Patent Law:

Date of Filing:

(f) “date of filing” in relation to an application for a patent, means-

(i) in case of an application which is post-dated or ante-dated under this Ordinance, the date to
which it is so post-dated or ante-dated; and

(ii) the date on which it is filed at the Patent Office or its branch office;

Explanation:

This is the date when the application is filed at the Patent Office. The application must indicate
that a patent is being sought, contain the applicant’s details and credentials, contain something
that appears to be a description of the invention for which the patent is sought or a reference to
an earlier relevant application made by the applicant. The filing date is important because it is
the date used to determine the duration of the patent. That is, the 20 years’ maximum period
available starts to run from the filing date.

Exclusive license:

(h) “exclusive license” means a license from a proprietor of, or an applicant of, a patent which
confers on the licensee, or on the licensee and persons authorized by him, to the exclusion of all
other persons, including the proprietor or applicant, any right in respect of the invention, to
which the patent or application relates, and “exclusive licensee” and " non-exclusive licensee"
shall be construed accordingly;

Product:

(t) “product” means any substance, article, apparatus, or machine;

Published:

(u) “published” means made available to the public whether in Pakistan or elsewhere and a
document shall be taken to be published under any provision of this Ordinance, if it can be
inspected as of right at any place in Pakistan by members of public, whether on payment or free
of cost ;

7. Patentable inventions.-

(1) Any invention is patentable, if it is new, involves an inventive step and is capable of
industrial application.
(2) Subject to sub-section (3), the following shall not be regarded as invention within the
meaning of sub-section (1), namely:-

(a) a discovery, scientific theory or mathematical method;

The things excepted in this category are the raw materials which are part of the stock-in-trade of
scientists and inventors, and if previously unknown ones are discovered they should be available
to all. But there is another reason why they cannot be patented and that is that, by themselves,
they have no technical effect. They have to be applied before they can be a technical effect and
therefore an industrial application. In Genentech Incorporation’s Application,1one of the
questions the court had to consider was whether the invention in question (a process for the
production of human growth hormone in bacteria that would result in an enzyme capable of
dissolving fibrin2 in blood clots) was excluded from patentability because it related to a
discovery. Thus, whereas it is not permissible to patent a discovery, it is possible to patent an
invention that embodies that discovery.

“It is trite law that you cannot patent a discovery, but if on the basis of that discovery you
can tell people how can it be usefully employed then a patent of the invention may result.”

Similarly, a scientific theory or a mathematical principle is not patentable unless it leads to an

invention that embodies the scientific theory3 or the mathematical principle.4

(b) a literary, dramatic, musical or artistic work or any other creation of purely aesthetic
character whatsoever;

These works and creations are plainly the subject matter of copyright law or design law, hence
the exclusion. In most cases, these works will not be capable of industrial application and are
thus excluded twice over. Copyright law is more suited to these types of works because a patent
would give a protection that is too strong. Copyright does not provide a strict monopoly and the
independent creation of similar works is permissible.

(c) a scheme, rule or method for performing a mental act, playing a game or doing business;

It is not possible to stop people thinking or doing mental arithmetic.5If a patent were to be
granted, say, for a method of mental arithmetic, it would be unenforceable anyway. As far as
methods of playing games and doing business are concerned, this means that it is not possible to
patent, for example, a new chess opening or a new method of assessing bids for large
construction schemes. However, copyright law may protect the expression of the scheme, rule or
1
[1989] RPC 147.
2
An insoluble protein formed during the clotting of blood.
3
Examples include Newton’s law of gravity or Einstein’s theory of relativity.
4
Examples include the reflective property where one of the properties of equality that relates to real numbers. The
reflective property simply means that a number will always be equal to itself. Another example is of the set theory.
5
Mental arithmetic: arithmetical calculations performed in the mind, without writing figures down or using a
calculator.
method and, depending upon the circumstances, the law of confidence could give some
protection. If the claimed invention is a method of conducting business that is disconnected from
any means for carrying out that method, it will fail as a matter of law. The court have
distinguished between business methods per se and business processes implemented through an
"apparatus," holding that only the latter is patentable subject matter.

(d) the presentation of information;

This is another exception that can best be explained on the ground that it is properly within the
scope of copyright law or other forms of protection. Information may be presented in numerous
ways: for example, by newspapers, television, slide presentation at a conference or by means of
internet web pages.

(e) substances that exist in nature or if isolated therefrom.

For example, some pharmaceutical products are based on, or consist of, biological materials.
These include compounds extracted from plants and algae as well as human proteins obtained by
extraction or through genetic engineering techniques (e.g. interferon,6 growth hormone7).These
are not considered inventions under the Ordinance. Furthermore, the genome8 and germplasm9 in
their isolated forms are also not considered inventions. DNA,10 RNA11 and proteins, are not
themselves living but naturally occurring. The ability to isolate genes and produce the proteins
they encode has enormous commercial impact but under Pakistani Patent Law, these may be
denied patent protection as they are not inventions under the Patents Ordinance, 2000.12
6
Interferons (IFNs) are a group of signalling proteins made and released by host cells in response to the presence
of several pathogens, such as viruses, bacteria, parasites, and also tumour cells. In a typical scenario, a virus-
infected cell will release interferons causing nearby cells to heighten their anti-viral defences.
7
Growth hormone (GH) (human growth hormone [hGH or HGH] in its human form) is a hormone that stimulates
growth, cell reproduction, and cell regeneration in humans and other animals.
8
Genome is the genetic material of an organism. The genetic material of a cell or an organism refers to those
materials found in the nucleus, mitochondria and cytoplasm, which play a fundamental role in determining the
structure and nature of cell substances, and capable of self – propagating and variation. The large, membrane-
bounded organelle (membrane – bound compartment or structure in a cell that performs a special function) is the
nucleus. The material within a living cell, excluding the nucleus, is the cytoplasm. Spherical or rod – shaped
organelles found within the cytoplasm is the mitochondria.
9
Germplasm is the living genetic resources such as seeds or tissue that is maintained for the purpose of animal and
plant breeding, preservation, and other research uses.
10
DNA: Deoxyribonucleic acid (DNA) is a molecule that carries the genetic instructions used in the growth,
development, functioning and reproduction of all known living organisms and many viruses.
11
RNA: Ribonucleic acid (RNA) is a polymeric molecule (a very large molecule) essential in various biological roles in
coding, decoding, regulation, and expression of genes.
12
Comparatively, under the English Patent system, DNA, RNA and proteins are granted patent protection if the
materials are isolated from its natural environment or produced by means of a technical process. This comparison
exists because what deserves to be patented is left for countries to determine. Countries determine what kind of
inventions deserves patents in the area of, for example, pharmaceuticals, in light of their own social and economic
conditions.
(3) The provisions of sub-section (2) shall prevent anything from being treated as an invention
for the purposes of this Ordinance only to the extent that a patent or an application for a patent
relates to that thing as such.

(4) A patent shall not be granted-

(a) for invention the prevention of commercial exploitation of which would be necessary to
protect the “ordre public” or morality, including to protect human, animal or plant life or health
or to avoid serious prejudice to the environment, provided that such exclusion is not made
merely because the exploitation is prohibited by any law for the time being in force;

(b) for plants and animals other than micro-organisms, and essentially biological processes for
the production of plants or animals other than non-biological and microbiological processes;

(c) for diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

The Patent law refuses patent protection for these methods as the reason for this basic exclusion
is to ensure that medical practitioners (and veterinary surgeons) are not subjected to restraint by a
patent when tending patients. The reason for the exclusion of surgery, therapy or diagnostic
methods is probably a policy decision to prevent restrictions on the spread and adoption of new
and improved methods of treatment. For example, if a surgeon develops a new and improved
way to perform back surgery, it is in the public interest that such a method be available to all
surgeons.

(d) for a new or subsequent use of a known product or process;

Under the Patents Ordinance, 2000, patent protection will be refused for a new or a subsequent
use of a known substance e.g. pharmaceutical products. As regards medicines, it has been stated
that the basis for the exclusion of “new use of already known chemical entity” from patentability
is that it might lead to evergreening of that chemical entity. Through evergreening,13 companies
try to secure patents on large numbers of complex and often highly speculative patents through
minor modifications. For example, in Earthfactor (Private) Limited v. Patent Office, IPO
Pakistan, the High Court of Sindh had to decide whether a patent could be granted in the case of
a dual / double-number SIM card. The Court observed that a patent could not be granted for a
new or subsequent use of a known product and process in the light of Section 7 (4).

13
Ever greening is any of various legal, business and technological strategies by which producers extend their
patents over products that are about to expire, in order to retain royalties from them, by either taking out new
patents (for example over associated delivery systems, or new pharmaceutical mixtures), or by buying out, or
frustrating competitors, for longer periods of time than would normally be permissible under the law. By
evergreening, the multinational pharmaceutical companies retain profits from their blockbuster drugs for long as
possible. Pharmaceutical giants adopt the Swiss-type claim format as a monopolisation strategy to evergreen their
patented drugs. A Swiss – type claim or “Swiss type of use claim” is a formerly used claim format intended to cover
the first, second or subsequent medical use of a known substance or composition.
 (e) for a mere change in physical appearance of a chemical product where the chemical formula
or process of manufacture remains the same provided that this clause shall not apply to an
invention fulfilling the criteria of patentability.

Patent protection will not be granted where the product’s physical appearance is modified but
everything else remains the same. For example, where the colour of the pill is changed or there is
a change in the shape of the pill.

8. Novelty.-

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall comprise-

(a) everything disclosed to the public anywhere in the world, by publication in tangible form or
by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the
priority date, of the application claiming the invention;

In the English case of WindsurfingInternational Inc v. Tabur Marine (Great Britain) Ltd.,14 the
Court of Appeal held that a 12 year old boy, who built a sailboard and used it in public for a few
weekends at a caravan site at Hayling Island in Hampshire, had effectively anticipated a later
patent for a sailboard which was declared invalid for want of novelty.

(b) contents of the complete specification and priority documents published under section 21 of
an application filed in Pakistan;

(c) traditionally developed or existing knowledge available or in possession of a local or

indigenous community.

It constitutes prior art and is used to refuse patent applications for want of novelty as these are
non – inventive contributions.

(3) Notwithstanding the provisions of sub-section (2), disclosure of a patentable invention in

respect of goods shall not constitute ‘state of the art’ if an article is exhibited at an official or
officially recognized international exhibition within twelve months preceding the date of filing of
an application for grant of patent. If later on, the right of priority is invoked, then the period
shall start from the date of introduction of the article into the exhibition. The Controller may
require proof, with such documentary evidence as considered necessary, of the identity of the
article exhibited and the date of its introduction into the exhibition.

The provision provides that where inventions are exhibited at an official or officially recognised
international exhibition within twelve months before the filing date of the patent application, the
14
[1985] RPC 59.
disclosures of such inventions shall not constitute part of the state of the art. Where priority is
raised in such cases, the period will be counted from the date of introduction of the exhibited
articles and documentary evidence may be required to be submitted to the Controller.

(4) In this section references to the inventor include references to any proprietor of the invention
for the time being.

14. Complete and provisional application.-

(1) Every application for a patent, other than a Convention application, shall be accompanied by
either a complete specification or a provisional specification, and every Convention application
shall be accompanied by a complete specification.

(2) Where an application for a patent is accompanied by a provisional specification, a complete

specification shall be filed within twelve months from the date of filing of the application, and if
the complete specification is not so filed the application shall be deemed to be abandoned.

(3) Where two or more applications in the name of the same applicant are accompanied by
provisional specification in respect of invention which are cognate or of which one is a
modification of another, and the Controller is of the opinion that the whole of such inventions or
such as to constitute a single invention and properly be included in one patent, he may allow one
complete specification to be filed in respect of all such provisional specification.

(4) Where an application for a patent, not being a Convention application, is accompanied by
specification purporting to be a complete specification, the Controller may, if the applicant so
requests at any time before the acceptance of the specification, direct that it shall be treated for
the purposes of this Ordinance as a provisional specification, and proceed with the application
accordingly.

(5) Where a complete specification has been filed in pursuance of an application for a patent
accompanied by a provisional specification or by a specification treated by virtue of a direction
under sub-section (4) as a provisional specification the Controller may, if the applicant so
requests at any time before the acceptance of the complete specification, cancel the provisional
specification and post-date the application to the date of filing the complete specification.

Explanation:

This is a very important document, probably the most important thing submitted by the applicant.
The specification must contain a description of the invention, one or more claims together with
any drawings to illustrate the invention. The specification should fully describe the invention –
anything omitted at this stage could have the effect of jeopardizing the application or cutting
down the usefulness and scope of the patent should it be granted. The specification should also
be sufficiently detailed so that a person skilled in the art can work the invention that is, put it into
effect. The purpose of filing a specification is to make available the invention to the public on the
expiry of the term of the patent. For example, if the invention concerns a new type of tow bar for
a vehicle, the specification should be such that a skilled vehicle engineer would be able to make
it, fit it and use it. Therefore, the patent specification is not merely a description of the invention
but it is also a technical and legal document.

The specification may either be a “provisional specification” or a “complete specification”. In a

provisional specification, an initial description of an invention is provided when the application
is filed. While an inventor is in the process of finalizing his invention, he may file the provisional
specification, which is not a full and specific description. It contains only a general description of
the invention, its field of application and anticipated results. The provisional specification need
not contain the claim (s).

According to the provisions of Section 14 of the Patents Ordinance, 2000, where an application
for a patent is accompanied by a provisional specification, a complete specification shall be filed
within twelve months from the date of filing of the application and if the complete specification
is not filed, the application shall be deemed to be abandoned. During the period between the
filing of the provisional specification and the complete specification, the inventor may conduct
further research on the subject-matter of his invention and improve the method of carrying out
the invention or introduce further developments or additions to the invention which he can
incorporate in the complete specification and the claims. The applicant gets a 12 months’ time to
fully develop the invention and ascertain its market potential and assists in establishing
“priority” right over the invention. It enables the applicant to use the term “patent pending” on
their product as well as it also enables the applicant to file International applications and claim
priority within 12 months.

In a complete specification, full and sufficient detail of an invention is provided in such a manner
that a person skilled in the art can use the invention when he reads such a description. The
complete specification is the full description of the invention containing all the claims over
which the applicant seeks a monopoly right.

15. Contents of specification.-

(1) Every specification, whether complete or provisional, shall describe in the form and manner
as may be prescribed.

(2) subject to any rules made in this behalf, drawings may, and shall if the Controller so
requires, be supplied for the purposes of any specification, whether complete or provisional, and
any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part
of the specification, and reference in this Ordinance to a specification shall be construed
accordingly.
 (2A) For a chemical product intended for use in medicine or agriculture, the specification shall
be specific to one chemical product only describing the physical, chemical, pharmacological and
pharmaceutical properties or, as the case may be, the properties related to its use in agriculture
and its impact on environment (2B) Where a biological material is used, the specification shall
disclose the place of origin and source of such biological material and shall also exhibit
compliance with the relevant applicable rules on access, export and use of that material and
where such a material is obtained from Pakistan for use outside Pakistan, the permission of the
Federal Government shall be necessary as may be prescribed.

(3) Every complete specification shall-

(a) fully and particularly describe the invention and the method by which it is to be performed.

(b) disclose the invention which is known to the applicant and for which he is entitled to claim
protection; and

(c) end with a claim or claims concisely defining the scope of the invention for which protection
is claimed.

(4) The claim or claims of a complete specification shall relate to a single invention, shall be
clear and succinct and shall be fairly based on the matter disclosed in the specification.

(5) Subject to the foregoing provisions of this section, a complete specification filed after a
provisional specification, or filed with a Convention application, may include claims in respect
of developments of, or additions to, the invention which was described in the provisional
specification or, as the case may be, the invention in respect of which the application for
protection was made in a Convention country, being developments or additions in respect of
which the applicant would be entitled under the provisions of section 11 to make a separate
application for a patent.

(6) Every complete specification shall be accompanied by an abstract for the purposes of giving
technical information and the Controller shall determine whether the abstract fulfils its purpose
and, if it does not, shall instruct the applicant to make modifications to the satisfaction of the
Controller.

(7) The abstract shall merely serve the purpose of technical information, in particular, it shall not
be taken into account for the purpose of interpreting the scope of protection.

(8) Claim or claims in respect of a complete specification of a chemical product intended for use
in agriculture or medicine shall be structurally defined and shall relate to a single chemical
product only, excluding its derivates and salts, each of which, with a material or a novel
improvement in its claim from the main product, shall be filed as a separate invention or where
applicable, as a divisional application. Where structural description is not possible, as in the case
of biological products, the “product by process” claim shall be made and protection shall be
limited to the product obtained with the claimed process only:

Provided that a claim which is based on a mere admixture resulting only in aggregation of the
properties of the component substances thereof, or a processing of producing such substance,
shall not be allowed.

29. Date of patent.-

(1) Subject to the other provisions of this Ordinance, every patent shall be dated as of the filing
date of the application and in case of a Convention application the date of such earliest
application filed in the Convention country from which priority has been claimed.

(2) The date of every patent shall be entered in the Register.

31. Term of patent.-

The term of a patent under this Ordinance shall be twenty years from the filing date.

Trademark Ordinance:

(ix) "Counterfeit trade mark goods"

means any goods including packaging bearing without authorization a trade mark which is
identical to the trade mark validly registered in respect of such goods or which cannot be
distinguished in its essential aspects from such a trade mark and thereby infringes rights of the
owner of the trade mark under this ordinance;

(x)"Date of filing" means-

(a) in relation to an application for the registration of a trade mark the day on which the
application is filed pursuant to sub-section (1) of section 23; or

(b) in relation to a divisional application for the registration of a trade mark, the day on which
the initial application within the meaning of sub-section (1) of section 32 is filed; or

(c) in relation to an application to provide temporary protection during exhibition the day
referred to in sub-section (1) of section 26; or

(d) in relation to a Convention application, the day referred to in clause (a) of sub-section (2) of
section 25;

(xi) "Date of registration"

 in relation to the registration of a trade mark in respect of particular goods or services, means the
day from which the registration of the trade mark in respect of those goods or services is taken to
have had effect under sub-section (3) of section 33;

(xiii) Dilution:

means the lessening of the capacity of a well known trade mark to identify and distinguish the
goods or services, regardless of the presence or absence of competition between owner of the
well know trade mark or other parties. or likelihood of confusion or deception:

(xviii) "false trade description" means-

(a) a trade description which is untrue or misleading in a material respect as regards the goods or
services to which it is applied.

(b) any alteration of a trade description as regards the goods or services to which it is applied
whether by way of addition. effacement or otherwise where that alteration makes the description
untrue or misleading in a material respect.

(c) any mark or arrangement or combination thereof when applied-

(i) to goods in such a manner as to be likely to lead persons to believe that the goods are the
manufacture or merchandise of some person other than the person whose merchandise or
manufacture they really are. or

(ii) in relation to services in such a manner as to be likely to lead persons to believe that the
services are provided or rendered by some person other than the person whose whose services
they really are;

(d) any false name or initials of a person applied to goods or services in such a manner as if such
name or initials were a trade description in any case where the name or initials.-
(i) is or are not a trade mark or part of a trade mark;

(ii) is or are identical with or deceptively similar to the name or initials of a person carrying n
business in connection with goods or services of the same description or both and who has not
authorized the use of such name or initials; and

(iii) is or are either the name of initials of a fictitious person or of some person not bona fide
carrying on business in connection with such goods or services: and the fact that a trade
description is a trade mark or part of a trade mark shall not prevent such trade description being a
false trade description within the meaning of this Ordinance: or

(e) to any false name, initials or description of a person used in relation to goods or services in a
manner to suggest that the said person authenticates or guarantees the nature or fitness for the
purpose of the goods or services.
14. Absolute grounds for refusal of registration.-

(1) The following shall not be registered, namely:-

(a) mark which do not satisfy the requirement of clause (xlvii) of section 2;

(b) trademarks which are devoid of any distinctive character;

Marks which are devoid of any distinctive character will be refused registration. This is a wider
provision than Section 14 (1) (c) and (d) as a mark/sign will still be refused registration under
this clause even if it has passed the conditions set out in clauses (c) and (d). However, a mark
which fails the test, for instance, under clause (c) is necessarily devoid of possessing any
distinctive character under this clause.

For example, where a mark has been used prior to it being used in a trademark sense, that use
may prevent the mark from performing its essential function if the first use still comes to mind or
is deeply established in the mind of the relevant public. In a case, the issue was whether a mark
which had been used for sport by the governing body in Brazil by the Brazilian football team
until 1971 and had appeared on the shirts of famous football figures possessed any distinctive
character.. The court answered in the negative holding that the prior use deprived it of its power
to signify trade origin. Trademarks can either be:

 Distinctive by nature / inherently distinctive; or

 Distinctive through nurture / acquired distinctiveness / distinctive through continuous and

extensive use.

(c) trademarks which consist exclusively of marks or indications which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of goods or services.

The section prevents the registration of marks that are exclusively descriptive. If there is a
sufficiently direct and specific relationship between the sign and the goods / services for which it
is being sought, registration will be refused.

 Kind: Doublemint for mint flavoured chewing gum;

 Quality: 5star for hotels;

 Quantity: Duo or dual for speakers sold in pairs;

 Intended purpose: Easycover for floor coverings;

  Value: Overlaps with quality but could also be a reference to the value of the product or
service or the consumer’s ability to purchase, e.g Budget;

 Geographical Origin: COVERED IN NEXT SLIDE;

 Time of production of goods or rendering of services: Day by Day for milk and 24 hours
for news services;

(d) trade mark which consist exclusively of marks or indications which have become customary
in the language or in the bona fide and established practices of the trade;

Marks or signs that are commonly or customarily used in the relevant trade or profession will be
refused registration under this head. These may consist of words, logos, shapes devices…. any
sign that is used commonly in the trade e.g Comfort for beds, Clean for detergents.

Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if,
before the date of application for registration. It has in fact, acquired a distinctive character as a
result of the use made of it or is a well know trade mark.

(2) A mark shall not be registered as a trade mark if it consists exclusively of-

(a) the shape which results from the nature of the goods themselves,

In simple words, one cannot register the natural shape of the goods because the natural shape of
goods is descriptive. Ex: rectangle for a picture frame, circle/sphere for footballs, cricket, tennis,
etc.

(b) the shape of goods which is necessary to obtain a technical result;

For example, shapes of keyboard, razors, screw driver, etc

(c) the shape which gives substantial value to the goods.

(3) No trade mark nor any part thereof in respect of any goods or services shall be registered
which consists of, or contains, any scandalous design, or any matter the use of which would-

(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to
protection in a High Courts or District Court;

(b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, per se, or in
terms of goods or services it is intended to be so registered; or

(c) be contrary to any law, for the time being in force or morality.
(4) A trade mark shall not be registered if or to the extent that the application is made in bad
faith.

17. Relative grounds for refusal of registration.-

(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods
or services, for which the trade mark is applied for, are identical with the goods or services for
which the earlier trade mark is registered.

(2) A trade mark shall not be registered because-

(a) it is identical with an earlier trade mark and is to be registered for goods- or services similar
to those for which the earlier trade mark is registered; or

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical
with or similar to those for which the earlier trade mark is registered. and there exists a
likelihood of confusion on the part of the public which includes the likelihood of association
with the earlier trade mark.

(3) A trade mark which-

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has
a reputation in Pakistan and the use of the later mark without due cause would take unfair
advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade
mark.

(4) A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be
prevented-

(a) by virtue of any law, in particular, the law of passing off, protecting an unregistered trade
mark or other mark used in the course of trade; or

(b) by virtue of an earlier right other than those referred in sub-section (1), (2) and (3) or clause
(a) of this sub-section, in particular by virtue of the law of copyright design right or registered
designs.

(5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of
the earlier trade mark or other earlier consents to the registration.

(6) Where separate applications are made by different persons to be registered as proprietor
respectively of trademarks which are identical or nearly resemble each other. in respect of the
same goods or description of goods, the Registrar, if thanks fit, may refuse to register any of
them until their rights have been determined by the High Court or a District Court.

18. Meaning of "earlier trade mark".-

In this ordinance. "earlier trade mark" means-

(a) a registered trade mark or a Convention trade mark as per the Paris Convention which has a
date of application for registration earlier than that of the trade mark in question, talking account,
where appropriate, of the priorities claimed in respect of the trademarks;

(b) a trade mark filed under sub-section(1) of section 26; or

(c) a trade mark which, on the date of application for registration of the trade mark in question,
or where appropriate, of the priority claimed in respect of the application, was entitled to
protection under the Paris Convention as a well known trade mark.

(2) References in this Ordinance to an earlier trade mark include a trade mark in respect of which
an application for registration has been made and which, if registered, would be an earlier trade
mark by virtue of clause (a) or (b) of subsection (1), subject to its being so registered.

(3) A trade mark shall, within clause (a) or (b) of sub-section (1), where registration expires,
continue to be taken into account in determining of a later mark for a period of one year after the
unless the Registrar is satisfied that there was no bona fide use of the mark during two years
immediately preceding the expiry.

22. Application for registration.-

(1) An application for registration of a trade mark shall be made in writing to the Registrar in the
prescribed manner.

(2) Without limiting the particulars that may be include in an application, the application shall
contain-

(a) a request for registration of a trade mark;

(b) full name and address of the applicant;

(c) a statement of goods or services in relation to which it is sought to register the trade mark;
(d) international classification of goods or services;

(e) a representation of the trade mark; and

(f) full name, address and contact details of agent, in case the application, on behalf of the
applicant, if made by his agent.
(3) The application shall state that the trade mark is being used by the applicant, or with his
consent, in relation to goods or services, or that he has a bona fide intention that it should be
used.

(4) The Registrar may refuse to admit an application if it does not contain all the particulars
required under sub-section (2) and (3).

(5) The application shall be subject to the payment of the application fee as may be prescribed.

34. Duration and renewal of registration.-

(1) A trade mark shall be registered for a period of ten years from the date of registration.

(2) The registration may be renewed under section 35 for a further period of ten years.

38. Surrender of registered trade mark:

(1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the
goods or services for which it is registered.

(2) The Federal Government may by rules to published in the official gazette, provide-

(a) as to manner and effect of a surrender, and

(b) for protecting the interests of other persons having a right in the registered trade mark.