save with the express permission of the Court, to the

Registrar or any party opposing the appeal to advance grounds

other than those recorded in the said decision or advanced by the

party in the proceedings before the Registrar, as the case may be ;

and where any such additional may, on giving notice in the

prescribed manner, withdraw his application with out being liable

to pay the costs of the Registrar or the parties opposing his

application.

(3)

Subject to the provisions of this Act and of rules made

thereunder,the provisions of the code of Civil Procedure, 1908

shall apply to appeals before a High Court under this Act.

77.

A High Court may make rules consistent with this Act as to the

conduct and procedure of all proceeding under this Act before it.

78.

If any legal proceeding in which the validity of the registration of a trade mark comes into question, a decision is given in favour of the proprietor of the trade mark, the tribunal may grant a certificate to that effect, and if such a certificate is granted, then in any subsequent legal proceeding in which the said validity comes into question, the said proprietor on obtaining a final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges and express as between legal practitioner and client.

34 Trade Marks [1940: Act V

(Chapter XI. - Miscellaneous)

79. In any suit or other proceeding relating to a trade mark, the

shall admit evidence of the usages of the trade concerned and of

relevant trade mark or get up legitimately used by other persons.

80.

Where by or under this Act any act, other than the making of an affidavit, is required to be done by any person, the act may, subject to prescribed conditions or in special cases with the consent of the 1[Federal Government], be done, in lieu of by that person himself, by duly authorized agent, being either a legal practitioner or a person registered in the prescribed manner as a trade marks agent.

81.

There shall be paid in respect of application and registration and

other matters under this Act such fees as may be prescribed by the[Federal Government].

82.

The provisions of this Act shall be binding on the 2[Government].

3[82. _A(1) The 1[Federal Government] may enter into reciprocal

arrangement with any 4[According State or a non-Acceding State],

whereby trade marks and certification trade marks registered under this

Act shall have in that State protection as if registered in that

State where such arrangements have been entered into with any

4[Acceding State or a non-Acceding State], the 1[Federal Government]

shall by notification in the official Gazette declare that this section

shall apply that State.

(2)

Where ant such arrangement as aforesaid with any 4[Acceding State or a non-Acceding State] are terminated, the 1[Federal Government] shall by a further like notification cancel the notification under sub-section (1) relating to that State.]

83 If any time after the expiry of six months from the

Commencement of this section it is made to appear to the 1[Federal Government] that any Government 5[outside Pakistan] has made satisfactory provision for the protection within its territories of trade marks in respect of which an application for registration has been made within the territories of that Government to enable any person who has applied with in such territories for registration of a trade mark or his legal representative or assignee to obtain registration of the trade mark in 6[Pakistan] under this Act on his making an application for registration in 6[Pakistan] within such

[1940: Act V Trade Marks 35

(Chapter XI. - Miscellaneous)

period as may be fixed in this behalf by the notification as if an application for registration under this Act had been made in respect of that trade mark at the date at which the application for registration was made within the territories of that Government.

84. _ (1) The 1[Federal Government ] may, subject to the condition of

previous publication by notification in the official Gazette, make rules 2 to carry out the purposes of this Act.

(2) In particular and without prejudice to the generality of the foregoing

Power, such rules may_

(a)

prescribe the classification of goods for the purpose of the

registration of trade mark , and empower the Registrar to amend the Register so far as may be necessary for the purposes of adapting the entries therein to any amended or substitute classification which may be prescribed;

(b)

require the making of duplicates of trade marks and other documents connected therewith ;

(c)

provide for securing and regulating the publication, sale or distribution of copies of trade mark s and other documents connected therewith;

(d)

prescribe additional matters to be entered in the register;

(e)

prescribe the conditions and restrictions subject to which the register, 3* * * and refused the Textile Marks 1[List] may be inspected ;

(f)

prescribe the form of certificates of registration ;

(g)

prescribe the conditions under which a trade mark removed from the registry may be restored under sub section (3) of section 18 section

(h)

prescribe the further documents , information or evidence to accompany an application under sub section (1)of section 41 ;

(i)

prescribe classes of goods as textile goods for the purposes of chapter lX ;

(j)

provide for the constitution of Advisory Committees referred to in section 66, and prescribe the places of meeting, and conduct of business at meeting, of such Committees ;

(k)

regulate the awarding of costs by the Registrar under section 70 ;

(n( �/span>

prescribe the conditions subject to which an agent referred to in section 80 may act;

36 Trade Marks [1940: Act V

(Chapter XI.- Miscellaneous)

1[(11) make such supplementary provision as may be necessary or

expedient to give effect to reciprocal arrangements entered into

with2 [Acceding States or non-Acceding States under section 82A;]

(m)

prescribe the fees to be paid under this Act ;

(n)

provide for the establishment of branches of the Trade Marks Registry when expedient for facilitating the working of this Act, and authorize the preparation of copies of the register to be kept at such branch offices;

(o) prescribe the manner in which, in proceedings under this Act before the 3[Federal Government) or the Registrar, application shall be made, notices given and matters advertised ;

(P) prescribe times or periods required by this Act to be

prescribed ;

(q) provide, generally, for regulating the business of the Trade Marks

Registry and of branches established under clause (n) 4* * * and for

regulating all things by this Act placed under the direction or

control of the 3[Federal Government] or the Registrar.

5* * * * * * *

85.

The 3[Federal Government] may, by notification in the to official Gazette, provide such procedure as it considers expedient to enable intending applicants to deposit trade marks at the Patent Office before the coming into force of the remaining provisions of this Act :

Provided that the deposit of a trade mark under this section shall

not be affect any right, existing or accruing, in the trade mark.

⁶86. [Proceedings at Patent Office and the Bombay Registry to be deemed to have been taken at Trade Marks Registry.] Omitted by A. O., 1949.

___________