What is a trademark?
The Trade Marks Ordinance 2001 defines a trademark any mark capable of
being represented graphically which is capable of distinguishing goods or
services of one undertaking from those of other undertakings. A sign can
include a letter, word, name including personal name, signature, figurative
element, numeral, device, brand, heading, label, ticket, aspect of packing,
shape, color, sound or any combination of these features.
Why register a trademark?
If a trade mark isn’t registered and infringement is suspected, the owner must
establish by extensive evidence that as a result of its use of and reputation in
the mark the other person’s use is likely to cause deception or confusion. The
dispute would be dealt with under the common law action of passing off.
What are the criteria for registration?
In order to be registered, a trademark cannot be one that other traders need to
use to promote their own goods or services, such as a directly descriptive term,
geographic word or common surname. It must also be capable of distinguishing
the applicant’s goods or services from those of other traders and cannot
mislead the public about the nature of the goods or services.
When has a trade mark been infringed?
In Pakistan, a registered trade mark is infringed by the unauthorized use of that
mark, or a mark that is substantially identical or deceptively similar to it:
• In relation to any goods or services for which the trade mark is registered;
• In relation to goods or services that are similar (Unless the alleged infringer
establishes the use isn’t likely to deceive or cause confusion); or
• Where the relevant mark is well-known in Pakistan and use (even on
unrelated goods or services) indicates a connection with the owner and
thereby adversely affects its interests.
What is the role of a trademark attorney?
Trademark attorneys are qualified to act on behalf of clients (along with
registered patent attorneys and lawyers) in relation to matters arising under the
Trade Marks Ordinance, 2001. They advised on issues relating to registration
and enforcement of trade marks and prosecute the applications before the Trade
Marks Registry.
:: Trademark Registration Process
RADE MARK LAWS IN PROTECTION OF INTELLECTUAL PROPERTY
RIGHTS
Trade Marks Ordinance 2001
Trade Marks Ordinance 2001 deals with the remedies regarding protection of Intellectual Property Rights in
case of violation of any registered trade mark.
Infringement of Trade Marks
Section 39 and 40 of the Trade Marks Ordinance 2001 deal with the situations where an infringement of a
registered trademark has been occurred. Section 39 says that a registered trademark deems to be a personal
property of the proprietor. If any person other than the proprietor uses that mark for the trade which is
similar to the goods or services for which that mark has been registered, it shall be deemed to be the
infringement of the registered trademark under Section 40. If the words “registered goods” have been
displayed on their packaging or on their container, it is a notice to prohibition of certain acts relating to
those goods under Section 41.
No infringement in certain cases
Section 42 of the Trade Marks Ordinance 2001 describes certain conditions in which trade mark has not
been infringed:
• Where the person’s name or person’s place of business, so long as such use doesn’t result in a likelihood
of confusion or otherwise interfere with an existing trade mark or other property right;
• The name of the predecessor in business of the person or the name of the predecessor’s place of business;
• The person uses the mark in a good faith to indicate the kind, quality, quantity, intended purpose, value,
geographical origin, or some other characteristics of goods or service; or
• The person uses the mark for the purposes of comparative advertising.
Action for Infringement
Section 46 says that the action for infringement of the trade mark can be taken by the proprietor of the trade
mark.
Remedies for Infringement
a Damages;
b Injunctions;
c Accounts; or
d Any other remedies which are available to the person having some other property rights.
Place where the suit has to be instituted
According to Section 117 of the Trade Marks Ordinance 2001, any suit for the infringement of any trade
mark shall be instituted before District Court.
Transitional Provisions
The provisions of the Fourth Schedule shall have effect with respect to the transitional matters, including
the treatment of trademarks registered under the Trade Marks Act, 1940, and applications for registration
and other proceedings pending under that Act, on the commencement of the Trade Marks Ordinance 2001.
GENERAL REMEDIES UNDER THE CODE OF CIVIL PROCEDURE 1908
Temporary Restraining Order and a Preliminary or Permanent Injunction
If you are being wronged, you may ask the appropriate court to grant a Temporary Restraining Order and a
Preliminary or Permanent Injunction to prevent and/or stop further infringement under Order XXXIX Rule
1 and 2 of the Code of Civil Procedure 1908.
Statutory Damages
Allegedly infringing items or articles can be impounded while the action is pending and may be ordered
destroyed or subject to other disposition if there is an infringement. An infringer can be liable for actual
damages plus additional profits of the infringer or statutory damages.
Liable for Injury to Business Reputation
Further, an infringer could be held liable for injury to business reputation or the dilution in the value of the
copyright, patent, or trademark. Costs and attorneys' fees sometimes also may be awarded to the prevailing
party.
PENALTIES IN PAKSITAN PENAL CODE DESIGNED AGAINST
INFRINGEMENT OF TRADE, PROPERTY AND OTHER MARKS
Trademark has been defined in Section 478 of the Pakistan Penal Code and Property Mark has been
explained in Section 779 ibid. Section 480 defines the false trademark and 481 deals with the using of false
property mark.
The text of Section 478 to 489 of the Pakistan Penal Code 1860, provide penalties against infringement of
Trade, Property and other Marks which is given below:
Punishment for using a false Trademark or Property Mark
Section 482 says that whoever uses any false trademark or any false property mark shall be punished with:
a imprisonment of for a term which may extend to one year; or
b with fine; or
c with both.
Punishment for counterfeiting a Trademark or Property Mark
According to Section 483 the punishment for counterfeiting any trademark or property mark is two years
with fine or confinement only or fine only.
Punishment for counterfeiting a mark used by a public servant
The offence under Section 484 is an aggravated form of the offence described in the preceding one. An
enhanced punishment is, therefore, given where a mark used by a public servant is counterfeited. A three
years punishment has been described for counterfeiting a property mark or any other mark used by a public
servant.
Punishment for making or possessing any instrument for counterfeiting a Trademark or Property Mark
According to Section 485 whoever makes or has in his possession any die, plate or other instrument for the
purpose of counterfeiting a trademark or property mark shall be punished with imprisonment for three years
with or without fine or fine only.
Making a false mark upon any receptacle containing goods
Section 487 furnished the false marking of case, package, or receptacle containing goods in a manner
reasonable calculated to deceive a public servant or any other person. It is not required that the mark should
be a trade mark or property mark. A person making a false mark upon any receptacle containing goods can
escape punishment under this section only if he proves that he acted without intent to defraud.
Punishment for making use of any such false mark
According to Section 488 whoever makes use of any such false mark in any manner prohibited by Section
487 be punished as if he has committed an offence against Section 487 unless he proves that he acted in
good faith.
Punishment for tempering with Property Mark
Section 489 says whoever removes, destroys, defaces or adds to any property mark with intention to cause
injury to any person shall be punished with one year imprisonment with fine or without fine or fine only.
PROTECTION UNDER CUSTOMS ACT 1969
Section 15 specified certain goods which are not allowed to brought into Pakistan, whether by air, or by sea
or by land. It includes:
i goods having applied a counterfeit trade mark;
ii goods having applied a false trade description;
iiigoods made or produced outside Pakistan and having applied any name or trade mark of any proprietor,
dealer or trader in Pakistan unless:
a
the name or trade mark is as to every application, accompanied by a definite indication of the
goods that these are made or produced in a place outside Pakistan;
b
the country in which that place is situated is in that indication shown in letters as large and
conspicuous as any letter in the name or trade mark.
iv goods made or produced outside Pakistan and intended for sale and having applied a design in which
copy right exists under the Patents and Designs Act.
Prohibition or restriction of importation or exportation of goods
According to Section 16, the Central Government may, from time to time, by notification in the official
gazette, prohibit or restrict the bringing into or taking out of Pakistan of any goods of specified description
under Section 15 by air, sea or land.
Confiscation of Goods
Section 17 of the Customs Act 1969 says that if any goods specified in Section
mported into or attempted to be exported out of Pakistan shall be liable to detention
iscation.