Trademark Ordinance: Relative Grounds for Honest Concurrent Use

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Questions and Answers

What is the consequence of acquiescence for a continuous period of five years from the date of registration in the use of a registered trade mark in Pakistan?

Loss of entitlement to apply for invalidity of the later trade mark registration or oppose its use

Under what circumstances can the owner of an earlier trade mark oppose the use of a later mark in Pakistan?

When the owner of the earlier mark is not aware of the use

When the registration of the later mark was applied for in bad faith (correct)

When the earlier trade mark is not registered

When the use of the later mark is legitimate

Protection as a well-known trade mark under the Paris Convention requires the mark to be well-known in Pakistan only.

False

What factors are considered by the tribunal to determine if a trade mark is well-known under the Paris Convention?

Recognition, distinctiveness, duration of use, commercial value, geographical scope, quality, exclusivity Signup and view all the answers

A trade name shall be protected without the obligation of filing or registration under this Ordinance whether if forms part of a ____ or not.

trade mark Signup and view all the answers

Define 'honest concurrent use' as mentioned in the Trade Mark Ordinance.

Use in Pakistan by the applicant or with his consent that would formerly have amounted to honest concurrent use as per the Trade Marks Act, 1940. Signup and view all the answers

What are the grounds on which an application for registration of a trade mark may be opposed?

All of the above Signup and view all the answers

The registration of a trade mark in respect of particular goods may be opposed if the trade mark contains a geographical indication.

True Signup and view all the answers

A registered trade mark shall be considered a __________ property.

personal Signup and view all the answers

In all legal proceedings, if a person has in possession for sale any goods bearing a mark which infringes a registered trade mark, they shall be treated as a party to infringement of a registered trade mark unless they ___.

had reasons to suspect the genuineness of the mark Signup and view all the answers

Using a trade mark to indicate the kind, quality, quantity, intended purpose, value, or geographical origin of goods or services is considered an infringement.

False Signup and view all the answers

What does 'an exclusive license' mean according to the Ordinance?

a license authorizing the licensee to the exclusion of all other persons to use a registered trade mark Signup and view all the answers

If a registration of a trade mark is subject to a disclaimer, a person shall not infringe the trade mark by using the disclaimed part of the trade mark, unless ___.

the use of that part infringes the trade mark Signup and view all the answers

Study Notes

Raising of Relative Grounds in Case of Honest Concurrent Use

If an applicant proves honest concurrent use of a trademark in Pakistan to the satisfaction of the Registrar, the Registrar shall not refuse the application due to an earlier trademark or right unless opposition is raised by the proprietor of that earlier trademark or right.
"Honest concurrent use" refers to use by the applicant or with their consent in Pakistan that would have formerly amounted to honest concurrent use for the purposes of the Trade Marks Act, 1940.

Examination of Application

The Registrar shall examine whether an application for registration of a trademark satisfies the prescribed requirements.
The Registrar shall carry out a search of earlier trademarks to the extent considered necessary.
If the Registrar finds that the requirements are not met, the applicant shall be informed and given an opportunity to make representations or amend the application.
If the applicant fails to respond or satisfy the Registrar, the application shall be refused.

Publication, Opposition Proceedings, and Observations

When an application is accepted, the Registrar shall cause it to be advertised in the Journal, which constitutes sufficient notice of acceptance.
Any person may, within two months from the date of advertisement, give notice to the Registrar of opposition to the registration.
The notice of opposition shall include a statement of the grounds of opposition.
The Registrar shall serve a copy of the notice on the applicant, who shall send a counter-statement within one month.

Grounds of Opposition

Registration of a trademark may be opposed on any of the grounds on which an application for registration may be rejected, except that the trademark cannot be represented graphically.
Additional grounds for opposition include:
- The applicant does not intend to use or authorize the use of the trademark in Pakistan.
- The application or supporting documents were amended contrary to the provisions of this Ordinance.
- The Registrar accepted the application based on false evidence or representations.
- The pre-acceptance advertisement of the application was without sufficient cause.

Registration

Where an application has been accepted and no notice of opposition has been given, or all opposition proceedings have been withdrawn or decided in favor of the applicant, the Registrar shall register the trademark.
Registration shall be subject to payment of the prescribed fee within the prescribed period.

Rights Conferred by Registration

A registered trademark shall be a personal property.
The proprietor of a registered trademark shall have exclusive rights in the trademark, which are infringed by use of the trademark in Pakistan without their consent.

Infringement of Registered Trademark

A person shall infringe a registered trademark if they use a mark identical with or deceptively similar to the trademark in relation to goods or services identical with or similar to those for which the trademark is registered.
Infringement may also occur if the mark is used in relation to goods or services not similar to those for which the trademark is registered, but the use is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

When a Trademark is Not Infringed

A person shall not infringe a registered trademark if they use the mark in good faith to indicate:
- Kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services.
- Time of production of goods or rendering of services.
- Intended purpose of goods, in particular as accessories or spare parts, or services.
A person shall also not infringe a registered trademark if they use the mark for the purposes of comparative advertising.

Contemporary Issue: Registration to be Prima Facie Evidence of Validity

The fact that a person is registered as the proprietor of a trademark shall be prima facie evidence of the validity of the original registration of the trademark and all subsequent assignments and transmissions thereof.

Action for Infringement

In an action for infringement, all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trademark as is available in respect of the infringement of any other property right.

Remedy for Groundless Threats of Infringement Proceedings

Where a person threatens to bring an action against another person on the ground that they have infringed a registered trademark, the person threatened may bring proceedings for relief against the person making the threat.
The relief may include a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, or damages in respect of any loss sustained by the threats.

Unfair Competition

"Unfair competition" means any act of competition contrary to honest business practices in industrial or commercial matters.
Acts of unfair competition may include:
- Creating confusion with the establishment, goods, services, or industrial or commercial activities of a competitor.
- Making false allegations to discredit a competitor.
- Indications or allegations that mislead the public as to the nature, manufacturing process, characteristics, or quality of goods or services.
- Disclosure, acquisition, or use of confidential information without consent.
- Making false or deceptive statements in the course of trade.
- Misleading advertising.
- Fraudulently registering or applying for registration of a trademark.### Revocation of Registration
A trade mark registration can be revoked on the following grounds:
- Non-use of the trade mark in Pakistan for 5 years after registration
- Suspension of use for 5 years with no proper reason
- Trade mark becoming a common name in the trade for a product or service
- Misleading the public due to the use of the trade mark

Grounds for Invalidity of Registration

Registration can be declared invalid if:
- The trade mark was registered in breach of section 14
- There is an earlier trade mark or right that meets certain conditions
However, registration will not be declared invalid if the trade mark has acquired a distinctive character after registration due to its use

Rectification of Register

Any person with a sufficient interest can apply for rectification of an error or omission in the Register
However, an application for rectification cannot be made with respect to matters affecting the validity of the registration of a trade mark

Licensing of Registered Trade Marks

A license to use a registered trade mark can be general or limited
A limited license can apply to specific goods or services, use in a particular manner, or use in a particular locality
A license must be in writing and signed by the grantor
Unless the license provides otherwise, it will be binding on a successor in title to the grantor's interest
A sub-license can be granted by the licensee

Exclusive Licenses

An exclusive license authorizes the licensee to the exclusion of all other persons, including the person granting the license, to use a registered trade mark
The expression "exclusive licensee" shall be construed accordingly

Rights of Licensees in Case of Infringement

A licensee is entitled to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter that affects their interests
If the proprietor refuses or fails to do so, the licensee can bring the proceedings in their own name as if they were the proprietor

Effect of Acquiescence

If the owner of an earlier trade mark or other earlier right has acquiesced for 5 years from the date of registration in the use of a registered trade mark, being aware of that use, they will cease to be entitled to:
- Apply for a declaration that the registration of the later trade mark is invalid
- Oppose the use of the later mark in relation to the goods or services in which it has been used

Protection of Well-Known Trade Marks

A well-known trade mark is one that is entitled to protection under the Paris Convention and is well-known in Pakistan as being the mark of a person who is a national of a Convention country or has a real and effective industrial or commercial establishment in a Convention country
Factors considered in determining well-known status include:
- Recognition of the trade mark in Pakistan or worldwide
- Distinctiveness of the trade mark
- Duration of use and advertising of the trade mark
- Commercial value attributed to the trade mark
- Geographical scope of use and advertising
- Quality and image of the trade mark
- Exclusivity of use and registration

Trade Names

A trade name is protected without the obligation of filing or registration under this Ordinance, whether it forms part of a trade mark or not

Restraint of Use of Government Arms and State Emblems

A person is prohibited from using, without due authority, the flag of Pakistan, Government Arms, or names and titles of national heroes, or emblems of international organizations, in a manner that is misleading or calculated to deceive

Appeals

An appeal can be made against any decision of the Registrar under this Ordinance or rules made thereunder to the High Court having jurisdiction

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Description

This quiz covers the Trademark Ordinance and its provisions related to raising relative grounds in cases of honest concurrent use. It deals with earlier trademarks and rights, and the conditions set out in Section 17 of the Ordinance.