Law relating to infringement of Trademark in Pakistan

39. Rights conferred by registration.- (1) A registered trade mark shall be a personal property.
(2) The proprietor of a registered trade mark shall have exclusive rights in the trade mark which are infringed by use of the trade mark in Pakistan without his consent.
(3) Without prejudice of the right of the proprietor of a registered trade mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this ordinance if the trade mark is infringed.
(4) References in this Ordinance to the infringement of a registered trade mark shall be to any such infringement of the rights of the proprietor.
(5) The rights of the proprietor shall have effect from the date of registration;
Provided that no infringement proceedings shall being before the date on which the trade mark is in fact registered.
(6) The rights conferred by registration of trade mark under this ordinance shall extend to trade marks registered under the Trade Marks Act, 1940 (V of 1940).
40. Infringement of registered trade mark.- (1) A person shall infringe a registered trade mark if such person uses in the course
of trade a mark which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person shall infringe a registered trade mark if such person uses in the course of trade a mark because- (a) the mark is identical with the trade mark and is used in relation to goods or services similar to the goods or services for which the trade mark is registered; or (b) the mark is deceptively similar to the trade mark and is used in relation to goods or services identical with or similar to the goods or services for which the trade mark is registered. there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trade mark.
(3) A person shall infringe a registered trade mark if the person uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark in relation to- (a) goods of the same description as that of goods in respect of which the trade mark is registered; (b) services that are closely related to goods in respect of which trade mark is registered; (c) services of the same description as that of services in respect of which the trade mark is registered; or (d) goods that are closely related to services in respect of which the trade mark is registered.
(4) A person shall infringe a registered trade mark if the person uses in the course of trade mark which- (a) is identical with or deceptively similar to the trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered.
where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(5) A person shall infringe a registered trade mark if the person uses such registered trade mark as his trade name or part of his trade name.
(6) A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark.
(7) A person who applies a registered trade mark to material intended to be used for labeling or packaging goods shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall
be treated as a party to infringement of a registered trade mark, unless he proves that- (a) having taken all reasonable precautions, he had to reasons to suspect the genuineness of the mark; and (b) on demand made by tribunal, he gave all the information in his power with respect to the persons from whom he obtained such goods; or (c) he had otherwise acted innocently.
41. Infringement of trade mark by breach of certain restrictions.- Subject to the provision of section 42, if the proprietor of a registered trade mark or a licensee having power to do so, has caused to be displayed on goods the words "registered goods" in respect of which a trade mark is registered, or on their packaging , or on the container in which they are offered to the public, a notice prohibiting any of the following acts- (a) apply the trade mark to registered goods or using the trade mark in physical relation to them, after the state, condition, get-up packaging in which they were originally offered to the public has been altered; (b) altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods and used in physical relation to them; (c) if the trade mark has been applied to registered goods, or used in physical relation to them, together with other matter indicating that the proprietor or the licensee has dealt with the goods, removing or obliterating, totally or in part, any representation of the trade mark without totally removing or obliterating the other matters; (d) applying another trade mark to registered goods or using another trade mark in physical relation to them; or (e) if the trade mark has been applied to registered goods, or used in physical relation to them, using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the repute of the trade mark, a person who does or authorizes someone to do any of the foregoing prohibiting acts shall be liable for infringement of the trade mark:
Provided that the trade mark shall not be infringed if the owner of the goods acquired them in good faith and without being aware of the notice of prohibition, or became the owner of the goods by virtue of a title derived from a person who has so acquired them.
42. When a trade mark is not infringed.-
(1) A person shall not infringe a registered trade mark when- (a) the person uses in good faith- (i) the person's name or the name of the person's place of business, so long as such use does not result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right; or (ii) the name of the predecessor in business of the person or the name of the predecessor's place of business: (b) the person uses a mark in good faith to indicate- (i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (ii) the time of production of goods or of the rendering of services;
(c) the person uses the trade mark in good faith to indicate the intended purpose of goods, in particular as accessories or spare parts, or services; or (d) the person uses the trade mark for the purposes of comparative advertising.
(2) If the right to the use of a trade mark given under section 39 by registration is subject to any conditions or limitations entered on the Register, such right shall not be deemed to be infringed by the use of any such trade mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in or in relation to services provided by, in any place, or in relation to goods or services to be exported to any market, or in any other circumstances, to which, having regard to any such limitations the registration does not extend.
(3) Where registration of a trade mark is subject to a disclaimer, a person shall not infringe the trade mark by using disclaimed part of the trade mark.
43.Registration to be prima facie evidence of validity.- In all legal proceedings relation to a trade mark registered under this Ordinance or under the Trade Marks Act, 140 (V of 1940), the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmission thereof.
44. Registration to be conclusive as to validity after five years.- In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall, after the expiration of five years from the date of its original registration, be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of sub-section (3) of section 14.
45. Saving for words used as name or description of an article or a substance.- (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word which the trade mark contains or of which it consists as the name or description of an article, substance or service: Provided that if it is proved either- (a) that there is a famous and established use of the said word as the name or description of the article, substance or service by a person or person carrying on trade therein, not being use in relation to goods or services connected in the course of trade mark with the proprietor or a licensee of the trade mark or in the case of a certification trade mark in relation to goods or services 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 Ordinance. that a period of two years or more after the cesser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance. the provision of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or (b) of the proviso to sub-section (1) are proved with respect to any words, then- (a) for the purpose of any proceedings under section 96, if 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. or of the service or of any services of the same description; as the case may be, shall be deemed to be an entry wrongly remaining on the Register; or (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 Ordinance or any other law for the time being in force to the use of the trade mark; or (ii) if the trade mark contains such words and other matter, all such rights of the proprietor to the use of such words. in relation to the article or substance or to any goods of the same description, or to the service or to any services of the same description. as the case may be, shall be deemed to have ceased on the date on which the use mentioned in clause (a) of the proviso to sub-section (1) first became famous and established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.
CHAPTER - V
INFRINGEMENT PROCEEDINGS
46. Action for infringement.- (1) Save as otherwise provided in this Ordinance, an infringement of a registered trade mark shall be actionable by the proprietor of the trade mark.
(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trade mark as is available in respect of the infringement of any other property right.
(3) Nothing in this Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof.
47. Order for erasure of offending mark.- (1) Where a person is found to have infringed a registered trade mark, the High Court or a District Court may make an order requiring him- (a) to cause the offending trade mark to be erased, removed or obliterated form any infringing goods, material or articles in his possession, custody or control; or (b) to secure the destruction of the infringing goods, material or articles, if is not reasonably practicable for the offending trade mark to be erased, removed or obliterated.
(2) If an order under sub-section (1) is not complied with, or it appears to the High Court or District Court likely that such an order would not be complied with, the High Court or District Court may order that infringement goods, material or articles be
delivered to such person as the High Court or a District Court may direct for erasure, removal or obliteration of the mark, or for destruction, as the case may be.
48. Order for delivery up of infringing goods, material or articles.- (1) The proprietor of a registered trade mark may apply to the High Court or District Court for an order for the delivery up to him, or such other person as the High Court or District Court may direct, of any infringement goods, material or articles which a person has in his possession, custody or control in the course of a business.
(2) An application shall not be made after the expiry of the period specified in section 50, and no order shall be made unless the High Court or a District Court also makes, or it appears to the High Court or a District Court that there are grounds for making, an order under section 51.
(3) A person to whom any infringement goods, material or articles are delivered in pursuance of an order under this section shall, if an order under section 51 has not been made, retain them pending the making of an order, or the decision not to make an order, under that section.
(4) Nothing in this section shall affect any other power of the High Court or District.
49. Meaning of "infringing goods, material or articles".- (1) Subject to sub-section (2), goods shall be "infringement goods" in relation to a registered trade mark, if they or their packaging bear a mark identical or deceptively similar to that mark and- (a) the application of the mark to the goods or their packaging was an infringement of the registered trade mark; (b) the goods are proposed to be imported into Pakistan and the application of the mark in Pakistan to them or their packing would be an infringement of the registered trade mark; or (c) the mark otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.
(2) Nothing in sub-section (1) shall be construed as affecting the importation of goods which may be lawfully imported into Pakistan.
(3) Material shall be "infringing material" in relation to a registered trade mark, if it bears a mark identical or deceptively similar t that mark and either it is- (a) used for labeling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark; or (b) intended to be so used and such use would infringe the registered trade mark.
(4) "infringing articles" in relation to a registered trade mark, means such articles which- (a) are specifically designed or adapted for making copies of a mark
identical or similar to that mark; and (b) a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.
50. Period after which remedy of delivery be not available.- (1) An application for an other under section 48 shall not be made after the expiry of three years from. (a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging; (b) in the case of infringing material, the date on which the trade mark was applied to the material; or (c) in the case of infringing articles, the date on which they were made, except as provided in sub-section (2).
(2) If during the whole or part of the period specified in sub-section (1), the proprietor of the registered trade mark- (a) is under a disability; or (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an other, an application may be made at any time before the expiry of three years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.
Explanation.- In this sub-section the expression "disability" shall have the same meaning as in the Limitation Act, 1908 (IX of 1908).
51. Order as to disposal of infringing goods, material or articles.- (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 48, an application may be made to the High Court or a District Court.- (a) for an order that they be destroyed or forfeited to such person as the High Court or a District may thing fit; or (b) for a decision that no such order should be made.
(2) In considering what order, if any should be made, the High Court or District Court shall consider whether other remedies available in a action for infringement of the registered trade mark would be adequate to compensate the proprietor and any licensee and protect their interests.
(3) Where there are more persons than on interested in the goods, materials or articles, the High Court or a District Court shall make such order as it thinks just.
(4) If the High Court or a District Court decides that no order should be made under this section, then the person, in whose possession, custody or control the goods, material or articles were before being delivered shall be entitled to their return.
52. Remedy for groundless threats of infringement proceedings.- (1) Where a person threatens to bring an action against another person on the ground that the order person has infringed- (a) a registered trade mark; or (b) a trade mark alleged by the person to be registered, any person aggrieved by the threat may bring proceedings for relief against the person making the threat.
(2) The relief may be applied for any of the following namely- (a) a declaration that the threats are unjustifiable; (b) an injunction against the continuance of the threats; or (c) damages in respect of any loss he has sustained by the threats.
(3) The plaintiff shall be entitled to any relief specified in sub-section (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute. or if done would constitute, an infringement of the registered trade mark concerned.
(4) if that is shown by the defendant, as provided under sub-section (3), the plaintiff shall be entitled to any relief specified in sub-section (2), if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
(5) The mere notification that a trade mark is registered, or that an application for registration has been made, shall not constitute a threat of proceedings for the purposes of this section. (6) The provision of this section shall not make a lawyer, advocate or attorney liable to any action for an act done in this professional capacity on behalf of a client.
CHAPTER VI
IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES
53. Infringing goods, material or articles may be treated as prohibited.-
(1) The proprietor of the registered trade mark may give notice in writing to the Collector of Customs that- (a) he is the proprietor of the registered trade mark; (b) at a time and place specified in the notice, goods which, in relation to that registered trade mark are infringing goods, material or article, or bear false indications as to their source or the identity of their manufacture are expected to arrive in Pakistan from outside Pakistan and that they are subject to the control of the customs authorities under the Customs Act, 1969 (IV of 1969): and (c) he requests the Collector of Customs to treat such goods as prohibited goods.
54. Notice for intervention by customs authorities.- When any notice to the Collector of Customs is made under section 53, it shall be accompanied by an undertaking by the person sending the notice to indemnify the customs authorities concerned and to compensate any importer. consignee or owner of the goods for lo9ss or damage resulting from the wrongful suspension of clearance of goods.
55. Furnishing of security or equivalent assurance to customs authority.- The Collector of Customs may require an applicant to provide a security or equivalent assurance sufficient to protect the importer, consignee or owner of the goods but such security or equivalent assurance shall not be such as to unreasonably deter recourse to these procedures.
56. Collector of Customs may seize goods bearing infringing trade mark.- If goods to which section 53 applies- (a) bear on them a trade mark which, in the opinion of the Collector of Customs, is identical with, or deceptively similar to the registered trade mark; and (b) are goods in respect of which the trade mark is registered, the Collector of Customs shall seize the gods unless he is satisfied that there are no reasonable grounds of believing that the trade mark shall be infringed by the importation of the goods and the seized goods shall be kept in a secure place as directed by the Collector of Customs.
57. Notice of seizure.- The Collector of Customs shall, as soon as practicable- (a) give, either personally or by urgent post, to the importer, consignee or owner of the goods a notice of seizure in writing identifying the goods and stating that they have been seized under section 56; and (b) give to the applicant a notice in writing- (i) identifying the goods and stating that they have been seized under section 56; (ii) giving the full name and address of the importer, consignee or owner of the goods and any information that the Collector of Customs has and believes, on reasonable grounds, to be likely to help the applicant to identify the importer or the owner of the goods; and (iii) starting that the goods shall be released to the importer, consignee or owner of the goods unless the applicant brings an action for infringement of the registered trade mark in respect of goods before a District Court having jurisdiction in the matter and gives the Collector of Customs notice in writing of the action, within the period of ten working days after the applicant has been given the notice, or if the Collector of Customs extends the period under sub-section (1) of section 60, within such extended period.
58. Forfeiture of goods.- If the importer, consignee or owner of any seized goods, at any time before the applicant starts an action for infringement of the trade mark in respect of goods, by notice in writing to the Collector of Customs, gives consent to the goods being forfeited by the Collector of Customs, the goods shall be so forfeited by the Collector of Customs.
59. Release of goods.- (1) The Collector of Customs shall release the seized goods to their designated importer, consignee or owner if, within the specified period, the applicant has not- (a) brought an action for infringement of the registered trade mark in respect of the goods, and (b) given to the Collector of Customs notice in writing of the action.
(2) The Collector of Customs shall also release the seized goods to their designated importer, consignee or owner if- (a) before the end of the prescribed period, the applicant, by notice in writing to the Collector of Customs, consented to the release of the goods; and (b) at that time- (i) the applicant has not brought an action for infringement of the registered trade mark in respect of the goods; or (ii) the action brought by the applicant has been withdrawn.
(3) The Collector of Customs may release the seized goods to their designated importer, consignee or owner before the end of the specified period if, (a) having regard to information that has come to his knowledge after the goods were seized, he is satisfied that there are no reasonable grounds of believing that the registered trade mark has been infringed by the importation of the goods; and (b) the applicant has not so far brought an action for infringement of the registered trade mark in respect of the goods, or has not informed him of such an action.
60. Action for infringement against importation goods.- (1) The applicant may bring an action for infringement of a registered trade mark in respect of the seized goods and give a notice to the Collector of Customs, subject to the provisions of clause (b), within ten working days specified in the notice given to the applicant in respect of the goods, under section 57 or if- (i) the applicant has, before the expiry of the specified period, applied in writing to the Collector of Customs, being satisfied that in the circumstances of the case it is fair and reasonable to do so, has extended the specified period for a number of working days not exceeding ten days, within that period so extended by the Collector of Customs.
(2) A District Court hearing the action- (a) may, on the application of any person, allow that person to be joined as a defendant in the case; and (b) shall allow the Collector of Customs, or his duly authorised officer, to appear and be heard.
(3) Subject to sub-section (4), in addition to any relief that a District Court may grant apart from the provisions of this section, the Court may- (a) at any time, if it thinks it just, order that the seized goods be released to their designated owner subject to such conditions that the Court considers fit to
impose; or (b) order that the seized goods be forfeited.
(4) A District Court shall not make any order which may facilitate- (a) re-exporting of the counterfeit trade mark goods; (b) removing of the trade marks which have been affixed to the counterfeit trade mark goods without authorization; and (c) local sale of such goods.
(5) If a District Court decides that the registered trade mark was not infringement by the importation of the goods and the designated importer, consignee or owner of the goods, satisfies the Court that he has suffered losses or damage because the goods were seized, the Court may order the applicant to pay the defendant compensation, in the amount determined by the Court, for any part of the loss or damage that is attributable to any period beginning on or after the day on which the action was brought.
(6) If, after three weeks from the day on which the action was brought, there is not in force at any time an order of a District Court preventing the goods from being released, the Collector of Customs shall release the goods to their designated importer, consignee or owner.
(7) If a District Court orders that the goods be released, the Collector of Customs shall, subject to section 63, comply with the order.
62. Disposal of forfeited goods.- (1) Subject to sub-section (2), any goods forfeited under the provisions of this Chapter shall be disposed of by the Collector of Customs in the manner as if the goods were forfeited the Customs Act, 1969 (IV of 1969).
(2) The Collector of Customs shall not dispose of goods in a manner which may facilitate- (a) re-exporting of the Counterfeit trade mark goods; (b) removing of the trade marks, which have been affixed to the counterfeit trade mark goods without authorization; and (c) local sale of such goods.
63. Power of the Collector of Customs to retain control of goods.- Notwithstanding any thing contained in this Chapter, the Collector of Customs shall not- (a) release, or dispose any goods; or (b) take any action in relation to the goods to give effect to any order of a District Court under section 60. and Collector of Customs shall apply to the District Court to request that the goods are required and he may be allowed to retain control of the goods under any law for the time being in force.
64. Insufficient security.- If security given under section 55 by the applicant who gave notice in respect of a registered trade mark under section 53 or 61 is not sufficient to meet the expenses incurred by the Federal Government as a result of the action taken by the Collector of Customs under this Chapter, because of the notice, the amount of the difference in the expenses and the amount of security- (a) shall be a debt due by the applicant to the Federal Government; and (b) shall be recovered by the Federal Government under section 202 of the Customs Act, 1969 (IV of 1969).
65. The Federal Government not be liable to loss, etc.., suffered because of seizure.- The Federal Government shall not be liable to any loss, damage or delays suffered by a person- (c) because the Collector of Customs seized or failed to seize goods under this Chapter; or (d) because of release of any seized goods.
66. Power of the Collector of Customs to make regulations.- The Collector of Customs may make regulation prescribing the form in which notices shall be made and requiring the person making the notice to furnish evidence to the ownership and to comply with such other conditions as may be specified which may include the payment of a fee to cover the administrative costs.