The Trade Marks Ordinance 2001

The Trade Marks Ordinance 2001 Page 1 of 31
Subject The Trademark Ordinance, 2001

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WHAT IS TRADEMARK?
A Trade Mark means any mark capable of being represented graphically which
is capable of distinguishing goods or services of one undertaking from those of
other undertakings [sec 2 (xlvii)]. In other words, a trademark is used to
identify goods made or services rendered by specific person.
A mark includes, in particular, a device, brand, heading, label, ticket, name
including personal name, signature, word, letter, numeral, shape of goods or
their packaging, figurative element, colour, sound, scent or any combination
thereof [sec 2 (xxiv)].
REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF TRADE MARKS

Registrar and other officers: The Federal Government appoints the Registrar to
be called the “Registrar of Trade Marks”. The Federal Government also appoint
such other officers with designations, as it deems fit, for performing under the
superintendence and direction of the Registrar, such function of the Registrar
as may be authorized by the Registrar from time to time [sec 7].
Trade Marks Registry and Braches thereof: A Trade Marks Registry is
established under this ordinance having an official seal. The Federal
Government also establishes such other branches of Trade Marks Registry at
such places as it thinks fit, for the purpose of facilitating the registration of
Trade Marks [sec 9].
Register of Trade Marks: Register of Trade Mark is a record kept at the Trade
Marks Registry wherein following particulars of all registered trade marks shall
be entered:
a. name, address and description of the proprietors;
b. notifications of assignments and assignments;
c. the names, address and description of licensees;
d. disclaimers, conditions and limitations in respect of trade marks;
e. such other matters as may be prescribed [sec sec 10 (1)].
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The Register shall be kept under the control and management of Registrar,
subject to the superintendence and direction the Federal Government [sec 10
(2)].
A copy of the Register and such other documents may be kept at each branch
office of Trade Marks Registry, as the Registrar may direct by notification in the
journal [sec 10 (4)].
The register of Trade Mark may be kept in whole, or in part, by using a
computer and any entry of bonafide record of a particular or other matter
made by using a computer shall constitute an entry in the Register [sec 10 (3)].
In such a case, the requirements of keeping a copy of Register at branch offices
is satisfied if access is given to a computer terminal from which a person can
reads a screen, or obtain a printed copy of, the particulars or other matters
recorded in the Register or that part of the Register [proviso of sec 10 (4)].
The Register shall be open to the inspection of the public at all convenient
times subject to such conditions and restrictions as may be prescribed [sec 10
(5)].
Classification of Goods and Services: In accordance with the international
classification of goods and services, a Trade Mark under this ordinance may be
registered in respect of:
a. Good;
b. Services; or
c. Both goods and services.
If incase question arises as to the class within which any goods or services fall
shall be determined by the Registrar whose decision in the matter shall be final
[sec 12].
Absolute Ground for Refusal of Registration: Following are the absolute
grounds for refusal of registration of Trade Mark [sec 14]:
1. A mark not satisfying the requirements of section 2 (xlvii);
2. Trade Marks devoid of distinctive character;
3. Trade Marks consisting exclusively of marks or indications which may
serve, in trade, to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time of production of goods or
rendering of services, or other characteristics of goods or services;
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4. Trade Marks consisting exclusively of marks or indications which have

become customary in the language or in the bonafide and established
practices of the trade;
5. A mark if it consists exclusively of the shape which results from the
nature of the goods themselves;
6. A mark if it consists exclusively of the shape of goods which is necessary
to obtain a technical result;
7. A mark if it consists exclusively of the shape which gives substantial
value to the goods;
8. A trade mark consisting of or any part thereof containing 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 High Court or District
Court;
b. be likely to hurt the religious susceptibilities of any class or
citizens;
c. be contrary to any law for the time being in for or morality.
Relative Grounds for Refusal of Registration: Following are the relative
grounds for refusal of registration of Trade Mark [sec 17]:
1. A trade mark being identical with an earlier trade mark and the goods or
services, for which trade mark is applied, are identical with the goods or
services for which the earlier trade mark is registered [sec 17 (1)].
2. A trade mark being identical with an earlier trade mark and it is to be
registered for goods or services similar to those for which an earlier
trade mark is registered, and there exists a likelihood of confusion on
the part of public [sec 17 (2) (a)].
3. A trade mark being identical with an earlier trade mark and it 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 likelihood of
confusion on the part of public [sec 17 (2) (b)].
4. A trade mark being identical with or similar to an earlier trade mark and
it is to be registered for goods or services different from those for which
an earlier trade mark is registered, if the earlier trade mark has a
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reputation in Pakistan and use of their mark without due cause would
take unfair advantage of, or be detrimental to, the distinctive character
or the repute of the earlier trade mark [sec 17 (3)].
5. A trade mark, the use of which in whole or to some extent is prevented
by virtue of any law, particularly the law of passing off [sec 17 (4) (a)].
Passing off means someone is using unregistered trade mark to
represent goods or services as their own.
6. A trade mark, the use of which in whole or to some extent is prevented
by virtue of the law of copyright, design right or registered designs,
except rights as aforesaid [sec 17 (4) (b)].
Honest Concurrent Use: If on application for the registration of a trade mark it
appears to the Registrar that there is:
a. An earlier trade mark in relation to which the conditions set out in sub-
section (1), (2) or (3) of section 17 obtain; or
b. An earlier right in relation to which the condition set out in sub-section
(4) of section 17 is satisfied,
But the applicant proves to the satisfaction of the Registrar that there has been
honest concurrent use of the trade mark for which registration is sought, the
Registrar shall not refuse the application by reason of the earlier trade mark or
other right unless objection on that ground is raised in opposition proceedings
by the proprietor of that earlier trade mark or other earlier right [sec 19 (1)].
But, nothing herein contained shall affect the absolute refusal of registration of
trademark u/s 14 or grounds of invalidity u/s 80 [sec 19].
PROCEDURE FOR, AND DURATION OF, REGISTRATION

Application for Registration: An application for registration of a trade mark
shall be made in writing to the Registrar and 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;
d. International classification of goods or services;
e. A representation of the trade mark; and
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f. Full name, address and contact details of agent, if the application is

made by an agent on behalf of applicant [sec 22 (1) & (2)].
The Registrar may refuse to admit an application if it does not contain all
the aforesaid particulars [sec 22 (4)], and the application shall be subject to
the payment of application fee as may be prescribed [sec 22 (5)].
Co-ownership of Trade Mark: Two or more persons may also jointly apply for
the registration of a trade if the relations between than are such that none of
them is entitled to use the trade mark except: (a) on behalf of both or all of
them; or (b) in relation to goods or services or both with which all of them are
concerned in the course of trade [sec 24 (1)]. In case of joint trade mark, each
of them shall be entitled to an equal undivided share, subject to any
agreement to the contrary [sec 24 (2)]. Each co-proprietor shall also be entitled
to do, by himself or through his agents, any acts which would otherwise
amount to infringement of trade mark, for his benefit without consent or
accounting to other co-proprietors [sec 24 (4)]. However, a co-proprietor may
not grant a license of or assign or charge his share in registered trade mark
without consent of other co-proprietors [sec 24 (5)]. Infringement proceedings
may not be brought by any co-proprietor, without the leave of the Court,
unless other co-proprietors are joined as plaintiffs or added as defendants [sec
24 (6)].
Examination of Application: After an application for registration of a trade

mark u/s 22 is made, the Registrar shall examine whether an application
satisfies the requirements and shall carry out a search of earlier trade marks
[sec 27 (1) & (2)].
If it appears to the Registrar that the requirements for registration are not met,
he shall inform the applicant and give him an opportunity to make
representation or to amend the application within such period as specified by
the Registrar [sec 27 (3)], and if the applicant fails to satisfy the Registrar that
those requirements are met or to amend the application so as to meet them,
or fails to respond within specified period, the Registrar shall refuse to accept
the application [sec 27 (4)].
If it appears to the Registrar that the requirements for registration are met, he
shall accept the application either absolutely or subject to conditions or
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limitations [sec 27 (5)]. In case of refusal or conditional acceptance, the

Registrar shall state in writing the grounds of his decision and the material
which led him to such decision [sec 27 (6)].
If the tribunal deems it fair and reasonable to so, it 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 [sec 27 (7)]. However, no correction or amendment
shall be permitted which substantially affects the identity of a trade mark or
extends the goods or services covered by the application [proviso], and if the
amendment or correction in the application is permitted after the application
has been advertised, the amendment or correction shall also be advertised
[proviso].
Publication of Application: When the Registrar has accept the application for
registration of a trade mark, whether absolutely or subject to conditions or
limitations, he shall cause the application along with conditions and limitations,
if any, to be published in the Journal and the advertisement of trade mark in
the Journal shall constitute sufficient notice of acceptance of trade mark for all
legal purposes [sec 28 (1)]. The Registrar may also cause an application to be
advertised before acceptance under exceptional circumstances, notifying such
circumstances and if the application has been advertised so, he may advertise
it again after acceptance but shall not be bound to do so.
Opposition proceedings to Application: Any person may give a notice of

opposition in writing along with a statement of the grounds of opposition to
the Registrar within two months from the date of advertisement or re-
advertisement of an application for registration or within such further period
not exceeding two months in the aggregate as may be allowed by the Registrar
on payment of prescribed fee [sec 28 (2 & 3)]. Thereafter, the Registrar shall
serve copy of notice on the applicant.
The applicant shall send to the Registrar a counter-statement of the grounds n
which he relies for his application, within one month from the date of receipt
of such copy of notice of opposition or within such further period not
exceeding two months in the aggregate as the Registrar may allow on
application made to him and upon payment of prescribed fee. In case of
failure, he shall be deemed to have abandoned his application [sec 28 (4)].
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If the applicant sends the counter-statement, the Registrar shall serve a copy
of the counter-statement on the opponent. Thereafter, the opponent may
send a rejoinder to the Registrar, within one month from the receipt of such
copy of counter-statement, or within such further period not exceeding two
months in the aggregate as the Registrar may allow on application made to
him and upon payment of prescribed fee [sec 28 (5)].
If the opponent sends a rejoinder, the Registrar shall send a copy of the
rejoinder to the applicant [sec 28 (6)].
The parties shall, within prescribed time, submit any evidence upon which they
rely to the Registrar, and the Registrar shall give an opportunity to them to be
heard, if they so desire [sec 28 (7)].
The Registrar shall, unless the proceedings are discontinued or dismissed, after
giving an opportunity of hearing to the applicant and opponent, decide
whether and subject to what conditions or limitations, if any, registration is to
be permitted [sec 28 (8)].
The Registrar may if he deems fair and reasonable to do so, on request, permit
correction of any error in, or any amendment of, a notice of opposition, a
counter-statement, or a rejoinder on such terms as he deems fit [sec 28 (9)].
Grounds of Opposition: The registration of a trade mark may be opposed on

any of the following grounds:
1. On any of the grounds on which an application for registration of a trade
mark may be rejected except the ground that the trade mark cannot be
represented graphically;
2. The applicant does not intend to use, or authorize the use of, the trade
mark in Pakistan;
3. The applicant does not intend to assign the trade mark to a body
corporate for use in Pakistan;
4. The applicant is not the proprietor of the trade mark;
5. The application, or document filed in support of the application, was
amended contrary to the provisions of this ordinance;
6. The Registrar accepted the application for registration on the basis of
evidence or representation that were false in material particulars;
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7. The pre-acceptance advertisement of the application under exceptional

circumstances is without sufficient cause or reason;
8. If the trade mark in respect of particular goods or services is
substantially identical with, or deceptively similar to, a well known trade
mark or a trade mark that had acquired a reputation in Pakistan and the
use of first-mentioned trade mark would cause dilution or would be
likely to deceive or cause confusion [ sec 29 (4)].
9. If the trade mark contains or consists of a mark that is a geographical
indication for goods originating in a country, or in a region, or locality in
a country, other than the country in which the relevant goods
originated;
10. If the trade mark contains or consists of a mark that is a geographical
indication for goods originating in a region or locality in the country in
which the relevant goods originated other than the region or locality in
which the relevant goods originated.
Withdrawal of Application: The applicant may withdraw his application at any

time or restrict the goods or services by the application. In case the application
has been advertised, the withdrawal or restriction shall also be published [sec
31].
Definition of Divisional Application: A divisional application means another

application by a person who has already made an application u/s 22 for
registration of a trade mark in respect of certain goods, services or both. It can
be made for: (a) the registration of a part only of the trade mark in respect of
any or all of those goods, services or both; or (b) the registration of the trade
mark in respect of some of the goods, services or both in respect of which
registration is sought under the application made u/s 22. A divisional
application for registration of a trade mark or a part of a trade mark may be
made only is the application u/s 22 for registration of the trade mark is
pending.
Registration: The Registrar shall register the trade mark within prescribed
period if the application has been accepted and (a) no opposition is made; or
(b) if opposition was made, all opposition proceedings have been withdrawn or
decided in favour of the applicant, unless it appears to him that he accepted
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the application in error [sec 33 (1)]. Thereafter, the Registrar shall publish such
registration of trade mark and shall issue a certificate sealed with the seal of
the Trade Marks Registry to the applicant [sec 33 (4)]. The date of registration
of trade mark shall be the date of filing of the application [sec 33 (3)].
A trade mark shall not be registered unless:
1. Any fee prescribed for registration is paid within prescribed period and
the application shall be deemed to have been withdrawn [sec 33 (2)];
2. Registration of trade mark is not completed within twelve months from
the date of the application by reason of default on the part of applicant,
and the Registrar may treat the application as abandoned if it is not
completed within the time specified in that behalf in the notice [sec 33
(5)].
Duration of Registration: A trade mark is registered for a period of ten years

from the date of registration and it can be registered for a further term of ten
years.
Renewal of Registration: The Registrar informs the proprietor of a registered

trade mark, before expiry of registration, of the date of expiry and the manner
in which the registration may be renewed [sec 35 (2)]. Upon which, the
proprietor of a trade mark may make a request for renewal of registration,
along with renewal fee, before the expiry of registration or within such further
period of not less than six months subject to payment of additional fee as may
be prescribed [Sec 35 (3)], and the renewal shall take place from the expiry of
the previous registration [sec 35 (4)]. Except at the time of first renewal, the
Registrar may require that request of renewal be accompanied with evidence
of use of the trade mark in Pakistan [sec 35 (5)]. In case the registration is
renewed, the Registrar shall remove the trade mark from the Register [sec 35
(6)], however such registration may be restored subject to such conditions as
may be prescribed [proviso]. The renewal or restoration of the registration of a
trade mark shall be published in the journal [sec 35 (7)].
Effect of removal from Register for failure to pay fee for removal: If a
registered trade mark is removed from the Journal on account of failure to pay
renewal fee, it shall be deemed to be a trade mark already on the Register for
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the purpose of registration of another trade mark during one year from the
first date of the removal, unless the tribunal is satisfied that:
a. The trade mark so removed had no bonafide use during the two years
immediately preceding its removal; or
b. No deception of confusion would be likely to arise from the use of the
trade mark subject of the application of registration by reason of any
previous use of the trade mark which has been removed.
Alteration of Registered Trade Mark: The Registrar may, at the request of

proprietor, allow the alteration of a registered trade mark to the extent of the
name or address of the proprietor and the identity of the mark cannot be
substantially affected by such alteration [sec 37 (2)]. However, a registered
trade mark shall not be altered in the Register, during the period of registration
or on renewal [sec 37 (1)]. In case any alteration is made, the Registrar shall
publish such alteration and the objections by any person claiming to be
affected by it [sec 37 (3)].
Surrender of Registered Trade Mark: The proprietor may surrender a
registered trade in respect of some or all of the goods or services for which it is
registered [sec 38 (1)]. The Federal Government may provide the rules as to
the manner and effect of a surrender, and for protecting the interests of other
persons having a right in the registered trade mark [sec 38 (2)].
REGISTRATION AND EFFECT THEREOF

Rights conferred by Registration: In accordance with section 39, Following
rights are conferred by the registration of trade mark:
1. Personal Property: A registered trade mark becomes a personal property
of a person [sec 39 (1)].
2. Exclusive Rights: The proprietor of a registered trade mark is vested with
exclusive rights in the Trade Mark which are infringed by any
unauthorized use of trade mark in Pakistan [sec 37 (2)].
3. Right to Reliefs: In addition to any other reliefs under any law for the
time being in force, the proprietor of a registered trade mark has the
right to obtain relief under this ordinance if the trade mark is infringed
[sec 39 (3)]
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Infringement of Registered Trade Mark: A registered trade mark shall be

deemed to have been infringed if:
1. If a person uses, in the course of trade, a trade mark which is identical
with an earlier registered trade mark in respect of goods or services [sec
40 (1)].
2. If a person uses a mark identical with an earlier trade mark and uses it in
relation to goods or services similar to the goods or services for which
the trade mark is registered, and there exists likelihood of confusion on
the part of public [sec 40 (2) (a)].
3. If a person uses a mark deceptively similar to the trade mark and uses it
in relation to goods or services identical with or similar to the goods or
services for which the trade mark is registered, and there exists
likelihood of confusion on the part of public [sec 40 (2) (b)].
4. If a person uses a mark which is identical with, or deceptively similar to,
the trade mark in relation to:
a. Goods of same description as that of goods in respect of which the
trade mark is registered [sec 40 (3) (a)].
b. Services that are closely related to goods in respect of which the
trade mark is registered [sec 40 (3) (b)].
c. Services of the same description as that of services in respect of
which the trade mark is registered [sec 40 (3) (c)].
d. Goods that are closely related to services in respect of which the
trade mark is registered [sec 40 (3) (d)].
5. If a person uses a mark identical with or deceptively similar to the trade
mark and is used in relation to goods or services which are different
from those for which the trade mark is registered, but the trade mark is
well known or has reputation in Pakistan, and the use of the mark
without due cause would take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the trade mark [sec 40 (4)].
6. If a person uses a registered trade mark as his trade name or part of his
trade name [sec 40 (5)].
7. If a person uses a trade mark as his domain name or part of his domain
name or obtains such domain name without the consent of proprietor
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with intent to sale the same to another including proprietor of the

registered trade mark [sec 40 (6)].
8. If a person applies a registered trade mark to material intended to be
used for labeling or packaging goods, notwithstanding the fact that he
did not know or had reason to believe that the application of the mark
was not duly authorized by the proprietor or a licensee [sec 40 (7)].
9. In all legal proceedings, a person who sells or offers or exposes for goods
for sale, or puts them on the marker 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 no reasons to
suspect the genuineness of the mark; and
b. On demand made by the tribunal, he gave all the information in
his power with respect to the persons from whom he obtained
such goods; or
c. He had acted otherwise innocently [sec 40 (8)].
Infringement of trade mark by breach of certain restrictions: This section
deals with cases where infringement is caused by breach of certain restrictions.
Accordingly, if the proprietor or licensee causes the words “registered goods”
to be displayed on goods in respect of which trade mark is registered, or on
their packaging, or on the container in which they are offered to the public, a
person doing or authorizing to be done any of the following prohibited acts
shall be liable for infringement of the trade mark:
1. Application of trade mark to registered goods or using the trade mark in
physical relation to them, after the state, condition, get-up or packaging
in which they were originally offered to the public has been altered;
2. Altering, or partially removing or obliterating, any representation of the
trade mark applied to registered and used in physical relation to them;
3. Application of trade mark to registered goods, or using the trade mark in
physical relation to them, together with other matter indicating that the
proprietor or licensee has dealt with the goods, removing or obliterating,
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totally or in part, any representation of the trade mark without totally

removing or obliterating the other matters;
4. Applying another trade mark to registered goods or using another trade
mark in physical relation to them;
5. Application of 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.
However, a 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 become the owner of the goods by virtue of a title derived from
a person who has so acquired them [sec 41].
When a trade mark is not infringed: In accordance with section 42, a trade
mark is not infringed when:
1. A person’s name or the name of place of business is used in good faith,
so long as such se does not result in a likelihood of confusion or
otherwise interfere with an existing trade mark or other property right
[sec 42 (1) (a) (i)].
2. The name of the predecessor in business of the persons or the name of
the predecessor’s place of business is used in good faith [sec 42 (1) (a)
(ii)].
3. A person uses a mark in good faith to indicate the kind, quality, quantity,
intended purpose, value, geographical origin, time of production or
rendering of services or some other characteristic of goods or services
[sec 42 (1) (b)].
4. A person uses the trade mark in good faith to indicate the intended
purpose of goods, in particular accessories or spare parts, or services
[sec 42 (1)(c)].
5. A person uses the trade mark for the purpose of comparative
advertisement [sec 42 (1)(d)].
6. A person uses a disclaimed part of a trade mark which was subject to a
disclaimer [sec 42 (3)].
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Registration to be conclusive as to validity after five years: In all legal

proceedings relating to a registered trade mark, the original registration of a
trade mark shall be taken to be valid in all respects after the expiration of five
years from the date of its original registration, unless such registration was
obtained by fraud or it offends against the provisions of section 14 (3) [sec 44].
Action for infringement: The proprietor of a registered trade mark may, in an

action for infringement, seek all such relief by way of damages, injunctions,
accounts or otherwise as is available in respect of the infringement of any
other property right. However, nothing in this ordinance shall affect the rights
of action against any person for passing off goods or the remedies in respect
thereof [sec 46]. Passing off means someone is using unregistered trade mark
to represent goods or services as their own.
Order for Erasure of Offending Mark: In case of infringement of registered
trade mark, the Court may make an order requiring the person causing
infringement to: (a) cause the offending mark to be erased, removed or
obliterated from any infringing goods, material or articles in his possession,
custody or control; or (b) to destroy the infringing goods, material or articles, if
it is not practicable for the offending mark to be erased, removed or
obliterated [sec 47 (1)].
If the aforesaid order is not complied with or it appears to the Court likely that
an order would not be complied with, the High Court or District Court may
make an order directing that the infringing goods, material or articles be
delivered to such person, as it appoints, for erasure, removal or obliteration of
the mark, or for destruction, as the case may be [sec 47 (2)].
Order for Delivery-up of Infringing Goods, Material or Articles: The proprietor

of a registered trade mark may apply to the Court for an order for the delivery-
up to him, or such other person as the Court may direct, of any infringing
goods, material or articles which a person has in his possession, custody or
control in the course of a business [sec 48 (1)]. Such application cannot be
made after the expiry of period of 3 years as specified in section 50, and no
order shall be made unless the High Court or District Court also make or it
appears to them that there are grounds for making an order as to disposal of
infringing goods, material or articles u/s 51 [sec 48 (2)]. If the infringing goods,
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material or articles are delivered-up to a person as aforesaid, he shall retain

them until an order u/s 51 has not been made [sec 48 (3)].
Period after which remedy of delivery-up be not available: An application for
order for delivery-up of infringing goods, material or articles shall not be made
after the expiry of 03 years from:
1. In the case of infringing goods, the date on which the trade mark was
applied to the goods or their packaging;
2. In the case of infringing material, the date on which the trade mark was
applied to the material;
3. In the case of infringing articles, the date on which they were made
except as aforesaid [sec 50 (1)].
However, if during the whole or part of aforesaid period, the proprietor of the
registered trade mark is (a) under disability or (b) prevented by fraud or
concealment from discovering the facts entitling him to apply for an order, an
application may be made at any time before the expiry of three years from the
date on which he ceased to be under disability or could have discovered those
facts with reasonable diligence, as the case may be [sec 50 (2)].
Order as to disposal of Infringing goods, material or articles: When the

infringing goods, material or articles have been delivered-up in pursuance of an
order u/s 48, an application may be made to the High Court or a District Court
for: (a) an order of destruction or forfeiture thereof to such person as the High
Court or District Court thinks fit; or (b) a decision that no such order should be
made [sec 51 (1)]. While passing aforesaid order, the High Court or District
Court shall consider whether other remedies available in an action for
infringement of the registered trade mark would be adequate to compensate
the proprietor and any licensee and protect their interests [sec 51 (2)]. If the
High 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 [sec 51 (4)].
Remedy for Groundless Threats of Infringement Proceedings: If a person

threatens to bring an action against another person on the ground that the
other person has infringed (a) a registered trade mark; (b) a trade mark alleged
by the person to be registered, any person aggrieved by the threat may bring
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proceedings for relief against the person making the threat [sec 52 (1)]. An
aggrieved person may seek any of the reliefs of: (a) a declaration that the
threats are unjustifiable; or (b) an injunction against the continuance of
threats; or (c) damages in respect of any loss he has sustained by the threats
[sec 52 (2)]. The plaintiff shall be entitled to any of the reliefs aforesaid unless
the defendant shows that the acts in respect of which proceedings were
threatened constitute or would constitute an infringement of registered trade
mark [sec 52 (3)], and then the plaintiff shall be entitled to any of the aforesaid
reliefs if he shows that the registration of a trade mark is invalid or is liable to
be revoked [sec 52 (4)].
IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES

Infringing Goods, Material or Articles may be prohibited: The proprietor of a
registered trade mark may give a notice in writing to the Collector of Customs,
requesting therein to treat the goods as prohibited goods, and specifying in the
notice a time and place of arrival of infringing goods, material or articles in
Pakistan from outside Pakistan which are subject to the control of the customs
authorities under Customs Act, 1969 [sec 53].
Undertaking of indemnification: The person sending aforesaid notice shall also
file an undertaking along with notice to indemnify the customs authorities
concerned and to compensate any importer, consignee or owner of the goods
for loss or damage resulting from the wrongful suspension of clearance of
goods [sec 54].
Security or Assurance: 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 reasonably deter recourse to these proceedings [sec
55].
Seizure of Goods bearing Infringing Trade Mark: If the goods which: (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 are
goods in respect of which trade mark is registered, the Collector of Customs
may seize the goods unless he is satisfied that there are no reasonable grounds
of believing that the trade mark shall be infringed by the importation of the
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goods and the seized goods shall be kept in a secure place as directed by the
Collector of Customs [sec 56].
Notice of Seizure: After seizing the goods u/s 56, the Collector of Customs shall,
as soon as practicable, give notices two notices to the following:
a. A notice, either personally or by urgent post, in writing to the importer,
consignee or owner of the goods, therein identifying the goods and
stating that they have been seized u/s 56;
b. A notice to the applicant in writing, therein: (i) identifying the goods and
stating that they have been seized u/s 56; (ii) giving full name and
address of the importer, consignee or owner of the goods and any
information that the Collector of Customs believes, on reasonable
grounds, to be likely to help the applicant to identify the importer or the
owner of the goods; and (iii) stating that the goods shall be released to
the importer, consignee or owner of the goods if the applicant failed to
bring 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 u/s 60 (1)
within such extended period [sec 57].
Forfeiture of Goods: If the importer, consignee or owner of any seized
goods gives consent, by notice in writing, to the goods being forfeited
by the Collector of Customs, the goods shall be so forfeited by the
Collector of Customs [sec 58].
Release of Goods: In pursuant to section 59, the Collector of Customs
shall/ may release the seized goods to their designated importer,
consignee or owner under three circumstances as under:
1. The Collector of Customs shall release the seized goods to their
designated importer, consignee or owner of the goods so seized,
if 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 [sec 59
(1)].
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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 has consent to the
release of the goods by notice in writing to the Collector of
Customs; and (b) at that time the applicant has not brought an
action for infringement of the registered trade mark in respect of
the goods, or the action brought by the applicant has been
withdrawn [sec 59 (2)].
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) 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 trademark in respect of the goods, or has not informed
him of such an action [sec 59 (3)].
Action for infringement against importation of goods: 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 within ten working
days or within such further period, not exceeding ten days, as extended by the
Collector of Customs on application in writing by the applicant [sec 60 (1)].
A District Court hearing the said 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 authorized officer, to appear and be
hard [sec 60 (2)].
The aforementioned District Court, in addition to any other relief(s), may: (a) at
any time, if it thinks fit and 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 [sec 60 (3)].
However, 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 [sec 60 (4)].
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If a District Court decides that the registered trade mark was not infringed by
the importation of the goods, and the designated importer, consignee or
owner of the goods satisfied that Court that he has suffered losses or damage
because of seizure of goods; the Court may order the applicant to pay the
defendant, 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 [sec 60 (5)].
If, after three weeks from the day on which the action was brought, there is no
order of a District Court in force preventing the goods from being released, the
Collector of Customs shall release the goods to their designated importer,
consignee or owner [sec 60 (6)]. However, if a District Court orders that the
goods be released, the Collector of Customs shall comply with the order
subject to section 63 of this ordinance [sec 60 (7)].
Power of the Collector of Customs to retain control of goods: The Collector of
Customs shall not: (a) release or dispose of 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 [sec 63].
Disposal of forfeited goods: The Collector of Customs shall dispose of any

goods forfeited under this chapter as if the goods were forfeited under the
Customs Act, 1969 [sec 62 (1)]. But, such disposal shall not be 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; and (c) local sale of such goods [sec 62 (2)].
UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT

Unfair Competition: Unfair Competition is defined as the means of resorting to
unfair and dishonest practices to tackle rivalry. Pursuant to section 67, unfair
competition means any act of competition contrary to honest business
practices in industrial or commercial matters. Such act may include, among
others, as under:-
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1. All acts of such nature as to create confusion by any means whatsoever

with the establishment of goods, services or industrial or commercial
activities of a competitor;
2. False allegations in the course of trade of such nature as to discredit the
establishment, goods, services or industrial r commercial activities of a
competitor;
3. Indications or allegations the use of which in the course of trade is liable
to mislead the public as to the nature, manufacturing process,
characteristics, constituents, quality or the stability for their purpose of
the goods or services;
4. Any act or practice, in the course of industrial or commercial matters,
resulting in the disclosure, acquisition or use by other of information
without the consent of the person lawfully in control of that information
in a manner contrary to honest industrial or commercial practice as long
as such information relates to sale or manufacture of goods or provision
or services and:
a. Is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within circles that normally
deal with the kind of information in question;
b. Has a commercial value because it is secret; and
c. Has been subject to reasonable steps under circumstances, by the
person lawfully in control of the information, to keep it secret.
5. Making of false or deceptive statements in the course of trade;
6. Misleading advertising; or
7. Fraudulently registering or applying for registration of a trade mark.
Misleading and comparative advertisement: As per section 68, comparative

advertisement shall be lawful as far as comparison is concerned. Such
comparison shall be subject to following conditions namely:
1. It is not misleading;
2. It compares goods or services meeting the same needs or intended for
the same purpose;
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3. It objectively compares one or more material, relevant, verifiable and

representative features of those goods and services, which may include
price;
4. It does not create confusion in the market place between the advertiser
and competitor, or between the advertiser’s trade marks, trade names,
other distinguishing marks, goods or services and those of the
competitor;
5. It does not discredit or disparage the trade marks, trade names, other
distinguishing marks, goods, services, activities or circumstances of a
competitor;
6. For products with designation of origin, it relates in each case to
products with same designation;
7. It does not take unfair advantage of the reputation of a trade mark,
trade name or other distinguishing marks of a competitor or of the
designation of origin or competing products; and
8. It does not prevent goods or services as imitations or replicas of goods
or services bearing a protected trade mark or trade name.
ASSIGNMENT / TRANSMISSION AND LICENSING

Assignment of Registered Trade Mark: Trade marks are intangible asset and
like any other assets can be transferred from one owner to another. Such
transfers can take place in the form of an Assignment or Transmission. In other
words, a trademark assignment signifies the transfer of owner’s rights, title,
and interest in a trade mark to some other party whether along with or
without the goodwill of the business. The transferring party is called “assignor”
and the receiving party is called “assignee”. In case of a registered Trademark,
such assignment is required to be recorded in the Register of trade marks.
According to sec: 69, a registered trade mark shall be transmissible by
assignment, testamentary deposition or operation of law in the same way as
other personal or moveable property [sec 69 (1)]. It shall be transmissible
either independently or in connection with the goodwill of a business [sec 69
(2)]. It is also important to note that an assignment or other transmission of a
registered trade mark may be partial or limited so as to apply in relation to: (a)
some but not all of the goods or services for which the trade mark is
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registered; or (b) use of the trade mark in a particular manner or a particular

locality [sec 69 (3)]. Such assignment shall be in writing and signed by, or on
behalf of, the assignor or, as the case may be, a personal representative.
Licensing of Registered Trade Mark: Licensing of registered trade mark

involves permitted use of a trade mark belonging to a proprietor by another
person on his own goods or services. A license differs from assignment, as is
the grant of permission to use a mark in some manner but does not transfer
any rights of ownership in the mark.
As per section 75, a license to use a trade mark may be general or limited [sec
75 (1)]. A limited license may, in particular apply in relation to: (a) some but
not all of the goods or services for which the trade mark is registered; or (b)
use of the trade mark in a particular manner or particular locality [sec 75 (2)]. It
shall be in writing and signed by or on behalf of grantor [sec 75 (3)]. A license
shall be binding on a successor in title to the grantor’s interest unless the
license provides otherwise [sec 75 (4)]. A sub-license may also be granted by a
licensee if the license provides so [sec 75 (5)].
Exclusive License: An exclusive license means a license, whether general or

limited, authorizing the licensee to the exclusion of all other persons including
the person granting the license, to use a registered trade mark in the manner
authorized by the license [sec 76 (1)]. An exclusive licensee shall have the same
rights as against the successor in title who is bound by the license as he had
against the person granting the license [sec 76 (2)].
Registration of transaction affecting registered trade mark: The following
shall be registerable transactions and they shall be ineffective and unprotected
unless registered:
1. An assignment of a registered trade mark or any right in it;
2. The grant of a license under a registered trade mark;
3. The granting of any security interest whether fixed or floating over a
registered trade mark or any right in or under it;
4. The making by personal representatives of an assent in relation to a
registered trade mark or any right in or under it;
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5. An order of a High Court, District Court or other competent authority

transferring a registered trade mark or any right in or under it [sec 70
(2)].
Mode of Registration: The prescribed particulars of a transaction shall be
entered in the register on an application being made to the Registrar by: (a) a
person claiming to be entitled to an interest in, or under, a registered trade
mark by virtue of a registerable transaction; or (b) any other person claiming to
be affected by such a transaction [sec 70 (1)].
Revocation of Registration: The registration of a trade mark may be revoked

on any of the following grounds:
1. If it has not been put to bonafide use in Pakistan for a period of five
years by proprietor of his authorized agent, in relation to the goods or
services for which it is registered and there are no proper reasons for its
non-use [sec 73 (a)];
2. If bondafide use has been suspended for an uninterrupted period of five
years and there are no proper reasons for its non-use [sec 73 (b)];
3. If in consequence of acts or inactivity of proprietor, it has become the
common name in trade for a product or service for which it is registered
[sec 73 (c)];
4. If in consequence of the use of it by the proprietor or with his consent in
relation to the goods or services for which it is registered, it is liable to
mislead the public, particularly as to the nature, quality or geographical
origin of those goods or services [sec 73 (d)].
However, a trade mark shall not be revoked if its use is commenced or
resumed after the expiry of five years’ period and before the application for
revocation is made.
Where & by whom application made: An application for revocation may be
made by an interested party to the Registrar. However, if proceedings
concerning trade mark in question are pending in the Court, the application
shall be made to the Court; and in case the application is made to the
Registrar, he may at any stage of the proceedings refer the application to the
Court [sec 73 (4)].
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Surrender of Registered trade mark: A registered trade mark may be

surrendered by the proprietor in respect of some, or all, of goods or services
for which it is registered. Further, provisions may be made by rules as to the
manner and effect of surrender; and for protecting the interests of other
persons having right in the registered trade mark.
Grounds of Invalidity of Registration: The registration of a trade mark may be
declared invalid on any of the following grounds:
1. If it is registered in breach of section 14 (absolute grounds of refusal of
registration of trade mark) [sec 80 (1)];
2. An earlier trade mark in relation to which the conditions set out in sub-
section (1), (2) or (3) of sec 17 obtain [sec 80 (2)(a)];
3. An earlier right in relation to which the conditions set out in sub-section
(4) of sec 17 is satisfied, unless the proprietor of that earlier trade mark
or other mark has consented to the registration [sec 80 (2)(b)].
Where & by whom application made: An application for declaration of
invalidity may be made by an interested party to the Registrar or the Court.
However, if proceedings concerning trade mark in question are pending in the
Court, the application shall be made to the Court; and in case otherwise the
application is made to the Registrar, he may at any stage of the proceedings
refer the application to the Court [sec 80 (4)].
Effect of Acquiescence: If the owner of earlier trade mark or other earlier
rights has acquiesced in the use of a registered trade mark in Pakistan for a
period of five years from the date of its registration, he cannot entitle on the
basis of that earlier trade mark or other right to: (a) apply for a declaration that
the registration of the later trade mark is invalid; or (b) oppose the use of the
later trade mark in relation to the goods or services in relation to which it has
been so used, unless the registration of the later trade mark was applied for or
used in bad faith [sec 81 (1)]. Furthermore, the proprietor of the later trade
mark shall not be entitled to oppose of the earlier trade mark or, as the case
may be, the exploitation of the earlier right, notwithstanding that the earlier
trade mark or right may no longer be invoked against his later trade mark [sec
81 (2)].
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Collective Marks: A collective trade mark refers to a mark owned by an

association and used to distinguish the goods or services of members of the
association which is the proprietor of the mark from those of other
undertakings [sec 82].
Certification Mark: A certification mark refers to a mark indicating that the
goods or services in connection with which it is used are certified by the
proprietor of the mark in respect of origin, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics [sec 83].
Domain Name: A domain name refers to a mark which is a user friendly
substitute for an internet address [sec 84]. It is registered for a period of five
years from the date of registration and may be renewed for further periods of
like term as long as the domain name is in actual use on internet.
Protection of Well Known Trade mark: Generally a Trade Mark is not
protected in Pakistan until and unless it is registered in Pakistan, meaning
thereby that no infringement proceedings under the Ordinance may be
initiated in Pakistan in respect of a Trade Mark which is not registered in
Pakistan. However, a Trade Mark is entitled to limited protection in Pakistan,
even if it is not registered in Pakistan, provided that it is considered a well
known Trade Marks under the Paris Convention.
As per section 86 of this ordinance, a trade mark is entitled to protection as a
well known trade mark if is so entitled under the Paris Convention and which is
well known in Pakistan as being mark of a person who is: (a) national of a
Convention country; or (b) domiciled in, or has a real and effective industrial
commercial establishment in, a Convention country.
Determination of nature: In order to determine that whether or not a
trademark is well known, the tribunal shall take into consideration the
following factors:
1. The amount of Pakistan or worldwide recognition of the Trade Mark;
2. The degree of inherent or acquired distinctiveness of the Trade Mark;
3. The Pakistan or worldwide duration of the use and advertising of the
Trade Mark;
4. The Pakistan or worldwide commercial value attributed to the Trade
Mark;
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5. The Pakistan or worldwide geographical scope of the use and advertising

of the Trade Mark;
6. he Pakistan or worldwide quality and image that the Trade Mark has
acquired; and
7. The Pakistan or worldwide exclusivity of use and registration attained by
the Trade Mark and the presence or absence of identical or deceptively
similar third party Trade Marks validly registered or used in relation to
identical or similar goods and services
Trade Name: Pursuant to section 92, a trade name shall be protected without
the obligation of filing or registration under this ordinance whether it forms
part of a trade or not.
Rectification or Correction of Register: Rectification is the legal procedure
to correct or rectify an error or an omission that has been made in the details
of a trademark as recorded in the trademark register. In accordance with
section 96 (1), any person having a sufficient interest may seek rectification of
an error or omission in the Register but such rectification will not be in a
manner to affect the validity of registration of a trade mark.
Where & by whom application made: An application for rectification may be
made to the Registrar. However, if proceedings concerning trade mark in
question are pending in the Court, the application shall be made to the Court;
and in case the application is made to the Registrar, he may at any stage of the
proceedings refer the application to the Court [sec 96 (2)].
Moreover, may Registrar may enter any change in the name or address
recorded in Register on the application made by the proprietor of the
registered trade mark or his licensee [sec 96 (4)].
PENALTIES
Penalty for Applying false trade description, etc: A person shall be punished
with imprisonment of either description for a term of atleast three months and
not more than two years, or with fine which shall not be less than fifty
thousand rupees or with both, if he:
1. Applies any false trade description to goods or services;
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2. Tempers with, alters or effaces an indication of origin which has been

applied to any goods to which it is required to be applied u/s 126
(address for service);
3. Applies a false indication required to be applied u/s 126 (address for
service) to any goods as to the country of place of manufacture, or the
name or address of manufacturer, or a person for whom the goods are
manufactured;
4. Causes any of the aforementioned things to be done unless he proves
that he acted without intent to defraud [sec 99].
Enhanced penalty on second or subsequent convictions: Any person convicted
again for the offence u/s 99 shall be punished with imprisonment of either
description for a term of atleast six months and not more than three years, or
with fine of atleast fifty thousand rupees, or with both [sec 100].
Falsification of entries in Register: Whoever makes, or cause 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 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 shall not be
less than three months but which may extend to two years, or with fine which
shall not be less than fifty thousand rupees, or with both [sec 101].
Falsely representing a trade mark as registered: Every person shall be

punishable with imprisonment for a term which shall not be less than one
month but which may extend to six months, or with fine which shall not be less
than twenty thousand rupees, or with both, if he makes any representation:
1. With respect to a mark not being a registered trade mark, to the effect
that it is a registered trade mark;
2. 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 separately
registered as a trade mark;
3. To the effect that a registered trade mark is registered in respect of any
goods or services in respect of which it is not registered; or
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4. To the effect that the registration of a trade mark gives an exclusive right
to the use thereof in any circumstances, but in fact the registration does
not give that right having regard to limitations entered on the Register.
Complaint Mechanism: The Registrar may, either suo moto or upon a
complaint in writing made to him, call upon any person who is allegedly
contravening any of the above provisions to show cause as to why action
should not be taken against him. However, the powers of Registrar shall be
limited to the imposition of fine, or to refusal of application for registration of
the trade mark is registration is pending, or to invalidation of the registration if
the trade mark is registered, or any combination thereof, as the case may be
[sec 102 & proviso].
Improperly describing a place of business as connected with the Trade Marks
Registry: Whoever uses his place of business, or on any document issued to
him, or otherwise, words which would reasonable lead to the belief that his
place of business is, or is officially connected with, the Trade Marks Registry,
he shall be guilty of an offence punishable with imprisonment for a term which
may extend to two years, or with fine, or with both [sec 107].
Powers to Award Compensation for Offences: A competent court may, while
passing a sentence of fine, direct that an amount not exceeding fifty percent of
the fine imposed by it, but commensurate with the loss suffered by the party,
shall be paid as compensation to the person whose right has been infringed or
to the heirs or legal representatives of such person [sec 105 (1)]. Such
compensation shall not prejudice the right to claim of any claim in a suit or
other proceedings which may be instituted or pending in a Court, in relation to
the same matter [sec 105 (2)].
_______________________
Appeal Against the Decision of Registrar: An appeal against any decision of
the Registrar under this ordinance or rules made thereunder to the High Court
having jurisdiction, within prescribed period. However, 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 lie to that High Court or, as the case
may be, to the High Court in whose jurisdiction that District is situated [sec 114
(1) & proviso].
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Moreover, in an appeal by an applicant for registration against a decision of

the Registrar u/s 21, 22, or 28, the Registrar or any party opposing the appeal
shall not, save with the express permission of the Court, 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 grounds are advanced, the applicant for registration may, on giving
notice in the prescribed manner, withdraw his application without being liable
to pay the costs of the Registrar or the parties opposing his application [sec
114 (2)].
Suits for Infringement to be instituted before District Court: Pursuant to
section 117, no suit for the infringement of a trade mark or otherwise relating
to any right in a trade mark shall be instituted in any Court inferior to a District
Court having jurisdiction to try the suit.
Geographical Indication: A geographical indication (GI) is a sign used on

products that have a specific geographical origin and possess qualities or a
reputation that are due to that origin. In order to function as a GI, a sign must
identify a product as originating in a given place. In addition, the qualities,
characteristics or reputation of the product should be essentially due to the
place of origin. Since the qualities depend on the geographical place of
production, there is a clear link between the product and its original place of
production. These are typically used for agricultural products, foodstuffs, wine
and spirit drinks, handicrafts, and industrial products.
Pursuant to section 2 (xix), geographical indication, in relation to goods
originating in a particular country or in a region or locality of that country,
means a mark recognized in that country as a mark indicating that the goods:
(a) originated in that country, region or locality; and (b) have a quality,
reputation or other characteristic attributable to their geographical region.
TYPES OF TRADE MARK

1. Fanciful or Coined Trade Marks: Fanciful or coined marks are
neologisms (a newly coined word or expression) which have been
invented for the sole purpose of functioning as a trademark and have no
other meaning than acting as a mark.
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2. Arbitrary Trade Marks: An arbitrary mark is commonly known word that

is applied to an unfamiliar product. Although, the terms are found in a
dictionary, they have no relevance when applied to the goods in
question and are, thus, arbitrary.
3. Suggestive Trade Mark: Suggestive marks are marks that suggest a

quality or characteristic of the goods and services. It is a term that, while
it does not expressly state the nature of the goods or service, can still be
associated with said goods through a basic relationship. Suggestive
marks require some imagination, thought, or perception to reach a
conclusion as to the nature of the goods or services.
4. Descriptive Trade Mark: A descriptive trademark identifies one or more

characteristics of a product or service covered by the mark and only
serves to describe the product.
5. Generic Trade Marks: A generic term is the common name for the
products or services in connection with which it is used. Generic "marks"
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are devices which actually name a product and are incapable of

functioning as a trademark.
TM Owner Generic Name/ Mark Name of TM
FIAT CHRYSLER COMPACT SUV LIP
PFIZER BALM
JOHNSON ADHESIVE BANDAGES
& JOHNSON
WHAM-O FLYING DISC INLINE
NORDICA SKATES
6. Genericized Mark: A genericized trademark is a trademark or brand

name that has become the generic name for, or synonymous with, a
general class of product or service. Trademark erosion, or genericide
happens when a trademark becomes so common that it starts being
used as a common name. Once it becomes common, it cannot be
granted trademark protection.
Common Name Genericized Trade Mark

MOVING STAIRCASES ESCALATOR
PETROLEUM DISTILLATE KEROSENE
RETURN TOPS YO-YO
SLIDE FASTENERS ZIPPER
VACUUM FLASKS THERMOS
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GSLC, HYD.

The Trade Marks Ordinance 2001

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The Trade Marks Ordinance 2001

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The Trade Marks Ordinance 2001 Page 1 of 31

Subject The Trademark Ordinance, 2001

REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF TRADE MARKS

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4. Trade Marks consisting exclusively of marks or indications which have

PROCEDURE FOR, AND DURATION OF, REGISTRATION

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f. Full name, address and contact details of agent, if the application is

Examination of Application: After an application for registration of a trade

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limitations [sec 27 (5)]. In case of refusal or conditional acceptance, the

Opposition proceedings to Application: Any person may give a notice of

Grounds of Opposition: The registration of a trade mark may be opposed on

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7. The pre-acceptance advertisement of the application under exceptional

Withdrawal of Application: The applicant may withdraw his application at any

Definition of Divisional Application: A divisional application means another

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Duration of Registration: A trade mark is registered for a period of ten years

Renewal of Registration: The Registrar informs the proprietor of a registered

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Alteration of Registered Trade Mark: The Registrar may, at the request of

REGISTRATION AND EFFECT THEREOF

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Infringement of Registered Trade Mark: A registered trade mark shall be

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with intent to sale the same to another including proprietor of the

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totally or in part, any representation of the trade mark without totally

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Registration to be conclusive as to validity after five years: In all legal

Action for infringement: The proprietor of a registered trade mark may, in an

Order for Delivery-up of Infringing Goods, Material or Articles: The proprietor

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material or articles are delivered-up to a person as aforesaid, he shall retain

Order as to disposal of Infringing goods, material or articles: When the

Remedy for Groundless Threats of Infringement Proceedings: If a person

IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES

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2. The Collector of Customs shall also release the seized goods to

Action for infringement against importation of goods: The applicant may

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Disposal of forfeited goods: The Collector of Customs shall dispose of any

UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT

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1. All acts of such nature as to create confusion by any means whatsoever

Misleading and comparative advertisement: As per section 68, comparative

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3. It objectively compares one or more material, relevant, verifiable and

ASSIGNMENT / TRANSMISSION AND LICENSING

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registered; or (b) use of the trade mark in a particular manner or a particular

Licensing of Registered Trade Mark: Licensing of registered trade mark

Exclusive License: An exclusive license means a license, whether general or

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5. An order of a High Court, District Court or other competent authority

Revocation of Registration: The registration of a trade mark may be revoked

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Surrender of Registered trade mark: A registered trade mark may be

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Collective Marks: A collective trade mark refers to a mark owned by an

5. The Pakistan or worldwide geographical scope of the use and advertising