Trade Marks Ordinance, 2001

Exact source transcription retained, including print layout and extraction artifacts. Text SHA-256: ebc5a23289f929365adb6fa95685d06c41ce03c4b5ffe7c12bd42a52a191786c.

Page 1 of 91 
 
 
 
 
 
 
 
 
 
THE TRADE MARKS ORDINANCE, 2001 
 
 
 
 
 
 
           CONTENTS 
 
CHAPTER I. __ PRELIMINARY 
1. Short title, extent and commencement 
2. Definitions 
3. Goods and services when associated, etc. 
4. Reference to use of a trade mark, etc. 
5. Decision by tribunal regarding use of a trade mark 
6. Application of other laws not barred 
 CHAPTER II.__REGISTRAR, TRADE MARKS REGISTRY AND REGISTRATION OF 
TRADE MARKS 
7. Appointment of Registrar and other officers  
8. Power of Registrar to review, withdraw or transfer cases 
9. Trade Marks Registry and branches thereof 
10. Register of Trade Marks 
10A. Validity of electronic documents 
11. Evidence of entries in Register and things done by Registrar 
12. Classification of goods and services 
13. Publication of an alphabetical index of classification of goods and services 
 

 
Page 2 of 91 
 
 
 
 
14. Absolute grounds for refusal of registration 
15. Limitation as to colour 
16. Use of names of chemical compounds barred 
17. Relative grounds for refusal of registration 
18. Meaning of “earlier trade mark” 
19. Raising of relative grounds in case of honest concurrent use 
20. Registration of parts of trade marks and of trade marks as a series 
21. Registration subject to disclaimer 
CHAPTER III.__PROCEDURE FOR AND DURATION OF REGISTRATION 
22. Application for registration  
23. Date of filing 
24. Co-ownership of trade mark 
25. Meaning of Convention application, and right to priority 
26. Application to provide temporary protection during exhibition 
27. Examination of application 
28. Publication, opposition proceedings and observations 
29. Grounds of opposition 
30. Circumstances in which opposition may proceed in the name of a person other than the 
person who filed the notice of opposition 
31. Withdrawal of application 
32. Definition of divisional application 
33. Registration 
34. Duration and renewal of registration 
35. Renewal of registration 
36. Effect of removal from Register for failure to pay fee for renewal 
37. Alteration of registered trade mark 
38. Surrender of registered trade mark 
 
Page 3 of 91 
 
 
 
 
CHAPTER IV.__REGISTRATION AND EFFECT THEREOF 
39. Rights conferred by registration 
40. Infringement of registered trade mark 
41. Infringement of trade mark by breach of certain restrictions 
42. When a trade mark is not infringed 
43. Registration to be prima facie evidence of validity 
44. Registration to be conclusive as to validity after five years 
45. Saving for words used as name or description of an article or a substance 
CHAPTER V.__INFRINGEMENT PROCEEDINGS 
46. Action for infringement 
47. Order for erasure of offending mark 
48. Order for delivery up of infringing goods, material or articles 
49. Meaning of “infringing goods, material or articles” 
50. Period after which remedy of delivery be not available 
51. Order as to disposal of infringing goods, material or articles 
52. Remedy for groundless threats of infringement proceedings 
CHAPTER VI.__IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES 
53. Infringing goods, material or articles may be treated as prohibited 
54. Notice for intervention by customs authorities 
55. Furnishing of security or equivalent assurance to customs authority 
56. Collector of Customs may seize goods bearing infringing trade mark 
57. Notice of seizure 
58. Forfeiture of goods 
59. Release of goods 
60. Action for infringement against importation of infringing goods 
61. Action for infringement by licensee in relation to any seized goods 
 
Page 4 of 91 
 
 
 
 
62. Disposal of forfeited goods 
63. Power of the Collector of Customs to retain control of goods 
64. Insufficient security 
65. The Federal Government not be liable to loss, etc., suffered because of seizure 
66. Power of the Collector of Customs to make regulations 
CHAPTER VII.__UNFAIR COMPETITION AND COMPARATIVE ADVERTISEMENT 
67. Definition of unfair competition and provisions relating thereto 
68. Misleading and comparative advertisement 
CHAPTER VIII.__ASSIGNMENT AND TRANSMISSION 
 
69. Assignment of registered trade mark 
70. Registration of transactions affecting registered trade mark 
71. Application for registration of trade mark as an object of property 
CHAPTER IX.__USE OF TRADE MARKS AND LICENSEES 
72. Proposed use of trade mark by company to be formed 
73. Revocation of registration 
74. Use of trade mark by a person other than the proprietor thereof 
75. Licensing of registered trade mark 
76. Exclusive license defined 
77. General provisions as to the rights of licensees in case of infringement 
78. Exclusive licensee having rights and remedies of assignee 
79. Surrender of registered trade mark 
80. Grounds for invalidity of registration 
81. Effect of acquiescence 
82. Collective marks 
83. Certification marks 
84. Domain names 
 
Page 5 of 91 
 
 
 
 
CHAPTER X.__THE PARIS CONVENTION 
85. Meaning of “Paris Convention” and “Convention country” 
86. Protection of well known trade mark 
87. National emblems of Convention countries 
88. Emblems of certain international organizations 
89. Notification under Article 6ter of the Paris Convention 
90. Acts of agent or representative 
91. Nature of goods or services to which a mark is to be applied 
92. Trade name 
CHAPTER XA 
INTERNATIONAL REGISTRATION OF TRADE MARKS 
92A. International registration under Madrid Protocol  
92B. Definitions 
92C. Trade Marks Registry to deal with international applications 
92D. International application originating from Pakistan 
92G. Duration and renewal of international registration  
92H. Transformation 
92I. Extracts from the international register 
 
CHAPTER XI.__SPECIAL PROVISIONS FOR TEXTILE GOODS 
93. Textile goods 
94. Restrictions on registration of textile goods 
95. Advisory Committees 
CHAPTER XII.__RECTIFICATION AND CORRECTION OF THE REGISTER 
96. Rectification or correction of Register 
97. Adoption of entries to new classification 
 
 
 
Page 6 of 91 
 
 
 
 
CHAPTER XIII.__OFFENCES, PENALTIES AND PROCEDURE 
98. Meaning of applying a trade description 
99. Penalty for applying false trade description, etc. 
100. Enhanced penalty on second or subsequent convictions 
101. Penalty for falsification of entries in Register 
102. Penalty for falsely representing a trade mark as registered 
103. Restraint of use of Government Arms and State emblems 
104. Offences by companies 
105. Powers to award compensation for offenses 
106. Punishment of abetment in Pakistan of acts done out of Pakistan 
107. Penalty for improperly describing a place of business as connected with the Trade Marks 
Registry 
CHAPTER XIV.__MISCELLANEOUS AND GENERAL PROVISIONS 
108. Power of Registrar to require use of forms 
109. Information about applications and registered trade marks 
110. Costs, security for costs and fine 
111. Procedure before the Registrar 
112. Certificate of validity of contested registration 
113. Registrar's appearance in proceedings involving the Register 
114. Appeal against the decision of the Registrar 
115. Procedure before the Federal Government 
116. Procedure in certain cases of option to apply to the High Court, a District Court or the 
Registrar 
117. Suits for infringement to be instituted before IP Tribunal 
118. Costs of Registrar in proceedings before the High Court or an IP Tribunal 
119. Burden of proving use of trade mark 
120. Certain persons to be public servants 
 
Page 7 of 91 
 
 
 
 
121. Documents open to public inspection 
122. Death of a party to any proceedings under this Ordinance 
123. Extension of time 
124. Registrar and other officers not compellable to produce Register, etc. 
125. Power to require goods to show indication of origin 
126. Address for service 
127. Trade mark agents 
128. Fees 
129. The Federal Government and a Provincial Government to be bound 
130. Power to make reciprocal arrangements with any other Government 
131. Power of the High Court to make rules 
132. Power of the Federal Government to make rules 
133. Transitional 
134. Repeal and savings 
THE FIRST SCHEDULE 
THE SECOND SCHEDULE 
THIRD SCHEDULE 
THE FOURTH SCHEDULE 
 
Page 8 of 91 
 
 
 
 
THE TRADE MARKS ORDINANCE, 2001 
ORDINANCE NO. XIX OF 2001 
[13th April, 2001] 
AN   
ORDINANCE 
 
to amend and consolidate the law relating to trade marks 
 
WHEREAS it is expedient to amend and consolidate the law relating to trade marks and 
unfair competition and to p rovide for registration and better protection of trade marks and for the 
prevention of the use of fraudulent marks, and for matters ancillary thereto or connected therewith;  
 
AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of 
the Proclamation of the fourteenth day of October, 1999, and the Provisional Constitution Order 
No. 1 of 1999; 
AND WHEREAS the President is satisfied that circumstances exist which render it 
necessary to take immediate action; 
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth 
day of October, 1999 and the Provisional Constitution Order No. 1 of 1999, read with  the 
Provisional Constitution (Amendment) O rder No. 9 of 1999, and in exercise of all pow ers 
enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to 
make and promulgate the following Ordinance:— 
CHAPTER I.__ PRELIMINARY 
 1. Short title, extent and commencement.___(1) This Ordinance may be called the Trade 
Marks Ordinance, 2001. 
 (2) It extends to the whole of Pakistan. 
 (3) This section and section 132 shall come into force at once and the remaining provisions 
of the Ordinance shall come into force on such date as the federal Government may by notification in 
the official Gazette, appoint in this behalf. 
 2. Definations.—In this Ordinance, unless there is anything repugnant in the subject or 
context,__ 
1[(i)  “Act” means the Intellectual Property Organization of Pakistan Act, 2012 (Act 
No. XXII of 2012); 
(ia)  “administrative division” means the division to which business of this 
Ordinance stands allocated;] 
 
 
 
1Ins. by Act No. LVIII of 2023, s.2. 
 
Page 9 of 91 
 
 
 
 
1[(ib)]  “advertising” means the making of representation in any form in connection 
with a trade, business or profession in order to promote the supply of goods or 
services; 
(ii)  “assignment” in relation to a trade mark , means an assignment in writing by 
act of the parties concerned; 
(iii)  “authorized user” means a person authorised to use a trade mark in relation to 
goods or services under the control of the owner of the trade mark and 
includes a licensee; 
(iv)  “certification mark” means a certification mark as defined in sub-section (1) of 
section 83; 
(v)  “collective mark ” means a collective mark as defined in sub -section (1) of 
section 82; 
(vi)  “comparative advertisement ” means an advertisement which explicitly or by 
implication identifies a competitor or goods or services offe red by a 
competitor; 
(vii)  “Convention application” means an application as defined in sub-section (1) of 
section 25; 
(viii)  “Convention country” means a Convention country as defined in clause ( b) of 
section 85; 
1[(ix)  “Counterfeit trade mark goods” means any goods including packaging bearing 
without authorization a trade mark which is identical or deceptively similar to 
the trade mark  validly registered in respect of such goods or which cannot be 
distinguished in its essential aspects fro m such a trade  mark and  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 t he registration of trade mark, 
the day on which t he initial application within the meaning of sub -
section (1) of section 32 is filed; or 
(c)  in relation to an application to provide tempora ry 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: 
 
1Renumbered and Subs. by Act No. LVIII of 2023, s.2. 
 
Page 10 of 91 
 
 
 
 
(xi) “date of registration ”, in relation to the registration of a trade mark in respect 
 of particular goods or services, means the day fro m which the registration of 
 the trade mark in respect of those good s or services is taken to have had effect 
 under  sub-section (3) of section 33; 
 
(xii)  “deceptively similar” in relation to a trade mark, means such near resemblance 
between it and another trade mark that it is likely to deceive or cause 
confusion; 
(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 known trade mark or 
other parties, or likelihood of confusion or deception; 
(xiv)  1[* * * * * * *] 
(xv)  “divisional application ” means a divisional application as defined in  sub-
section (1) of section 32; 
(xvi)  “domain name” means the domain name as defined in sub-section (1) of 
section 84; 
(xvii)  “earlier trade mark” means an earlier trade mark as defined in subsection (1) 
of section 18; 
(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 whi ch it is applied whether by way of  addition, effacement or 
otherwise wh ere 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 m anufacture of m erchandise of 
some p erson 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 b elieve th at the s ervices are provided or rendered 
by some person other than the person whose service 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,__ 
 
1Omitted by Act No. LVIII of 2023, s.2.
 
Page 11 of 91 
 
 
 
 
                                                (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 on 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 n ame or initi als 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 s ervices in a m anner to  suggest that the s aid 
person authenticates or guarantees the nature or fitness for the purpose 
of the goods or services; 
1[(xix)  “geographical indication” shall have the same meaning as assigned thereto in 
the Geographical Indications (Registration and Protect ion) Act, 2020 (XVIII 
of 2020);] 
(xx)  “goods” means anything which is subject of trade, commerce or manufacture; 
1[(xxa)  “IP Tribunal” means the Tribunal established under section 16 of the Act; 
(xxb)  “international application” means an application for the international 
registration of trademarks in accordance with Madrid Protocol;] 
(xxi)  “Journal” means the Trade Marks Journal published under the authority of 
the Registrar; 
(xxii)  “licensee” means a person using a registered trade mark by virtue of a 
transaction; 
(xxiii)  “limitations” with its grammatical variations, means any limit ations of the 
exclusive right to the use of a trade mark given by the registration of a person 
as proprietor thereof, including limitations of that right as to mode of us e, 
as to use in  relation to goods or s ervices to be s old or otherwise t raded in 
within Pakistan, or as to use in relation to goods or services to be exported to 
any market outside Pakistan; 
1[(xxiiia) “Madrid Protocol” means the Protocol as defined in section 92B;] 
(xxiv)  “mark” includes, in particular, a d evice, brand, heading, label, ticket, name 
including personal name, signature, word, letter, numeral, figurative element, 
colour, sound or any combination thereof; 
 
1Subs. and Ins. by Act No. LVIII of 2023, s.2. 
 
Page 12 of 91 
 
 
 
 
(xxv)  “misleading advertising ” means any advertising which in any way, 
including its presentation, deceives or is likely to deceive the persons to 
whom it is addressed or whom it reaches and which, by reason of its 
deceptive nature, is likely to  affect their behaviour or which, for those 
reasons, injures or is likely to injure a competitor; 
(xxvi)  “name” includes any abbreviation of name;  
(xxvii)  “notify means to notify in the Journal; 
1[(xxviia)  “Organization” means the Intellectual Property Organization of Pakistan 
established under section 3 of the Act;] 
(xxviii)  “opponent” in relation to the registration of a trade mark, means the 
person who  has filed under sub -section (2) of s ection 28, a noti ce of 
opposition to the registration of the trade mark; 
(xxix)  “packaging” includes, in particular, any case, box, container, covering, 
folder, receptacle , vessel, casket, bottle, wrapper, band, reel, frame , 
capsule, cap, lid, stopper and cork; 
(xxx)  “Paris Convention” means the Paris Convention as defined in clause (a) 
of section 85; 
(xxxi)  “permitted use” in relation to a trade mark, means the use of the trade 
mark by an authorised user; 
(xxxii) “predecessor in title” in relation to a person who claims to be the 
proprietor of a trade mark, means__ 
(a)  if the trade mark was assigned or transmitted to one or more than 
one persons before it was assigned or t ransmitted to the first-
mentioned person, that other person or any of those other persons; 
or 
(b)  if sub-clause (a) does not apply, the person who assigned the trade 
mark, or from whom the trade mark was transmitted to the first-
mentioned persons; 
(xxxiii) “prescribed” means prescribed by rules made, in relation to proceedings 
before a High Court, by such High Court, and in other cases, made under 
this Ordinance; 
(xxxiv)  “proprietor”, in relation to a registered trade mark, means the person who 
is for the time being entered in the Register as Proprietor of that 
trade mark; 
 
 
1Ins. by Act No. LVIII of 2023, s.2. 
 
Page 13 of 91 
 
 
 
 
(xxxv)  “proprietor of earlier right”, in relation to a trade mark, means a person 
entitled to prevent the use of a trade mark; 
(xxxvi)  “Register” means the R egister to Trade Marks maintained under sub -
section (1) of section 10; 
(xxxvii)  “Registrar” means the Registrar of Trade Marks appointed under section 
7; 
(xxxviii)  “registered”, with its grammatical variations, means registered under this 
Ordinance or the Trade Marks Act, 1940 (V of 1940); 
(xxxix) “registered trade mark” means a trade mark which is actually on the 
Register; 
(xl)  “rules” means the rules made under this Ordinance; 
(xli)  “Schedule” means a Schedule to this Ordinance;  
(xlii)  “seized goods” means goods seized under section 56; 
(xliii) “service” means service of any description which is made available to 
users or pot ential users and includes the p rovision for services in 
connection with busin ess of any indust rial or commercial nature, and 
without limitation, includes banking, retailing, communication including 
telecommunication, education, law, financing, insurance, chit funds, real 
estate, transport, storage, material treatment, processing, supply of goods 
including electrical or other energy, boarding, lodging, entertainment, 
amusement, construction, repair, conveying of news or  information and 
advertising; 
(xliv)  “similar goods” includes goods which are of the same description;  
(xlv)  “similar services” included services which are of the same description; 
(xlvi)  “trade description” means any description, statement or other indication, 
direct or indirect__ 
(a) as to the number, quantity, measure, gauge or weight of any goods; or 
(b) as to the standard of quality of any goods or services according to 
classification commonly used or recognized in the trade; or 
(c)  as to-fitness for the purpose st rength, performance or behaviour of 
any goods, being drugs or foods; or 
(d)  as to the place or country in which or the time at which any goods or 
services were made, produced or provided, as the case may be; or 
(e)  as to the name and address or other indication of the identity of the 
manufacturer or of the person providing the se rvices or of the persons 
 
Page 14 of 91 
 
 
 
 
for whom the goods are manufactured or services provided; or 
(f)  as to the mode of manufacture or producing any goods or providing 
services; or 
(g)  as to the material of which any goods are composed; or 
(h)  as to any goods being the subject of an existing patent, privilege or 
copyright, and includes― 
(a)  any description as to the use of any mark which according to 
the custom of the trade is commonly taken to be an 
indication of any of the above matters; 
(b)  any description as to any imported goods contained in any bill 
of entry or shipping bill; and 
(c)  any other description which is likely to be misunderstood or 
mistaken for all or any of the said matters; 
(xlvii)  “trade mark” means any m ark capable of being represented graphically 
which is capable of distin guishing goods or s ervices of one un dertaking 
from those of other undertakings; 
(xlviii)  “Trade Marks Registry” means the Trade Marks Registry established under 
section 9; 
(xlix)  “trade names” means names used by a person to denote his trade or calling 
and includes 
 firms’ and companies’ names; 
(l)  “transmission” means t ransmission by operation of law,  devolution on the 
personal representative of a deceased person  and any other mode of transfer, 
not being assignment; 
1[(ii)  “Tribunal” means the Registrar, as the case may be, the High Court o r 
IP Tribunal before which the proceedings concerned are pending;] 
(lii)  “unfair competition ” means an unfair competition as defined in 
section 67; and 
(liii)  “word” includes an abbreviation of a word. 
 3. Goods and services when associated, etc.___ (1) For the purposes of this Ordinance___ 
 
 
1Subs. by Act  No. LVIII of 2023, s.2.  
 
Page 15 of 91 
 
 
 
 
(a)  goods and services shall be associated with each other if it is likely  that 
those goods might be sold or otherwise traded in and those services might 
be provided by the sam e business and so with descriptions of goods and 
descriptions of services;  
(b)  a trade mark shall be taken used on goods if the trade mark is used on any 
goods including second -hand goods, material or thing if it is woven in, 
impressed on, worked into, or  affixed or annexed to, the goods, material or 
thing. 
(c)  a trade mark shall be taken used in relation to goods or services if the trade 
mark is used ___ 
(i)  on any covering, packaging, document, label, band, ticket, reel or 
thing in or with which the goo ds are, or are intended to be, dealt with 
or provided in the course of trade;  
(ii)  in a manner likely to lead persons to believe that it refers to, 
describes or designates the goods or services;  
(iii)  on a signboard or in an advertisement; or  
(iv)  in an invoice, list, catalogue, business letter, business paper, price list 
or other commercial document. 
 (2) Where the owner of the trade mark exercises quality control over goods or services___ 
(a)  dealt with or provided in the course of trade by another person; and 
(b)  in relation to which the trade mark is used, 
 
 the other person shall be taken to use the trade mark in relation to the goods or services under 
 the control of the owner. 
 (3) Where another person deals with or provides, in the course of tra de, goods or services in 
relation to which a trade mark is used and the owner of the trade mark exercises financial control 
over the other person's relevant trading activities , the other person shall be taken to use the trade 
mark in relation to the goods or services under the control of the owner. 
 4. Reference to use of a trade mark , etc.___In this Ordinance, unless the context otherwise 
requires, any reference___ 
(a)  to use of a trade mark shall include reference to use of the trade mark in 
relation to goods, as well as, on goods; 
(b)  to use of a trade mark in relation to goods shall include reference to use of the 
trade mark on goods, or vice versa; 
 
Page 16 of 91 
 
 
 
 
(c)  to the Registrar shall be construed as including a reference to any officer when 
discharging the functions of the Registrar in pursuance of sub -section (2) of 
section 7; and 
(d)  to the Trade Marks Registry shall be construed as including a reference to any 
branch of the Trade Marks Registry. 
 5. Decision by tribunal regarding use of a trade mark.___(1) A tribunal may, having regard 
to the circumstances of a case, if it thinks fit, decide that a person has used a trade mark if it is 
established that the person has used the trade mark with additions or alterations that do not 
substantially affect the identity of the trade mark. 
 Explanation.___For removal of doubts, it is clarified that if a trade mark consists of  any 
combination of any letter, word, name or numeral, any aural representation of the trade mark shall 
be, for the purposes of this Ordinance, a use of the trade mark. 
 (2) The application in Pakistan of a trade mark to goods or services to be exported from 
Pakistan and any other act done in Pakistan in relation to goods or services to be so exported which, 
if done in relation to goods or servic es to be sold or otherwise traded in within Pakistan would 
constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation 
to those goods or services for any purpose for which such use is material under this Ordinance or any 
other law for the time being in force. 
 (3) The use of a registered trade mark in relation to goods or services between which and the 
person using the mark any form of connection in the course of trade subsists shall not be deemed to 
be likely to cause deception or confusion on the ground only that the mark has been or is used in 
relation to goods or services between which and the person using the mark or  any predecessor in his 
business different form of connection in the course of trade subsisted or subsists. 
 6. Application of other laws not barred .___The provisions of this Ordinance shall be in 
addition to, and not in derogation of any other law for the time being in force. 
CHAPTER II.__REGISTRAR, TRADE MARKS REGISTRY AND 
REGISTRATION OF TRADE MARKS 
 1[7. Appointment of Registrar and other officers. __(1) The Organization may, by 
notification in the official Gazette, appoint in the prescribed manner an officer as Registrar of Trade 
Marks. 
(2) The Organization may appoint such other officers with such designations as it deem fit for 
performing under superintendence and direction of the Registrar, such functions of the Registrar 
under this Ordinance as he may, from time to time, authorise them to discharge.] 
 
 
 
1Subs. by Act No. LVIII of 2023, s.3. 
 
Page 17 of 91 
 
 
 
 
 8. Power of Registrar to review , withdraw or transfer cases. ___The Registrar may, by 
order in writing___ 
(a) review any function, matter, case or decision of any officer; or 
(b)  withdraw any function, matter or case from any officer or staff, 
and deal wit h such function, matter or case himself either de novo  or from the stage it was so 
withdrawn, or transfer the same to another officer or staff at any stage. 
 9. Trade Marks Registry and branches thereof. ___(1) For the purposes of this Ordinance, 
there shall be established a Trade Marks Registry; 
 The Trade Marks Registry established under the Trade Marks Act,1940 (V of 1940), shal l be 
the Trade Marks Registry for the purposes of this Ordinance. 
 (2) For the purpose of facilitating registration of trade marks, there may be established at such 
places, as 1[the IPO Policy Board] may think fit, branch offices of the Trade Marks Registry. 
 (3) There shall be a seal of the Trade Marks Registry. 
 10. Register of Trade Marks. ___(1) For the purposes of this Ordinance , a record  called the 
Register of Trade Marks shall be kept at the Trade Marks Registry wherein shall be entered 
particulars of all registered trade marks with the names, addresses and description of the proprietors, 
notifications of assignments and transmissions, the names, addresses and descriptions of licensees, 
disclaimers, conditions, limitations and such other matters relating to registered trade  marks as may 
be prescribed, but there shall not be entered in the Register any notice of any trust express, implied or 
constructive, nor shall any such notice be receivable by the Registrar. 
 (2) Subject to the superintendence and direction of the 1[Organization], the Register shall be 
kept under the control and management of the Registrar. 
 (3) The Register may be kept in whole, or in part, by using a computer any bona fide record 
of a particular or other matter made by using a computer for the purposes of keeping the Register 
shall, for the purposes of this Ordinance, constitute an entry in the Register. 
 (4) There shall be kept at each branch office of the Trade Marks Registry, a copy of the 
Register and such of the other documents as the Registrar may, by notification in the Journal, direct; 
 Provided that if the Register in whole, or any part thereof, is ke pt by using a computer and 
access to a computer terminal from which a person in a branch office can  read a screen, or obtain a 
printed copy of, the particulars or other matters recorded in the Register or that part of the Register, 
requirement under this s ub-section of keeping a copy of the Register at that branch office shall be 
satisfied. 
 
 
1Subs. by Act No. LVIII of 2023, ss. 4-5. 
 
Page 18 of 91 
 
 
 
 
 (5) The Register shall at all convenient times be open to the inspection of the public subject 
to such conditions and restrictions as may be prescribed. 
 (6) If the Register in whole, or any Part thereof, is kept by using a computer, the requirements 
of sub-section (5) shall be satisfied if a person who wants to inspect the Register or that part of the 
Register is given access to a computer terminal from which he can read a screen, or obtain a printed 
copy of the particulars or other matters recorded in the Register or that part of the Register. 
 1[10A. Validity of electronic documents .___The electronic receipts and issuance of  all th e 
documents under this Ordinance shall be valid and accepted for the purposes of evidence.] 
 11. Evidence of entries in Register and things done by Registrar. ___(1) A printed, written 
or computer generated copy of any entry in the Register, purporti ng to be certified by the Registrar 
and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in 1[the High 
Court or IP Tribunal] and in all proceedings is without further proof or production of the original. 
 (2) A certificate pu rporting to be issued under the hand of the Registrar as to any entry, 
matter or thing that he is authorised by this Ordinance or the rules to make or do shall be prima facie 
evidence of the entry having been made and of the contents thereof, or of the mat ter or thing having 
been done or not done. 
 12. Classification of goods and services.___(1) A trade mark may be registered in accordance 
with the provisions of this Ordinance in respect of___ 
(a)  goods; 
(b)  services; or 
(c)  both goods and services,  
comprised in the prescribed classification of goods or services in accordance with the international 
classification of goods and services. 
 (2) Any question arising 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. 
 13. Publication of an alphabetical index of classification of goods and services. ___(1) The 
Registrar may publish in the prescribed manner an alphabetical index of classification of goods and 
services. 
 (2) Where any goods or services are not specified in the alphabetical index of goods and 
services, published under sub-section (1), the classification of goods and services shall be determined 
by the Registrar in accordance with sub-section (2) of section 12. 
 
 
1Ins. and subs. by Act No. LVIII of 2023, ss. 6-7 
 
Page 19 of 91 
 
 
 
 
 14. Absolute grounds for refusal of registration. ___(1) The following shall not be  
registered, namely: ___ 
(a)  marks which do not satisfy the requirements of clause (xlvii) of section 2;  
(b)  trade marks which are devoid of any distinctive character; 
(c)  trade marks 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 go ods or of rendering of 
services, or other characteristics of goods or services; and 
(d)  trade mark which consist exclusively of marks o r indications which have 
become customary in the current language or in the bone fide and established 
practices of the trade; 
 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 known 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; 
(b)  the shape of goods which is necessary to obtain a technical result; or 
(c)  the shape of which gives substantial value to the goods. 
 (3) No trade mark on  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 1[the High Court]. 
(b)  be likely to hurt the religious susceptibilities of any class of citizens of 
Pakistan, per se , or in ter ms 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. 
 
 
 
1Subs. by Act No. LVIII of 2023, s.8.  
 
Page 20 of 91 
 
 
 
 
 15. Limitation as to colour. ___(1) A trade mark may be limited wholly or in part to  one or 
more specified colours, and any such limitation shall be t aken into consideration by any t ribunal 
having to decide on the distinctive character of the trade mark. 
 (2) So far as a trade mark is registered without limitation of colour it shall be deemed to be 
registered for all colours. 
 16. Use of names of chemical compounds barred. ___(1) No word which is the  commonly 
used and  accepted name of any single  chemical ele ment or single  chemical compound as 
distinguished from a mixture or which is declared by the World Health Organization and notified in 
the prescribed manner by the Registrar , from time to time, as an international non -proprietary name 
shall be registered a s a trade mark in respect of a chemical substance or preparation, and any such 
registration shall, notwithstanding anything in section  44, be deemed for the purposes of section 98 
to be an entry made in the Register without sufficient cause or an entry wro ngly remaining on the 
Register, as the circumstances may require. 
 (2) This section shall not apply to a word which is used to denote only a brand or make of the 
element or compound as made by the proprietor or a license of the trade mark, as distinguished  from 
the element or compound as made by others, and in association with a suitable name o r description 
open to the public use. 
 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 mar k 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 earli er 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 or 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___ 
 
Page 21 of 91 
 
 
 
 
(a)  by virtue of any law, in particular , the law of passing off, protecting a n un- 
registered trade mark or other mark used in the course of trade; or 
(b)  by virtue of an earlier right other than those referred to 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 right consents to the registration. 
 (6) Where separate applications arc made by different persons to be registered as proprietors 
respectively of trade marks which are identical or nearly resemble each other , in respect of the same 
goods or description of goods, 1[or services or description of services] the Registrar, if thinks fit, may 
refuse to register any of them until their rights have been determined by the High Court 1[* * *]. 
 18. Meaning of “earlier trade mark”.___(1) In this Ordinance, “earlier trade mark” means___ 
(a)  a registered trade mark or a C onvention trade mark as per the Paris 
Convention which has a date of application for registration earlier than that of 
the trade mark in question, taking account, where appropriat e, of the priorities 
claimed in respect of the trade marks; 
(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 pri ority 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 registratio n has been made and which, if registered, would be an earlier 
trade mark by virtue of clause (a) or (b) of sub-section (1), subject to its being so registered. 
 (3) A trade mark shall , within clause (a) or (b) of sub -section (1), whose registration expires 
continue to be taken into account in determining the registrability of a later mark for a period of one 
year after the expiry unless the Registrar is satisfied that there was no bona fide  use of the mark 
during two years immediately preceding the expiry. 
 19. Raising of relative grounds in case of honest concurrent use. ___(1) Where on  
application for the registration of a trade mark it appears to the Registrar that there is___ 
 
 
 
 
1Ins. and Omitted by Act No. LVIII of 2023, s.9. 
 
Page 22 of 91 
 
 
 
 
(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 o pposition 
proceedings by the proprietor of that earlier trade mark or other earlier right. 
 (2) For the purposes of this section, “honest concurrent use” means such use in Pakistan, by 
the applicant or with his consent, as would formerly have amounted to h onest concurrent use for the 
purposes of sub-section (2) of section 10 of the Trade Marks Act, 1940 (V of 1940). 
 (3) Nothing in this section shall affect___ 
(a) the refusal of registration on the grounds mentioned in section 14; or 
(b) the making of an ap plication for a declaration of invalidity under sub -section 
(2) of section 80. 
 20. Registration of parts of trade marks and of trade marks as a series. ___(1) Where the 
proprietor of a trade mark claims to be entitled to exclusive use of any pa rt thereof separately, he 
may apply to register the whole and the part as separate trade marks. 
 (2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the 
incidents of an independent trade mark. 
 (3) Where a person claiming to be the proprietor of several trade marks in respect of the same 
goods or services or description of goods or description of services which while resembling each 
other in the material particulars thereof are yet different in respect of___  
(a)  statements or representations as to the goods or services in relation to which 
the trade marks are respectively used or proposed to be used; 
(b)  statements or representations as to number, price, quality or names of places; 
(c)  other matter of a non -distinctive character which does not substantially affect 
the identity of the trade mark; or 
(d)  the colour or any part of the trade mark. 
seeks to register those trade marks, they may be registered as a series in one registration. 
 21. Registration subject to disclaimer.___If a trade mark contains___ 
(a)  any part not separately registered as a trade mark in the name of the proprietor;  
(b)  any part for the separate registration of which no application has been made ; 
or  
 
Page 23 of 91 
 
 
 
 
(c)  any matter common to the trade, or otherwise of a non-distinctive character. 
the tribunal, in deciding whether the trade mark shall be entered or s hall remain on the Register, may 
require, as a condition of its being on the Register, that the proprietor shall either disclaim any right 
to the exclusive  use of such part or of all or any portion of such matter, as the case may be, to the 
exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the 
tribunal may consider  necessary for  the purpose of defining the rig hts of the proprietor under the 
registration; 
 Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except  
such as arise out of the registration of the trade mark in respect of which the disclaimer is made. 
CHAPTER III.__PROCEDURE FOR AND DURATION OF REGISTRATION 
 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 included 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 so ught 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 par ticulars 
required under sub-sections (2) and (3). 
 (5) The application shall be subject to the payment of the application fee as may be 
prescribed. 
 23. Date of filing. ___(1) The date of filing of an application for registration of a trade  mark 
shall be the date on which documents containing particulars specified in section 22 are furnished to 
the Registrar. 
 (2) References in this Ordinance to the date of application for regist ration shall be to the date 
of filing of the application. 
 
Page 24 of 91 
 
 
 
 
 24. Co-ownership of t rade mark. ___Where the relations between two or more persons 
interested in a trade mark 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 connected in 
the course of trade,  
the persons may jointly apply for its registration under section 22. 
 (2) Where a trade mark is registered in the name of two or more persons jointly, each of them 
shall be entitled, subject to any agree ment to the contrary, to an equal undivided share in the 
registered trade mark. 
 (3) The following provisions shall apply where two or more persons are co-proprietors of a 
registered trade mark, by virtue of sub-section (2) or otherwise. 
 (4) Subject to any agreement to the contrary, each co -proprietor shall be entitled, by himself 
or his agents, to do for his own be nefit it and without the consent of or the need to account to the 
others, any act which would otherwise amount to an infringement of the registered trade mark. 
(5) One co-proprietor may not, without the consent of the other or others, 
(i)  grant a licence to the use of the registered trade mark; or 
(ii)  assign or charge his share in the registered trade mark. 
 (6) Infringement proceedings may be  brought by any co -proprietor but he may not, without 
the leave of the High Court or 1[IP Tribunal], proceed with the action unless the other, or each one of 
the others, is either joined as a plaintiff or added as a defendant. 
 (7) A co-proprietor who is thus arraigned as a defendant shall not be made liable for any costs 
in the action unless the takes part in the proceedings. 
 (8) Nothing in sub -sections (6) and (7) shall affect the granting of interlocutory relief on the 
application of a single co-proprietor. 
 (9) Nothing in this section shall affect the mutual rights and obligations of trustees or 
personal representatives, or their rights and obligations as such. 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s.10. 
 
Page 25 of 91 
 
 
 
 
 25. Meaning of Convention application, and righ t to priority. ___(1) A “Convention 
application” means an application duly made by a person for registration of a trade mark in one or 
more than one Convention country. 
 (2) If___ 
(a)  a person has duly made a “Convention application”; and 
(b)  within six m onths from the date on which the Convention application or first 
of the Convention applications was made, that person or another person 
hereinafter referred to as the “successor in title” of whom that person is a 
predecessor in title applies to the Registr ar in the prescribed manner for the 
registration of the same trade mark under this Ordinance in respect of some or 
all of the same goods or services or both in respect of which registration was 
sought in that convention country or those Convention countries, 
that person or that person ’s successor in title may, when filing the application under this 
Ordinance, or within the prescribed period after filing the application under this Ordinance, 
but before the application is accepted, has a right to priority for  the registration of the trade 
mark. 
 (3) If the application for registration under this Ordinance is made within the prescribed 
priority period mentioned in sub-section (2)___ 
(a)  the relevant date for the purposes of establishing which rights take prece dence 
shall be the date of filing of the first Convention application; and 
(b)  the registrability of the trade mark shall not be affected by any use of the mark 
in Pakistan in the period between that date and the dat e of the application 
under this Ordinance. 
 (4) Any filing which in a Convention country is equivalent to a regular national filing, under 
its domestic legislation or an international agreement, shall be treated as giving rise to the right of 
priority. 
 Explanation. ___For the purposes of this sub-section, a “regular national filing” means a filing 
which is adequate to establish the date on which the application was filed in that country, whatever 
may be the subsequent fate of the application. 
 (5) A subsequent application concerning the same su bject as the first Convention application, 
filed in the same Convention country, shall be considered the first Convention application of which 
the date of filing is the starting date of the period of priority, if at the time of the subsequent 
application___ 
(a)  the previous application has been withdrawn, abandoned or refused, without 
having been laid open to public inspection and without leaving any rights 
outstanding; and 
(b)  it has not yet served as a basis for claiming a right of priority. 
 
Page 26 of 91 
 
 
 
 
 (6) The previous application referred to in sub-section (5), may not thereafter serve as a basis 
for claiming a right of priority. 
 (7) The manner of claiming a right to priority on the basis of a Convention application shall 
be such as may be prescribed. 
 (8) A rig ht to priority arising as a result of a Convention application may be assigned or 
otherwise transmitted, either with the application or independently. 
 (9) The reference in sub -section (2) to the applicants “successor in title” shall be construed 
accordingly. 
 26. Application to provide temporary protection during exhibition.__ (1) The applicant for 
registration of a trade mark who has exhibited goods bearing the mark or has rendered services under 
the trade mark at an official or officially recognized exhi bition and who applies for registration of 
that trade mark, within six months from the day on which the goods bearing the trade mark or the 
services rendered under the trade mark were first exhibited in the exhibition, shall , on his request, be 
deemed to have applied for registration of the trade mark on that day. 
 (2) Evidence of the exhibition of goods bearing the trade mark or services rendered under the  
trade mark must be given by a certificate issued by the competent authorities of the exhibition, 
stating the date on which the trade mark was first used in connection with goods or services included 
in the exhibition. 
 (3) The provision of this section shall not extend any other priority rights to  the applicant in 
respect of the same trade mark. 
 (4) The grant of temporary protection in respect of goods or services during exhibition shall 
be subject to such conditions as may be prescribed. 
 27. Examination of application .___(1) The Registrar shall, as soon as practicable,  examine 
whether an application for  registration of a trade mark satisfies the requirements prescribed under 
this Ordinance. 
 (2) For the purposes of sub -section (1), the Registrar shall carry out a search, to the extent as 
he considers necessary, of earlier trade marks. 
 (3) if it appears to the Registrar that the requirements for registration are not met, he shall 
inform the applicant and give him an opportunity, within such period as the Registrar may specify, to 
make representation or to amend the application. 
 (4) 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 before the end of the specified period, the 
Registrar shall refuse to accept the application. 
 (5) If it appears to the Registrar  that the requirements for registration are met, he shall accept 
the application absolutely or subject to such conditions or limitations, if any, as he may think fit. 
 (6) In the case of a refusal or conditional acceptance, the Registrar shall state in wri ting the 
grounds of his decision and the materials used by him in arriving thereat. 
 
Page 27 of 91 
 
 
 
 
 (7) If the t ribunal is of opinion that it is fair and reasonable in all the circumstances of the 
case to do so, may at any time, whether before or after acceptance, correc t 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: 
 Provided that no amendment or correction shall be permitted in the application which 
substantially affects the  identity of the trade mark or extends the goods or services covered by the 
application: 
 Provided further that if the amendment or correction in the application is permitted after  the 
application has been advertised, the amendment or correction shall also be published. 
 28. Publication, opposition proceedings and observations.___(1) When an application for 
registration of a trade mark has been accepted, whether absolutely or subject to conditions or 
limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, 
together with the conditions and limitations, if any, subject to which it has been accepted, to be 
advertised in the Journal, and for all legal purposes, advertisement of the trade mark in the Journal 
shall constitute sufficient notice of acceptance of the trade mark: 
 Provided that the Registrar may cause an application to be advertised before acceptance 
where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and 
where an application has been so advertised the Registrar may, if he thinks fit, advertise it again 
when it has been accepted, but shall not be bound so to do: 
 Provided further that where an application is advertised by reason of any special 
circumstances und er the above proviso, the Registrar shall simultaneously notify the exceptional 
circumstances which led him so to do.   
 (2) Any person may, within two months from the date of the advertisement or re -
advertisement of an application for registration or with in such further period not exceeding two 
months in the aggregate, as the Registrar, on application made to him in the prescribed manner and 
on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the 
registration. 
 (3) The notice under sub -section (2), shall be giv en in writing in the prescribed manner, and 
shall include a statement of the grounds of opposition. 
 (4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, 
and within one mo nth from the receipt by the applicant of such copy of the notice of opposition, or 
within such further period not exceeding two months in the aggregate, as the Registrar, on 
application made to him in the prescribed manner and on payment of the prescribed fee, may allow, 
the applicant shall send to the Registrar in the prescribed manner a counter -statement of the grounds 
on which he relies for his application, and, if he does not do so he shall be deemed to have 
abandoned his application. 
 (5) If the applic ant sends the counter -statement referred to in sub section (4), the Registrar  
shall serve in the prescribed manner a copy of the counter-statement on the opponent. If the opponent 
deems necessary, he may within one month from  the receipt of such copy of th e counter-statement, 
or within such further period not exceeding two months in the  aggregate, as the Registrar, on 
 
Page 28 of 91 
 
 
 
 
application made to him in the prescribed manner and on payment of the prescribed fee, may allow, 
send to the Registrar in the prescribed manner a rejoinder. 
 (6) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy 
of the rejoinder to the applicant. 
 (7) Any evidence upon which the opponent and the applicant may rely shall be submitted in 
the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an 
opportunity to them to be heard, if they so desire. 
 (8) The Registrar shall, unless the proceedings are discontinued or dismissed, after giving to 
the opponent and to the applicant an opportunity of being heard, decide whether, and subject to what 
conditions or limitations, if any, registration is to be permitted. 
 (9) If the Registrar is of opinion that it is fair and reasonable in all circumstances of the case 
to do so, he may, on request made in the prescribed manner, 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 thinks 
just. 
 29. Grounds of opposition.___(1) The registration of a trade mark may be opposed on  any of 
the grounds on which an application for the registration of a trade mark may be rejected under this 
Ordinance except the ground that the trade mark cannot be represented graphically. 
(2) The registration of a trade mark may be opposed on the ground that the applicant does not 
intend___ 
(a) to use, or authorize the use of, the trade mark in Pakistan; or 
(b)  to assign the trade mark to a body corporate for use by the body corporate in  
Pakistan. 
in relation to goods, services or both specified in the application.  
 (3) The registration of a trade mark may be opposed on any of the following grounds that: 
(a)  the applicant is not the proprietor of the trade mark; 
(b)  the application, or a document filed in support of the ap plication, was 
amended contrary to the provisions of this Ordinance; 
(c)  the Registrar accepted the application for registration on the basis of evidence 
or representations that were false in material particulars; or 
(d)  the pre-acceptance advertisement of the application under exceptional 
circumstances is without sufficient cause or reason. 
 (4) The registration of trade mark in respect of particular goods or services may  be opposed 
on the grounds that___ 
(a)  it is substantially identical with, or decep tively similar to, a well  known trade 
mark, or a trade mark that, before the priority date for the registration of the 
 
Page 29 of 91 
 
 
 
 
first-mentioned trade mark in respect of those goods or services , had acquired 
a reputation in Pakistan; and 
(b)  because of the reputati on of that other t rade mark, the use of the first -
mentioned trade mark would cause dilution or would be likely to deceive or 
cause confusion. 
 (5) The registration of a trade mark in respect of particular goods may be opposed on the 
ground that the trade m ark contain or consists of a mark that is a geographical indication for goods 
originating in___ 
(a)  a country, or in a region or locality in a country, other than the country in 
which the relevant goods originated; or 
(b)  a region or locality in the coun try in which the relevant goods originated other 
than the region or locality in which the relevant goods originated. 
 (6) The provision of clause (b) of sub-section (2) of section 17 shall remain in abeyance if the 
earlier trade mark application is under opposition. 
 30. Circumstances in which opposition may proceed in the name of a person other than 
the person who filed the notice of opposition.___If___ 
(a)  after a person has given a notice of opposition, the right or interest on which 
the person relies w hile giving the notice of opposition becomes vested in 
another person: and 
(b)  the other person___ 
(i)  notifies the Registrar in the  prescribed manner that the right or interest 
is vested in him; and 
(ii)  does not withdraw the opposition, 
the opposition may proceed as if the notice of opposition had been given in that other person's name. 
s 
 31. Withdrawal of application. ___(1) The applicant may at any time withdraw his 
application or restrict the goods or services covered by the application. 
 
 (2) In ca se the application has been advertised, the withdrawal or restriction under sub -
section (l) shall also be published. 
 
 32. Definition of divisional application .___(1) A divisional application means an other 
application by a person who has already made an a pplication under section 22 for registration of a 
trade mark in respect of certain goods, services or both and  made, in accordance with this section 
for__ 
(a)  the registration of a part only of the trade  mark in respect of any or all those 
goods, services or both; or 
 
 
Page 30 of 91 
 
 
 
 
(b)  the registration of the trade mark in respect of some only of the goods, 
services or both in respect of which registration is sought under the application 
made under section 22. 
 
 (2) A divisional application for registration of a trade mark or a part of a trade mark may 
be made only if the application under section 22 for registration of the trade mark is pending. 
 
(3) A divisional application shall proceed as an application made under section 22:  
 
Provided that a divisional application  shall be taken to have been filed on the day on  which 
the application under section 22 was filed. 
 33. Registration. ___(1) Where an application has been accepted and___ 
 
 
(a)  no notice of opposition has been given within the period referred to in 
sub-section (2) of section 28; or 
 
(b) all opposition proceedings have been withdrawn or decided in favour 
of the applicant.  
 
the Registrar shall, within such period as may be prescribed, register the trade mark, unless it appears 
to him having regard to matter s coming to his notice since he accepted the application that it was 
accepted in error. 
 
 (2) A trade mark shall not be registered unless any fee prescribed for the registration is paid 
within the prescribed period. If the fee is not paid within the prescr ibed period, the application shall 
be deemed to have been 1[abandoned as per procedure prescribed under the rules]. 
 
 (3) A trade mark when registered shall be registered as of the date of filing of the application 
for registration and that date shall be d eemed for the purposes of this Ordinance to be the date of 
registration. 
 
(4) On the registration of a trade mark the Registrar shall publish the registration in the 
prescribed manner and issue to the applicant a certificate in the prescribed form of regis tration, 
sealed with the seal of the Trade Marks Registry. 
 
 (5) Where registration of a trade mark is not completed within twelve months from the date 
of the application by reason of default on the part of the applicant, the Registrar may, after  giving 
notice to the applicant in the prescribed manner, treat the application as abandoned unless it is 
completed within the time specified in that behalf in the notice. 
 
 
 
 
 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s.11. 
 
Page 31 of 91 
 
 
 
 
 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. 
 35. Renewal of registration. ___(1) The registration of a trade mark may be renewed at  the 
request of the proprietor subject to payment of such renewal fee as may be prescribed. 
 (2) The Registrar shall inform the proprietor of a registered trade mark, before the expiry of 
the registration, of the date of expiry and the manner in which the registration may be renewed as 
may be prescribed. 
 (3) A request for renewal shall he made, along  with the renewal fee, before the expiry of the 
registration as may be prescribed, failing which the request may be made and the  renewal fee paid 
within such further period of not less than six months as may be prescribed in which case an 
additional renewal fee shall be paid within that period. 
 (4) Renewal shall take effect from the expiry of the previous registration. 
 (5) Except at the time of first renewal, the Registrar may require that request for renewal be 
accompanied with evidence of use of the trade mark in Pakistan. 
 (6) If the registration is not renewed in accordance with the provisions of this section, the 
Registrar shall remove the trade mark from the Register: 
 Provided that the Registrar may restore the registration of a trade mark which has been 
removed from the Register, subject to such conditions, if any, as may be prescribed. 
 (7) The renewal or restoration of the registration of a trade mark shall be published in the 
Journal. 
 36. Effect of removal from Register for failure to pay fee for renewal. ___Where a trade 
mark has been removed from the Register, under this Ordinance , for failure to pay the fee for 
renewal, it shall nevertheless, for the purposes of any application for the registration of another trade 
mark during one year next after the date of the removal, be deemed to be a trade mark already on the 
Register, unless the tribunal is satisfied either___ 
(a)  that there has been no bona fide use of the trade mark which has been removed 
during the two years immediately preceding its removal; or 
(b)  that no deception or confusion would be likely to arise from the use of the 
trade mark which is the subject of the application fo r registration by reason of 
any previous use of the trade mark which has been removed. 
 37. Alteration of registered trade mark. ___(1) Subject to sub -section (2), a registered trade 
mark shall not be altered in the Register, during the period of registration or on renewal. 
 (2) The Registrar may, at the request of the proprietor, allow the alteration of a registered 
trade mark where the mark includes the proprietor ’s name or address and the alteration is limited to 
alteration of that name or address and does not substantially affect the identity of the mark. 
 
Page 32 of 91 
 
 
 
 
 (3) In case any alteration is made under sub -section (2), the Registrar shall publish such 
alteration and the objections by any person claiming to be affected by it, in such manner as may be 
prescribed. 
 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. 
CHAPTER IV.___REGISTRATION AND EFFECT THEREOF 
 39. Rights conferred by registration. ___(1) A registered trade mark shall be a personal 
property. 
 (2) The proprietor of a registered trade mark shall have exclusive rights in the trade mark 
which are infringed by use of the trade mark in Pakistan without his consent. 
 (3) Without prejudice to the  rights of the proprietor of a registered trade mark to obtain any 
relief under any other law for the time being in force, the proprietor shall also have the right to obtain 
relief under this Ordinance if the trade mark is infringed. 
 (4) References in this Ordinance to the infringement of a registered trade mark shall be to any 
such infringement of the rights of the proprietor. 
 (5) The rights of the proprietor shall have effect from the date of registration: 
 Provided that no infringement proceedings shal l begin before the date on which the trade 
mark is in fact registered. 
 (6) The rights conferred by registration of trade mark s under this Ordinance shall extend to 
trade marks registered under the Trade Marks Act, 1940 (V of 1940).  
 40. Infringement of r egistered trade mark. __ (1) A person shall infringe a registered  trade 
mark if such person uses in the course of trade a mark which is identical with the trade mark in 
relation to goods or services which are identical with those for which it is registered. 
 (2) A person shall infringe a registered trade mark if such person uses in the course of trade a 
mark where because___ 
(a)  the mark is identical with the trade mark and is used in relation to goods or 
services similar to the goods or services for which the trade mark is registered; 
or 
(b)  the mark is deceptively similar to the trade mark and is used in relation to 
goods or services identical with or similar to the goods or services for which 
the trade mark is registered, 
 
Page 33 of 91 
 
 
 
 
 there exists a likelihood of co nfusion on the part of public, which includes the likelihood of 
association with the trade mark. 
 (3) A person shall infringe a registered trade mark if the person uses in the course of trade a 
mark which is identical with, or deceptively similar to, the trade mark in relation to— 
(a)  goods of the same description as that of goods in respect of which the trade  
mark is registered; 
(b)  services that are closely related to goods in respect of which the trade mark is 
registered; 
(c)  services of the same des cription as that of services in respect of which the 
trade mark is registered; or 
(d)  goods that are closely related to services in respect of which the trade mark is 
registered. 
(4) A person shall infringe a registered trade mark if the pers on uses in th e course of trade a 
mark which___ 
(a)  is identical with or deceptively similar to the trade mark; and 
(b)  is used in relation to goods or services which are not similar to those for which 
the trade mark is registered, 
where the trade mark is a well known  trade mark, or has a reputation in Pakistan, and the use of the 
mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive 
character or the repute of the trade mark. 
 (5) A person shall infringe a registered trade mark  if the person uses such registered trade 
mark as his trade name or part of his trade name. 
 (6) A person shall infringe a registered trade mark if the person uses such registered trade 
mark as his domain name or part of his domain name or obtains such dom ain name without the 
consent of the proprietor of the registered trade mark, with the intention of selling such domain name 
to another including the proprietor of the registered trade mark. 
 (7) A person who applies a registered trade mark to material inte nded to be used for labeling 
or packaging goods shall be treated as a party to any use of the material which infringes the 
registered trade mark if when he applied the mark he knew or had reason to believe that the 
application of the mark was not duly authorised by the proprietor or a licensee. 
 (8) In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts 
them on the market or has in possession for sale or any purpose of trade or manufacture any goods 
bearing a mark which infringes a registered trade mark shall be treated as a party to infringement of a 
registered trade mark, unless he proves that___ 
(a)  having taken all reasonable precautions, he had no reasons to suspect the 
genuineness of the mark; and 
 
Page 34 of 91 
 
 
 
 
(b)  on demand made  by tribunal, he gave all the information in his power with 
respect to the persons from whom he obtained such goods; or 
(c)  he had, otherwise acted innocently. 
 41. Infringement of trade mark by breach of certain restrictions. ___Subject to the 
provisions of section 42, if the proprietor of a registered trade mark or a licensee having power to do 
so, has caused to be displayed on go ods the words “registered goods”  in respect of which a trade 
mark is registered, or on their packaging, or on the container in which they are offered to the public, 
a notice prohibiting any of the following acts___ 
(a)  apply the trade mark to registered goods or using the trade mark in physical 
relation to them, after the state, condition, get -up or packaging in which they 
were originally offered to the public has been altered; 
(b)  altering, or partially removing or obliterating, any representation of the trade 
mark applied to registered goods and used in physical relation to them; 
(c)  if the trade mark has been applied to regis tered goods, or used in physical 
relation to them, together with other matter indicating that the proprietor or the 
licensee has dealt with the goods, removing or obliterating, totally or in part, 
any representation of the trade mark without totally removi ng or obliterating 
the other matters; 
(d)  applying another trade mark to registered goods or using another trade mark in 
physical relation to them; or 
(e)  if the trade mark has been applied to registered goods, or used in physical 
relation to them , using on the goods, or on the packaging or container of t he 
goods, any matter that is likely to injure the repute of the trade mark. 
a person who does or authorizes someone to do any of the foregoing prohibiting acts shall be 
liable for infringement of the trade mark: 
 Provided that the trade mark shall not be infringed if the owner of the goods acquired them in 
good faith and without being aware of the notice of prohibition, or became the owner of the goods by 
virtue of a title derived from a person who has so acquired them. 
 42. When a trade mark is not infringed. ___(1) A person shall not infringe a registered trade 
mark when___ 
(a)  the person uses in good faith___ 
(i)  the person's name or the name of the person's place of business, so 
long as such use does n ot result in a likelihood of confusion or 
otherwise interfere with an existing trade mark or other property right; 
or 
(ii)  the name of the predecessor in business of the person or the name of 
the predecessor's place of business; 
 
Page 35 of 91 
 
 
 
 
(b)  the person uses a mark in good faith to indicate__ 
(i)  the kind, quality, quantity, intended purpose, value, geographical 
origin, or some other characteristic, of goods or services; or 
(ii)  the time of production of goods or of the rendering of services; 
(c)  the person uses the trade mark in good faith to indicate the intended purpose of 
goods, in particular as accessories or spare parts, or services; or 
(d)  the person uses the trade mark for the purposes of comparative advertising. 
 (2) If the right to the use of a trade m ark given under section 39 by registration is subject to 
any conditions or limitations entered on the Register, such right shall not be deemed to be infringed 
by the use of any such trade mark as aforesaid in any mode,  in relation to goods to be sold or 
otherwise traded in or in relation to services provided by, in any place, or in relation to goods or 
services to be exported to any market , or in any other circumstances, to which, having regard to any 
such limitations the registration does not extend. 
 (3) Where registration of a trade mark is subject to a disclaimer, a person shall not infringe 
the trade mark by using disclaimed part of the trade mark. 
 43. Registration to be prima facie evidence of validity. ___In all legal proceedings relating 
to a trade mark registered under this Ordinance or under the Tr ade Marks Act, 1940 (V of 1940), the 
fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of 
the original registration of the trade mark and of all subsequen t assignments and transmissions 
thereof. 
 44. Registration to be conclusive as to validity after five years. ___In all legal proceedings 
relating to a registered trade mark, the original registration of the trade mark shall, after the 
expiration of five years from the date of its original registration, be taken to be valid in all respects 
unless such registration was obtained by fraud, or unless the trade mark offends against the 
provisions of sub-section (3) of section 14. 
 45. Saving for words used as name  or description of an article  or a substance.___The 
registration of a trade mark shall not be deemed to have bec ome invalid by reason only of any use 
after the date of the registration of any word which the trade mark contains or of which it consists as 
the name or description of an article, substance or service: 
 Provided that if it is proved either__ 
(a) that there is  a famous  and established use of the  said word as the name or 
description of the article, substance or service by a person or persons carryi ng 
on trade therein, not being use in relation to goods or services connected in the 
course of trade with the proprietor or a licensee of the trade mark or in the case 
of a certification trade mark in relation to goods or services certified by the 
proprietor; or 
(b) that the article or substance has been manufactured under a patent in force at 
or granted after the commencement of this O rdinance, that a period of two 
 
Page 36 of 91 
 
 
 
 
years or more after the cesser of the patent has clapsed and that the said word 
is the only practicable name or description of the article or substance, 
 the provisions of sub-section (2) shall apply. 
 (2) Where the facts mentioned in clause (a) or (b) of the proviso to sub -section (1) are proved 
with respect to any words, then___ 
(a) for the pur poses of any proceedings under section 96, if the trade mark 
consists solely of such words, the registration of the trade mark, so far as 
regards registration in respect of the article or substance in question or of any 
goods of the same description, or of  the service or of any services of the same 
description as the case may be, shall be deemed to be an entry wrongly 
remaining on the Register; or 
(b)  for the purposes of any other legal proceedings relating to the trade mark___ 
(i)  if the trade mark consi sts solely of such words, all rights of the 
proprietor under this Ordinance or any other law for the time being in 
force to the use of the trade mark; or 
(ii)  if the trade mark contains such words and other matter, all such rights 
of the proprietor to the use of such words,  
in relation to the article or substance or to any goods of the same description, or to the service or to 
any services of the same description, as the case may be, shall be deemed to have ceased on the date 
on which the use mentioned in  clause (a) of the proviso to sub -section (1) first became famous and 
established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.  
 
Page 37 of 91 
 
 
 
 
CHAPTER V.__INFRINGEMENT PROCEEDINGS 
 46. Action for infringement. ___(1) Save a s otherwise provided in this Ordinance , an 
infringement of a registered trade mark shall be actionable by the proprietor of the trade mark.  
 (2) In an action for infringement all such relief by way of damages, injunctions, accounts or 
otherwise shall be a vailable to the proprietor of the trade mark as is available in respect of the 
infringement of any other property right. 
 (3) Nothing in this Ordinance shall be deemed to affect rights of action against any person for 
passing off goods as the goods of anot her person or services as services provided by another person, 
or the remedies in respect thereof. 
 47. Order for erasure of offending mark. ___(1) Where a person is found to have infringed a 
registered trade mark, the High Court or 1[an IP Tribunal] may make an order requiring him___ 
(a)  to cause the offending trade mark to be erased, removed or obliterated from 
any infringing goods, material or articles in  his possession, custody or control; 
or 
(b)  to secure the destruction of the infringing goods, mater ial or articles, if is not 
reasonably practicable for the offending trade mark to be erased, removed  or 
obliterated. 
 (2) If an order under sub -section (1) is not complied with, or it appears to the High Court or 
1[IP Tribunal]  likely that such an order wo uld not be complied with, the High Court or 1[an IP 
Tribunal] may order that infringing goods, material or articles be delivered to such person as the 
High Court or 1[an IP Tribunal]  may direct for erasure, rem oval or obliteration of the mark,  or for 
destruction, as the case may be. 
 48. Order for delivery up of infringing goods, material or articles. ___(1) The proprietor of 
a registered trade mark may apply to the High Court or 1[an IP Tribunal] for an order for the delivery 
up to him, or such other person  as the High Court or 1[an IP Tribunal] 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. 
 (2) An application shall not be made after the expiry of the period specified in section 50, and 
no order shall be made unless the High Court or 1[an IP Tribunal]  also makes, or it appears to the 
High Court or 1[an IP Tribunal] that there are grounds for making, an order under section 51. 
 (3) A person to whom any infringing goods, material or articles are delivered in pursuance of 
an order under this section shall, if an order under section 51 has not been made, retain them pending 
the making of an order, or the decision not to make an order, under that section. 
 
 
 
1Subs. by Act No.  LVIII of 2023, ss. 12-13.  
 
Page 38 of 91 
 
 
 
 
(4) Nothing in this section shall affect any other power of the High Court or 1[an IP Tribunal]. 
 49. Meaning of “infringing goods, material or articles ”.___(1) Subject to sub -section (2), 
goods shall be “infringing goods” in relation to a registered trade mark, if they or their packaging 
bear a mark identical or deceptively similar to that mark and___ 
(a)  the application of the mark to the goods or their packaging was an 
infringement of the registered trade mark; 
(b)  the goads are proposed to be imported into Pakistan and the application of the 
mark in Pakistan to them or their packaging would be an infringement of the 
registered trade mark; or 
(c)  the mark has otherwise been used in relation to the goods in such a wa y as to 
infringe the registered trade mark. 
 (2) Nothing in sub-section (1) shall be construed as affecting the importation of goods which 
may be lawfully imported into Pakistan. 
 (3) Material shall be “infringing material” in relation to a registered tra de mark, if it bears a 
mark identical or deceptively similar to that mark and either it is___ 
(a)  used for labeling or packaging goods, as a business paper, or for advertising 
goods or services, in such a way as to infringe the registered trade mark; or 
(b)  intended to be so used and such use would infringe the registered trade mark. 
 (4) “Infringing articles” in relation to a registered trade mark, means such articles which__ 
(a)  are specifically designed or adapted for making copies of a mark identical  or 
similar to that mark; and 
(b)  a person has in his possession, custody or control, knowing or having reason 
to believe that they have been or are to be used to produce infringing goods or 
material. 
 50. Period after which remedy of delivery be not available.___(1) An application for an 
order under section 48 shall not be made after the expiry of three years from, 
(a)  in the case of infringing goods, the date on which the trade mark was 
applied to the goods or their packaging; 
(b)  in the case of infringing material, the date on which the trade mark was 
applied to the material; or 
(c)  in the case of infringing articles, the date on which they were made, 
except as provided in sub-section (2). 
 (2) If during the whole or part of the period specified in sub-section (1), the proprietor of 
the registered trade mark___ 
 
Page 39 of 91 
 
 
 
 
(a)  is under a disability; or 
(b)  is 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 a disability or, as the case may be, could with 
reasonable diligence have discovered those facts. 
 Explanation.___In this sub-section the expression “disability” shall have the same meaning as 
in the Limitation Act, 1908 (IX of 1908). 
 51. Order as to disposal of infringing goods, material or articles.___(1) Where 
infringing goods, material or articles have been delivered up in pursuance of an order under 
section 48, an application may be made to the High Court or 1[an IP Tribunal] ___ 
(a)  for an order that they be destroyed of forfeited to such person as the High 
Court or 1[an IP Tribunal] may think fit; or 
(b)  for a decision that no such order should be made. 
 (2) In considering what order, if any should be made, the High Court or 1[an IP Tribunal]  
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. 
(3) Where there are more persons than one interested in the goods, m aterials or 
articles, the High Court or 1[an IP Tribunal] shall make such order as it thinks just. 
 (4) if the High Court or 1[an IP Tribunal]  decides that no order should be made under this 
section; then the person, in whose possession, custody or  control the goods, material or articles 
were before being delivered shall be entitled to their return. 
 52. Remedy for groundless threats of infringement proceedings. ___(1) Where a person 
threatens to bring an action against another person on the ground that the other person h as 
infringed___ 
(a) a registered trade mark; or 
(b)  a trade mark alleged by the person to be registered, 
any person aggrieved by the threat may bring proceedings for relief against the person making the 
threat. 
 (2) The relief may be applied for any of the following, namely:— 
(a)  a declaration that the threats are unjustifiable; 
(b)  an injunction against the continuance of the threats; or 
 
1Subs. by Act No. LVIII of 2023, s.14. 
 
Page 40 of 91 
 
 
 
 
 (c)  damages in respect of any loss he has sustained by the threats. 
 (3) The plaintiff shall be entitled to any relief specified in sub-section (2) unless the 
defendant shows that the acts respect in respect of which proceedings were threatened constitute, or 
if done would constitute, an infringement of the registered trade mark concerned. 
 (4) If that is shown by the defendant, as provided under sub-section (3), the plaintiff shall 
be entitled to any relief specified in sub-section (2), if he shows that the registration of the t rade 
marks is invalid or liable to be revoked in a relevant respect. 
 (5) The m ere notification that a t rade mark is registered, or th at act application for 
registration has b een m ade, sh all not constitute a  threat of proceedings for the pu rposes of  this 
section. 
 (6) The provisions of this action shall not make a lawyer, advocate or attorney liable to an 
action for an act done in his professional capacity on behalf of a client. 
CHAPTER VI.___IMPORTATION OF INFRINGING GOODS, MATERIAL OR ARTICLES 
 53. Infringement goods, material or articles may be treated as prohibited.___(1) The 
proprietor of the registered trade mark may give notice in writing to the 1[Director General, IPR 
(Enforcement), Director, IPR (Enforcement) or Collecto r of Customs or any competent authority 
under the Custom Act, 1969 (IV of 1969)] that— 
(a)  he is the proprietor of the registered trade mark; 
(b)  at a time and place specified in the notice, goods which, in relation to that 
registered trade mark are infringing goods, material or articles, or bear false 
indications as to their source or the identity of their manufacturer are 
expected to arrive in Pakistan from outside Pakistan and that they are subject 
to the control of the customs authorities under the Customs Act, 1969 (IV of 
1969); and 
(c)  he requests the 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)] to treat such goods as prohibited goods. 
 54. Notice for i ntervention by customs authorities.___When any notice to the 1[Director 
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any  
competent authority under the Custom Act, 1969 (IV of 1969)]  is made under section 53, it shall be 
accompanied by an undertaking by the  person sending the notice to indemnify the customs 
authorities concerned and to compensate any importer, consignee or owner of the goods for loss or 
damage resulting from the wrongful suspension of clearance of goods. 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, ss. 15-16. 
 
Page 41 of 91 
 
 
 
 
 55. Furnishing of s ecurity or equivalent assurance to customs authority.___The 
1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any 
competent authority under the Custom Act, 1969 (IV of 1969)]  may require an applicant to provide 
a security or equivalent assurance su fficient to protect the importer, consignee or owner of the 
goods but such security or equivalent assurance shall not be such as to unreasonable deter recourse 
to these procedures. 
 56. Collector of Customs may seize goods bearing infringing trade mark.___If goods to 
which section 53 applies___ 
(a)  bear on them a trade mark which, in the opinion of the 1[Director General, 
IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or 
any competent authority under the Custom Act, 1969 (IV of 1969)] , is 
identical with, or deceptively similar to the registered trade mark; and 
(b)  are goods in respect of which the trade mark is registered,  
 
the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or 
any competent authority under the Custom Act, 1969 (IV of 1969)]  shall 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 goods and the seized goods shall be kept in a secure place as directed by the 
1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any 
competent authority under the Custom Act, 1969 (IV of 1969)]. 
 57. Notice of  seizure.___The 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the Custom Act, 1969 (IV 
of 1969)] shall, as soon as practicable— 
(a)  give, either personally or by urgent post, to the importer, consignee or 
owner of the  goods a notice of seizure in writing identifying the goods 
and stating that they have been seized under section 56; and 
(b)  give to the applicant a notice in writing___ 
(i)  identifying the goods and stating that they have been seized under 
section 56; 
(ii)  giving the full name and address of the importer, consignee 
or owner of the goods and any information that the 1[Director 
General, IPR (Enforcement), Director, IPR (Enforcement) or 
Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)]  has and believes, on 
reasonable grounds, to be likely to help t he applicant to 
identify the importer or the owner of the goods; and 
 
 
 
1Subs. by Act No. LVIII of 2023, ss. 17-19 
 
Page 42 of 91 
 
 
 
 
 (iii)  stating that the goods shall be released to the importer, 
consignee or own er of the goods unless the applicant brings an 
action for infringement of the registered trade mark in respect of 
goods before 1[an IP Tribunal]  having jurisdiction in the matter and 
gives the 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority 
under the Custom Act, 1969 (IV of 1969)]  notice in writing of  the 
action, within the period of ten working days after the applicant 
has b een given the notice, or if the 1[Director General, IPR 
(Enforcement), Director, IPR (Enforcement) or Collector of Customs 
or any competent authority under the Custom Act, 1969 (IV of 1969)] 
extends the period under sub -section (1) of section 60, within  such 
extended period. 
 58. Forfeiture of goods.___If the importer, consignee or owner of any seized goods, at any 
time before the applicant starts an action for infringement of the trade mark in respect of goods, by 
notice in writing to the  1[Director General, TPR (Enforcement), Director, TPR (Enforcement) or 
Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] , gives 
consent to the goods being forfeited by the Collector of Customs, the goods shall be so forfeited by 
the 1[Director General, TPR (Enforcement), Director, TPR (Enforcement) or Collector of Customs 
or any competent authority under the Custom Act, 1969 (IV of 1969)]. 
 59. Release of goods.___(1) The 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the Custom Act, 1969 (IV 
of 1969)] shall release the seized goods to their designated importer, consignee or owner if, within 
the specified period, the applicant has not___ 
(a)  brought an action for infringement of the registered trade mark in respect 
of the goods; and 
(b)  given to the 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)] notice in writing of the action. 
 (2) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of 
Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] shall also release the 
seized goods to their designated importer, consignee or owner if___ 
(a)  before the end of the prescribed period, the applicant, by notice in writing 
to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or 
Collector of Customs or any competent authority under the Custom Act, 1969 
(IV of 1969)], consented to the release of the goods; and 
(b) at that time, 
 
 
 
1Subs. by Act No. LVIII of 2023, ss. 19-21.  
 
Page 43 of 91 
 
 
 
 
(i)  the applicant has not brought an action for infringement of the 
registered trade mark in respect of the goods; or 
 
 
(ii)  the action brought by the applicant has been withdrawn. 
(3) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of 
Customs or any competent auth ority under the Custom Act, 1969 (IV of 1969)]  may release the 
seized goods to their designated importer, consignee or owner before the end of the specified period 
if___ 
(a)  having regard to information that has come to his knowledge after the goods 
were seized, he is satisfied that there are no reasonable grounds of 
believing that the registered trade mark has been infringed by the importation 
of the goods; and 
(b)  the applicant has not so far brought an action for infringement of the registered 
trade mark in respect of the goods, or has not informed him of such an action. 
 60. Action for infringement against importation of infringing goods.___(1) The 
applicant may bring an action for infringement of a registered trade mark in respect of the seized 
goods and give a notice to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) 
or Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)] , 
subject to the provisions of clause (b), within ten working days specified in the notice given to the 
applicant in respect of the goods, under section 57 or if___ 
(i)  the applicant has, before the expiry of the specified period, applied in writing 
to the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or 
Collector of Customs or any competent authority under the Custom Act, 1969 
(IV of 1969)] for a extension of the specified period; and 
(ii)  the 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or 
Collector of Customs or any competent authority under the Custom Act, 1969 
(IV of 1969)] , being satisfied that in the circumstances of the case it is fair 
and reasonable to do so, has extended the specified period for a 
number of wo rking days not exceeding ten days, within that period so 
extended by t he 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)]. 
 (2) 1[an IP Tribunal] hearing the action___ 
(a)  may, on the application of any person, allow that person to be joined as a 
defendant in the case; and 
(b)  shall allow the 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)], or his duly authorised officer, to appear and 
be heard. 
 
1Subs. by Act No. LVIII of 2023, ss. 21-22 
 
Page 44 of 91 
 
 
 
 
 (3) Subject to sub-section (4), in addition to any relief that 1[an IP Tribunal]  may grant 
apart from the provisions of this section, the Court may— 
(a)  at any time, if it thinks it just, order that the seized goods be released to 
their designated owner subject to such conditions that the Court considers fit 
to impose; or 
(b)  order that the seized goods be forfeited. 
 (4) 1[An IP Tribunal] shall not make any order which may facilitate___ 
(a)  re-exporting of the counterfeit trade mark goods; 
(b)  removing of the trade marks which have been affixed to the counterfeit trade 
mark goods without authorization; and 
(c)  local sale of such goods. 
 (5) if 1[an IP Tribunal]  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, satisfies the 
Court that he has suffered losses or damage because the goods were seized, the Court may order the 
applicant to pay the defendant compensation, in the amount determined by the Court, for any part 
of the loss or damage that is attributable to any period beginning on or after the day on which the 
action was brought. 
 (6) If, after three weeks from the day on which the action was brought, there is not in force 
at any time an order of a 1[an IP Tribunal] preventing the goods from being released, the 1[Director 
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any 
competent authority under the Custom Act, 1969 (IV of 1969)]  shall release the goods to their 
designated importer, consignee or owner. 
 (7) If 1 [an IP Tribunal]  orders that the goods be released, the 1[Director General, IPR 
(Enforcement), Director, IPR (Enforcemen t) or Collector of Customs or any competent authority 
under the Custom Act, 1969 (IV of 1969)] shall, subject to section 63, comply with the order. 
 61. Action for infringement by licensee in relation to any seized goods.___If an exclusive 
licensee of a registered trade mark is an applicant in relation to any seized goods, the licensee 
may commence an action for the infringement of the registered trade mark in respect of the goods 
within the required period without first ascertaining whether the proprietor is willing to bring the 
action. 
 62. Disposal of forfeited goods.___(1) Subject to sub-section (2), any goods forfeited under 
the provisions of this Chapter shall be disposed of by the 1[Director General, IPR (Enforcement), 
Director, IPR (Enforcement) or C ollector of Customs or any competent authority under the Custom 
Act, 1969 (IV of 1969)]  in the manner as if the goods were forfeited under the Customs Act, 1969 
(IV of 1969). 
  
 
1Subs. by Act No. LVIII of 2023, ss. 22-23 
 
Page 45 of 91 
 
 
 
 
(2) The 1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of 
Customs or any competent authority under the Custom Act, 1969 (IV of 1969)]  shall not dispose 
of goods in a manner which may facilitate___ 
(a)  re-exporting of the counterfeit trade mark goods; 
(b)  removing of the trade marks which have been affixed to the counterfeit trade 
mark goods without authorization; and 
(c)  local sale of such goods. 
 63. Power of the Collector of Customs to retain control of goods.___Notwithstanding 
anything contained in th is Chapter, the 1[Director General, IPR (Enforcement), IPR (Enforcement) 
or Collector of Customs or any competent authority under the Custom Act, 1969 (IV of 1969)]  shall 
not___ 
(a)  release, or dispose of, any goods; or 
(b)  take any action in relation to the goods to given effect to any order of [an IP 
Tribunal] under section 60, and 1[Director General, IPR (Enforcement), 
Director, IPR (Enforcement) or Collector of Customs or any competent 
authority under the Custom Act, 1969 (IV of 1969)]  shall apply to  the 
District Court to request that the goods are required and he may be allowed to 
retain control of the goods under any law for the time being in force. 
64. Insufficient security.___if security give under section 55 by t he applicant who gave 
notice in respect of a registered trade mark under section 53 or section 61 is not sufficient to meet 
the expenses incurred by the Federal Government as a result of the action taken by the 1[Director 
General, IPR (Enforcement), Director, IPR (Enforcement) or Collector of Customs or any 
competent authority under the Custom Act, 1969 (IV of 1969)]  under this Chapter, because of the 
notice, the amount of the difference in the expenses and the amount of security___ 
(a)  shall be a debt due by the applicant to the Federal Government; and 
(b)  shall be recovered by the Federal Government under section 202 of the 
Customs Act, 1969 (IV of 1969). 
 65. The Federal Government not be liable to loss, etc., suffered because of 
seizure.___The Federal Government shall not be liable to a ny loss, damage or delays suffered by a 
person___ 
(a)  because the 1[Director General, IPR (Enforcement), Director, IPR 
(Enforcement) or Collector of Customs or any competent authority under the 
Custom Act, 1969 (IV of 1969)]  seized or failed to seize goods under this 
Chapter; or 
(b)  because of release of any seized goods. 
  
1Subs. by Act No. LVIII of 2023, ss. 23-26. 
 
Page 46 of 91 
 
 
 
 
66. Power of the Collector of Customs to make regulations.___The 1[Director General, IPR 
(Enforcement)] may m ake regulations prescribing the form in which notices shall be made and 
requiring the person making the notices to furnish evidence as to the ownership and to 
comply with such other conditions as may be specified which may include the payment of a fee to 
cover the administrative costs. 
 
CHAPTER VII.___ UNFAIR COMPETITION AND COMPARATIVE 
ADVERTISEMENT 
 67. Definition of unfair competition and provisions relating thereto.___(1) An “unfair 
competition” means any act of competition contrary to  honest business practices in indust rial or 
commercial matters and, without prejudice to the generality of the  foregoing, su ch acts m ay 
include___ 
(a)  all acts of such nature as to create confusion by any means whatsoever with 
the establishment, goods, services or industrial or commercial activities of a 
competitor; 
(b)  false allegations in the course of t rade of such a n ature as to discredit the 
establishment, goods, s ervices or indust rial or commercial activities of a 
competitor; 
(c)  indications or allegations the use of which in the course of trade is 
liable to misl ead the public as to the nature, manufacturing process, 
characteristics, constituents, quality or the suitability for their purpose of the 
goods or services; 
(d)  any act or practice, in the course of industrial or commercial matters that 
results in the disclosure, acquisition or use by others of information without 
the consent of the person lawfully in control of that information in a manner 
contrary to  honest industrial or  commercial practice so long as such 
information relates to sale or manufacture of goods or provision of services 
and___ 
(i)  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 the circles that 
normally deal with the kind of information in question; 
(ii)  has commercial value because it is secret; and 
(iii)  has been subject to reasonable steps under circumstances, by the 
person lawfully in control of the information, to keep it secret; 
 
 
 
1Subs. by Act No. LVIII of 2023, s.27. 
 
Page 47 of 91 
 
 
 
 
(e)  making of false or deceptive statements in the course of trade;  
(f)  misleading advertising; or 
(g)  fraudulently registering or applying for registration of a trade mark. 
Explanation.___For the purposes of clause (d) “a manner contrary to honest industrial or 
commercial practice” shall mean, at least, practices such as breach of contract, breach of confidence 
and inducement to breach, and includes the acquisition of undisclosed information by third parties 
who knew, or were grossly negligent in failing to know, that such parties were involved in the 
acquisition. 
 (2) Any act of unfair competition shall be unlawful. 
 (3) An action against unfair competition may be brought before 1 [an IP Tribunal] of 
competent jurisdiction. 
 68. Misleading and comparative advertisement.___(1) Comparative advertisement shall, 
as far as comparison is concerned, be lawful subject to the following conditions, namely:___ 
(a)  it is not misleading according to clause (xxiv) of section 2, and sub-section 
(2); 
(b)  it compares goods or services meeting the  same needs or intended for the 
same purpose; 
(c)  it objectively compares one or more material, relevant, verifiable and 
representative features of those goods and services, which may include price; 
(d)  it does not create confusion in the market place between the advertiser and a 
competitor or between the advertiser’s trade marks, trade names, other 
distinguishing marks, goods or services and those of the competitor; 
(e)  it does not  discredit or di sparage the  trade marks, trade names, other 
distinguishing ma rks, goods, services, activities or circumstances of a 
competitor; 
(f)  for products with designation of origin, it relates in each case to products 
with same designation; 
(g)  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 
of competing products; and 
(h)  it does not present goods or services as imitations or replicas of goods or 
services bearing a protected trade mark or trade name. 
 
 
1Subs. by Act No. LVIII of 2023, s.28. 
 
Page 48 of 91 
 
 
 
 
 (2) In determining whether an advertising is misleading, the tribunal shall take account of all 
its features, and in particular of any information it contains concerning— 
(a)  the characteristics of goods or services, such as their availability, nature, 
execution, composition, method and date of manufacture or provision, fitness 
for pu rpose, uses, specification, geographical or commercial origin or the  
results to be expected from their use, or the results and material features of 
tests or checks carried out on the goods or services; 
(b)  the price or the manner in which the price is calculated, and the conditions on 
which the goods are supplied or the services provided; and 
(c)  the nature, attributes and rights of the advertiser, such as his identity and 
assets, his  qualifications and ownership of indust rial, commercial or 
intellectual property rights or his awards and distinctions. 
(3) Any p erson having a  legitimate interest in prohibiting misleading advertisement or 
regulating comparative advertising may institute  legal action against such advertising before the 
tribunal. 
(4) For all complaints made to the tribunal under sub-section (3), the tribunal shall take into 
account all the interests involved and in particular the public interest before it orders___ 
(a)  publication of a corrective statement by the advertiser; 
(b)  cessation of misleading advertising or unpermitted comparative advertising; 
or 
(c)  if the misleading advertising or unpermitted comparative advertising has not 
yet b een publish ed but publication is immin ent, the p rohibition of  such 
publication. 
 (5) This section shall not exclude voluntary control of misleading or comparative 
advertisement by self-regulatory bodies and recourse to such bodies by the persons if proceedings 
before such bodies are in addition to the tribunal proceedings referred to in sub-section (3). 
CHAPTER VIII.___ASSIGNMENT AND TRANSMISSION 
 69. Assignment of registered trade mark.___(1) A registered trade mark shall be 
transmissible by assignment, testamentary disposition or operation of law in the same way as other 
personal or movable property. 
 (2) A registered trade mark shall also be transmissible either in connection with the 
goodwill of a business or independently. 
 (3) An assignment or other transmission of a registered trade mark tray be partial, that is, 
limited so as to apply___ 
(a)  in relation to some but not all of the goods or services for which the trade 
mark is registered; or 
 
Page 49 of 91 
 
 
 
 
(b)  in relation to use of  the t rade m ark in a  particular m anner or  a particular 
locality. 
 (4) An assignment of a registered trade mark, or an assent relating to a registered trade mark 
shall not be effective unless it is in writing signed by, or on behalf of, the assignor or, as the case 
may be, a personal representative. 
 (5) The provisions of sub-section (4) shall apply to assignment by way of security as in 
relation to any other assignment. 
 (6) Assignment or other transmission of a registered trade mark shall be the subject of  
charge in the same way as other personal or movable property. 
 (7) Nothing in  this Ordinance shall be construed as affecting t he assignment or other 
transmission of an unregistered trade mark as part of the goodwill of a business. 
70. Registration of transaction s affecting registered trade mark .___(1) On 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,  
 
the prescribed particulars of the transaction shall be entered in the Register. 
 (2) The following shall be registerable transactions, namely:___ 
(a)  an assignment of a registered trade mark or any right in it; 
(b)  the grant of a license under a registered trade mark;  
(c)  the granting of any security int erest whether fixed of floating over a 
registered trade mark or any right in or under it; 
(d)  the making by personal representatives of an assent in relation to a registered 
trade mark or any right in or under it; and 
(e)  an order of  the High Court, 1[IP Tribunal]  or other competent authority 
transferring a registered trade mark or any right in or under it. 
 (3) Until an application has been made for registration of the prescribed particulars of a  
registerable transaction___ 
 
 
 
1Subs. by Act No. LVIII of 2023, s.29. 
 
Page 50 of 91 
 
 
 
 
(a)  the transaction shall be ineffective as against a person acquiring a 
conflicting interest in, or under, the registered trade mark in ignorance of it; 
and 
(b)  a person claiming to be a licensee by virtue of the transaction shall not 
have the protection of section 69, 77 or 79. 
 (4) Provisions may be made by rules as to___ 
(a)  the amendment of registered particulars relating to a licence so as to 
reflect any alteration of the terms of licence; and 
(b)  the removal of such particulars from the Register— 
(i)  where it appears from the registered particulars that the licence was 
granted for a fixed period and that period has expired; or 
(ii)  where no such period is indicated and, after such period as tray be 
prescribed, the Registrar has informed the parties of his intention to 
remove the particulars from the Register. 
 (5) Provision may also be made by rules as to the amendment or removal from the Register 
of particulars relating to a security interest on the application of, or with the consent of, the person 
entitled to the benefit of the interest. 
 71. Application for registration of trade mark as an object of property.___(1) The 
provisions of sub-section (1) of section 39, sub-sections (2) to (7) of section 24, section 69 and 
section 70 shall apply, with the necessary modifications, in relation to an application for the 
registration of a trade mark as in relation to a registered trade mark. 
 (2) In section 70 as it applies in relation to transaction affecting an application for the 
registration of a trade mark, the references to the entry of particulars in the Register, and to the 
making of  an application to register particulars, shall be construed as references to the giving of 
notice to the Registrar of those particulars.  
CHAPTER IX.___USE OF TRADE MARKS AND LICENSEES 
 72. Proposed use of trade mark by company to be formed.___(1) No application for the 
registration of a trade mark in respect of any goods or services shall be refused, nor shall permission 
for such registration be withheld, on the ground only that it appears that the applicant does not use 
or propose to use the trademark, if the Registrar is satisfied that___ 
(a)  a company is about to be formed and registered under the Companies 
Ordinance, 1984 (XLVII of 1984), or any modification thereof and that the 
applicant intends to assign the trade mark to that company with a view to 
the use thereof in relation to those goods or services by the company; or 
 (b)  the applicant intends it to be used by way of permitted use. 
 
 
Page 51 of 91 
 
 
 
 
(2) The provisions of section 73 shall have effect, in relation to a trade mark registered under 
this sub-section, as if for the references, in clause (a) of subsection (1) of that section to intention 
on the p art of an applicant for registration that a t rade m ark should be us ed by him there were 
substituted a reference to intention on his part that it should be used by the company or the 
authorised user concerned. 
 (3) The tribunal may, in a case to which clause (a) of sub-section (1) applies, require the 
applicant to give security for the costs of any proceedings relating to any opposition or appeal, and 
in default of such security being duly given, may treat the application as abandoned. 
 (4) Where in a case to which clause (a) of sub-section (1) applies, a trade mark in respect of 
any goods or services is registered in the name of an applicant who relies on intention to assign the 
trade mark to a company, then unless within such period as may be p rescribed or within such 
further period not exceeding six months as the Registrar may, on application being made to him in 
the prescribed manner, allow, the company has been registered as the proprietor of the trade mark in 
respect of those goods or services, the registration shall cease to have effect in respect thereof at the 
expiration of that period and the Registrar shall amend the Register accordingly. 
 73. Revocation of registration.___(1) The registration of a trade mark may be revoked on 
any of the following grounds, namely:___ 
(a)  that within the period of five years following the date of completion of 
registration procedure it has not been put to bona fide use in Pakistan by the 
proprietor or by an authorised user thereof, in relation to the goods or services 
for which it is registered and there are no proper reasons for its non-use; 
(b)  that the bona fide use has been suspended for an uninterrupted period of five 
years and there are no proper reasons for its non-use; 
(c)  that in consequence of acts or inactivity of the proprietor. it has become the 
common name in the t rade for a product or service for which it is registered; 
and 
(d)  that in consequence of the use made 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 misl ead the publi c, particularly as to the nature, quality or 
geographical origin of those goods or services. 
 (2) For the purpose of sub-section (1), use of trade mark shall include use in a form differing 
in elements which do not alter the distinctive character of the mark in the form in whi ch it  was 
registered. 
 (3) The registration of a trade mark shall not be revoked on the grounds specified in clause 
(a) or (b) of sub-section (1), if such use, as it referred to in those clauses, is commenced or resumed 
after the expiry of the five years’ period and before the application for revocation is made: 
 Provided that any such commencement or resumption of use after the expiry of five years 
period but only three months before the application for revocation is made, shall only be regarded 
if the preparation for commencement or resumption began before the proprietor became aware that 
the application is made. 
 
Page 52 of 91 
 
 
 
 
(4) An application for revocation may be made by an interested party to  the Registrar, 
except that___ 
(a)  if proceedings concerning the trade mark in question are pending in the 
High Court 1[* * *], the application shall be made to the High Court 1[* * *]; 
and 
(b)  in case the application is made to the Registrar, he may at any stage of the 
proceedings refer the application to the High Court 1[* * *]. 
 (5) Where grounds for revocation exist in respect of only some of the goods or 
services for whi ch the t rade mark is registered, revocation shall relate to those goods or services 
only. 
 (6) Where the registration of a trade mark is revoked to any extent, the rights of the 
proprietor shall be deemed to have ceased to that extent as from___ 
(a)  the date of the application for revocation; or 
(b)  if the Registrar, 1[or the High Court] is satisfied that the grounds for 
revocation existed at an earlier date, that date. 
 (7) Where the registration of a trade mark is revoked or declared invalid on the 
ground that the registration was secured in bad faith, the applicant shall be barred from applying for 
registration of the identical or similar trade mark for two years from the date of revocation or  
invalidation, whatever her the case may be. 
 74. Use of trade mark by a person other than the proprietor thereof.___(1) The permitted 
use of a trade mark shall be deemed to be use of the trade mark by the owner of the trade mark and 
shall be deemed not to be used of the trade mark by a person other than the owner for any purpose 
for which such use is material under this Ordinance or any other law for the time being in force. 
(2) The tribunal while determining as to whom the benefit of use of a trade mark be passed, 
shall pass the benefit to none else, except to___ 
(a)  the proprietor of the trade mark, if the trade mark is registered; or 
(b)  the owner of the trade mark, if the trade mark is entitled to protection 
under the Paris Convention as a well known trade mark. 
 75. Licensing of registered trade mark.___(1) A license to use a registered trade mark 
may be general or limited. 
 (2)  A limited licensee may, in particular, apply___ 
(a)  in relation to some but not all of the goods or services for which the trade 
mark is registered; or 
 
1Omitted and Subs. by Act  No. LVIII of 2023, s.30. 
 
Page 53 of 91 
 
 
 
 
 (b)  in relation to the use of the trade mark in a particular manner or a 
particular locality. 
 (3) A license shall not be effective unless it is in writing signed by or  on behalf of the 
grantor. 
(4) Unless the license provides otherwise, it shall be binding on a successor in title to the 
grantor's interest. 
 (5) Where the license so provides, a sub-license may be  granted by the  licensee; and 
references in this Ordinance to a license or licensee shall include a sub-license or sub-licensee. 
 76. Exclusive license defined.___(1) In this Ordinance, an “exclusive license” means a 
license, whether general or lim ited, authorizing the  licensee to the exclusion of all oth er p ersons 
including the person, granting the license, to use a registered trade mark in the m anner 
authorised by the license and the expression “exclusive licensee” shall be construed accordingly. 
 (2) An exclusive licensee shall have the same rights against a successor in title who is 
bound by the license as he has against the person granting the license. 
 77. General provisions as to the rights of licensees in case of infringement.___(1) Save 
as provided in s ection 61, a licensee shall be entitled, unless his li censee, or any licensee through 
which his interest is derived, provides o therwise, to call on the proprietor of the registered trade 
mark to take infringement proceedings in respect of any matter which affects his interests: 
 Provided that if the proprietor___ 
(a)  refuses to do so; or 
(b)  fails to do so within two months after being called upon,  
the licensee may bring the proceedings in his own name as if he were the proprietor. 
 (2) Where infringement proceedings are brought by a  licensee under this section, the 
licensee may not, without the leave of the High Court or 1[an IP Tribunal], proceed with the action 
unless the proprietor is either joined as a plaintiff or added as a defendant; 
Provided that this shill not affect the granting of interlocutory relief on an application by a 
licensee alone. 
(3) A proprietor who is added as a defendant as provided in sub-section (2) shall not be 
made liable for any costs in the action unless he takes part in the proceedings. 
(4) In infringement proceedings brought by the  proprietor of a registered trade mark any 
loss suffered or likely to be suffered by licensees shall be taken into account and the High Court or 
1[an IP Tribunal] may give such directions as it thinks fit as to the extent to which the plaintiff shall 
hold the proceeds of any pecuniary remedy on behalf of licensees. 
 
 
1Subs. by Act No. LVIII of 2023, s.31. 
 
Page 54 of 91 
 
 
 
 
 (5) The provisions of this section shall apply in relation to an exclusive licensee if or to the 
extent that he has, under sub-section (1) of section 78, the rights and remedies of an assignee as if he 
were the proprietor of the registered trade mark. 
 78. Exclusive licensee having rights and remedies of assignee.___(1) An exclusive license 
may provide that the licensee shall have, to such extent as may be provided by the license, the same 
rights and remedies in respect of matters occurring after the grant of the license as if the license 
had been assignment. Where or to the extent that such provision is made, the licensee shall be 
entitled, subject to the provisions of the license and to the following provisions of this se ction, to 
bring infringement proceedings, against any person other than the proprietor, in his own name. 
 (2) Any such rights and remedies of an exclusive licensee shall be concurrent with those 
of the proprietor of the registered trade mark, and references to the proprietor of a registered 
trade mark in this Ordinance relating to infringement shall be construed accordingly. 
 (3) In an action brought by an exclusive licensee by virtue of this section, a defendant may 
avail himself of any defence which would have been available to him if the action had been brought 
by the proprietor of the registered trade mark. 
 (4) Where proceedings for infringement of a registered trade mark brought by the proprietor 
or an exclusive licensee relate wholly or partly to an infringement in respect of which they have 
concurrent rights of action, the proprietor or, as the case may b e, exclusive li censee may not,  
without the leave of the High Court or 1[an IP Tribunal], proceed with the action unless the other is 
either joined as plaintiff or added as a defendant: 
 Provided that this shall not affect the granting of interlocutory relief on an application by a 
proprietor or exclusive licensee alone. 
 (5) A person who is added as a defendant as mentioned in sub-section (4) shall not be made 
liable for any costs in the action unless he takes part in the proceedings. 
 (6) Where an action for infringement of a registered trade mark is brought which relates 
wholly or partly to an infringement in respect of which the proprietor and an exclusive li censee 
have or had concurrent rights of action— 
 (a)  the High Court or 1[an IP Tribunal] shall in assessing damages take into 
 account___ 
 (i)  the terms of the license; and 
 (ii)  any pecuniary remedy already awarded or available to either of 
 them in respect of the infringement; 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s.31-32 
 
 
Page 55 of 91 
 
 
 
 
 (b)  no account of profits shall be directed if an award of damages has been 
made, or an account of p rofits has been di rected, in favour of the oth er of  
them in respect of the infringement; and 
(c)  the High Court or 1[an IP Tribunal]  shall if an account of profits is directed 
apportion the profits between them as it, subject to any agreement between 
them, considers just. 
 (7) T he provisions of sub-section (6) shall apply wh ether or not the proprietor and the 
exclusive licensee are both parties to the action, the High Court or 1[an IP Tribunal] may give such 
directions as it thinks fit as to the extent to which the party to  the proceedings shall hold the 
proceeds of any pecuniary remedy on behalf of the other. 
 (8) The proprietor of a registered trade mark shall inform any exclusive licensee who has a 
concurrent right of action before applying for an order under section 48, and the High Court or 1[an 
IP Tribunal] may, on the application of the licensee, make such order under that section as it thinks 
fit having regard to the license. 
 (9) The provision of sub-sections (4) to (8) shall have effect subject to any agreement to the 
contrary between the exclusive licensee and the proprietor. 
  79. Surrender of registered trade mark.___(1) 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. 
 (2)  Provisions may be made by rules, 
(a)  as to the manner and effect of a surrender; and 
(b)  for protecting the interests of other persons having right in the registered 
trade mark. 
80. Grounds for invalidity of registration.___(1) The registration of a trade mark ma y be 
declared invalid on the ground that the trade mark was registered in breach of section 14 or any of 
the provisions thereof. 
 (2) Where the trade mark was registered in breach of clause (b). (c) or (d) of sub-section (1) 
of section 14, it shall not be declared invalid if, in consequence of the use which has been made of 
it, it  has after registration acquired a distinctive character in relation to t he goods or services for 
which it is registered. 
(3) The registration of a trade mark may be invalid on the ground that there is___  
(a)  an earlier trade mark in relation to which the conditions set out in 
subsection (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,  
 
1Subs. by Act No. LVIII of 2023, s.32. 
 
 
Page 56 of 91 
 
 
 
 
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration. 
(4) An application for declaration of invalidity may be made by an interested party either 
to the Registrar or to the High Court 1[* * *], except that___ 
(a)  if proceedings concerning the trade mark in question are pending in the 
High Court 1[* * *], the application shall be make to the High Court 1[* * *]; 
and 
(b)  in any other case, if the application has been made to the Registrar, he may 
at any stage of the proceedings refer the application to the Hi gh Court 1[* * 
*]. 
 (5) 1[* * * * * * *] 
(6) Where the grounds of invalidity exist in respect of only some of the goods or services 
for whi ch the t rade mark is registered, the tr ade m ark shall be declared invalid as regards those  
goods or services only. 
 (7) Where the registration of a trade mark has been declared invalid to any extent, the 
registration shall to that extent be deemed never to have been made provided that this shall not 
affect the transactions past and closed. 
 81. Effect of acquiescence.___(1) Where the owner of an earlier trade mark, or other 
earlier rights, has acquiesced for a continuous period of five years from the date of registration in the 
use of a registered trade mark in Pakistan, being aware of th at use, there sh all cease to be any 
entitlement on the basis of that earlier trade mark or other right___ 
(a)  to apply for a  declaration that the registration of the l ater t rade m ark is 
invalid; or 
(b)  to 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. 
 (2) Where sub-section (1) applies, the proprietor of the later trade mark shall not be entitled 
to oppose the use 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 or longer be invoked against 
his later trade mark. 
 82. Collective marks.___(1) A collective mark shall be a mark distinguishing the goods 
or services of members of the association which is the proprietor of the mark from those of  
other undertakings. 
 (2) The provisions of this Ordinance shall apply to collective marks subject to the 
provisions of the First Schedule. 
 
1Omitted by Act No. LVIII of 2023, s.33. 
 
Page 57 of 91 
 
 
 
 
 83. Certification marks.___(1) A certification mark shall be 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 o rigin, mode of m anufacture of goods or p erformance of s ervices, quality, accuracy or other 
characteristics. 
(2) The provision s of this O rdinance shall apply to certification marks sub ject to the 
provision of the Second Schedule. 
 
 84. Domain names.___(1) A domain name shall be a mark which is a user friendly 
substitute for an Internet address. 
 (2) The provisions of this Ordinance shall apply to domain names subject to the 
provisions of the Third Schedule. 
 
CHAPTER X.___THE PARIS CONVENTION 
 
 85. Meaning of “Paris Convention” and “Convention country”.___In this Ordinance__ 
(a)  “Paris Convention” means the Paris Convention for the Protection of 
Industrial Property of the 20th March, 1833, as revised or amended from time 
to time; and 
 
(b)  a “Convention country” means a country other than Pakistan which is a 
party to the Paris Convention. 
 86. Protection of well known trade mark.___(1) Reference in this Ordinance to a trade 
mark which is entitled to protection as well-known trade mark shall be to a mark which is  so 
entitled under the Paris Convention and which is well-known in Pakistan as being the m ark of a 
person who___ 
(a)  is a national of a Convention country; or 
(b)  is domiciled in, or h as a real and effective industrial or commercial 
establishment in, a Convention country, whether or not that person carries on 
business, or has any goodwill, in Pakistan and references to the proprietor of 
such a mark shall be construed accordingly. 
 (2) For the purposes of this Ordinance, the tribunal while determining whether a trade mark 
is well known, without having to require registration or actual use in the form of sales of goods or 
services under the trade mark in Pakistan, shall consider the following factors as relevant criteria for 
establishing the well known status of the trade mark, namely:— 
(i)  the amount of Pakistan or worldwide recognition of the trade mark;  
(ii)  the degree of inherent or acquired distinctiveness of the trade mark; 
(iii)  the Pakistan or worldwide duration of the use and advertising of the trade 
mark; 
(iv)  the Pakistan or worldwide commercial value attributed to the trade mark; 
 
Page 58 of 91 
 
 
 
 
(v)  the Pakistan or worldwide geographical scope of the use and advertising of 
the trade mark; 
(vi)  the Pakistan or worldwide quality and image that the trade mark has 
acquired; and 
(vii)  the Pakistan or worldwide exclusivity of use and registration attained by the 
trade mark and the presence or absence of identical or deceptively s imilar 
third party trade marks validly registered or used in relation to identical or 
similar goods and services. 
 (3) The owner of a trade mark which is entitled to protection under the Paris Convention as 
a well-known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade 
mark which, or the essential part of which, is identical or deceptively simil ar to the w ell-known 
trade mark__ 
(a)  in relation to identical or similar goods or services, where the use is likely to 
cause confusion; or 
(b)  where such use causes dilution of the distinctive quality of the well-known 
trade mark. 
 (4) Rights conferred under sub-section (3) shall be subject to the provisions of section 81 
and nothing in the said sub-section shall affect the continuation of any bona fide use of a trade 
mark begun before the commencement of this Ordinance. 
 
 87. National emblems of Convention countries.___(1) A trade mark which consist of or 
contains the flag of a Convention country shall not be registered without the authorization of the 
competent authorities of that country, unless it appears to the Registrar that use of the flag in the 
manner proposed is permitted without such authorization. 
 (2) A t rade mark wh ich consist of, or  contains, the armorial bearings or any other st ate 
emblem of a Convention country whi ch is protected under the Paris Convention shall not be 
registered without the authorization of the competent authorities of that country. 
 (3) A trade mark which consists of, or contains, official mark or hallmark adopted by a  
Convention country and indicating control and warranty shall not, where the mark or hallmark is 
protected under the Paris Convention, be registered in relation to goods or services of the same, or a 
similar kind, as those in relation to which it indicates control and warranty, without the authorization 
of competent authorities of the country concerned. 
 (4) The provisions of this section as to national flag and other state emblem, and o fficial 
mark or hallmark, shall apply equally to anything which from a heraldic point of view imitates 
such flag or other emblem, mark or hallmark. 
 (5) Nothing in this section shall prevent the registration of a trade mark on the application of 
the national of a country who  is authorized to make use of a state emblem, or o fficial mark or 
hallmark, of that country, notwithstanding that it is similar to that of another country. 
 (6) Why by virtue of this section the authorization of competent authorities of a Convention 
 
Page 59 of 91 
 
 
 
 
country is or would be required for the registration of a trade mark, those authorities shall be 
entitled to restrain by injunction any use of the mark in Pakistan without their authorization. 
 88. Emblems of certain international organizations.___(1) A trade mark which consists 
of or contains any such emblem, abbreviations or name which is protected under the  Paris 
Convention shall not be registered without the authorization of the  international o rganization 
concerned, unless it is appears to the Registrar that the use of the emblem, abbreviation or name in 
the manner proposed— 
(a)  is not such as to suggest to the public that a connection exists between the 
organization and the trade mark; or 
(b)  is not likely to mislead the public as to the extent of a connection between 
the user and the organization. 
 (2) The provisions of this section as to emblem of an international organization shall apply 
equally to anything which from a heraldic point of view imitates any such emblem. 
 (3) When under this section the authorization of an international organizations is, or would 
be, required for the registration of a t rade mark, that organization shall be entitled to restrain by 
injunction any use of the mark in Pakistan without its authorization. 
 (4) Nothing in this section shall affect the rights of a person whose bona fide use of the 
trade mark in question began before the commencement of this Ordinance. 
89. Notifications under Article 6ter of the Paris Convention.___(1) For the purposes of 
section 87, state emblem of a Convention country, other than the national flag, and official marks and 
hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that— 
(a)  the country in  question has notified Pakistan in accordance with Article 
6ter(3) of the Paris Convention that it desires to protect that emblem, mark or 
hallmark;  
(b)  the notification remains in force; and 
(c)  Pakistan has not objected to it in accordance with Article 6ter(4) of the 
Paris Convention or any such objection has been withdrawn. 
 (2) For the purposes of section 88, the emblems, abbreviations and names of an international 
organization shall be regarded as protected under the Paris Convention only if, or  to the extent 
that___ 
(a)  the organization in question has notified Pakistan in accordance with Article 
6ter(3) of the  Paris Convention that it desires to protect that emblem, 
abbreviation and name; 
(b)  the notification remains in force; and 
(c)  Pakistan has not objected to it in accordance with Article 6ter(4) of the 
Paris Convention or any such objection has been withdrawn. 
 
Page 60 of 91 
 
 
 
 
 (3) A notification under Article 6ter(3) of the Paris Convention shall have effect only in  
relation to applications for registration made more than two months after the receipt of su ch 
notification. 
 (4) The Registrar shall keep and make available for public inspection by any person, at all 
reasonable hours and free of charge, a list of___ 
(a)  the state emblems and official marks or hallmarks: and 
(b)  the emblems, abbreviations and names of international organizations, 
Which are for the time being protected under the Paris Convention by virtue of notification 
under Article 6ter(3) of the Paris Convention. 
 90. Acts of agent or representative.___(1) Where an application for registration of a trade 
mark is made by a person who is an importer, or an agent not being an agent under section 128, or a 
representative of a person who is the proprietor of the mark in a Convention country, then___ 
(a)  if the proprietor opposes the application, registration shall be refused; or 
(b)  if the application, not being so opposed, is granted, the proprietor may___ 
(i)  apply for the declaration of the invalidity of the registration; or 
(ii)  apply for the rectification of the Register so as to substitute his name as 
the proprietor of the registered trade mark. 
 (2) The proprietor may notwithstanding the rights conferred by this Ordinance, in relation to 
a registered trade mark, by injunction restrain any use of the trade mark in Pakistan which is 
not authorised by him. 
 (3) The provisions of sub-section (1) or (2) shall not apply if, or to extent that, the agent or 
representative justifies his action. 
(4) An application under clause (a) or (b) of sub-section (1) shall be made within three years 
of the proprietor becoming aware of the  registration, and no injunction shall be granted under sub-
section (2) in respect of a use in which the proprietor has acquiesced for a continuous period of three 
years or more. 
 91. Nature of goods or services to which a mark is to be applied.___For the purposes of 
registration of a trade mark under this Ordinance, the nature of goods or services to which a trade 
mark is to be applied shall in no case form an obstacle to the registration of the trade mark. 
 92. Trade name.___A trade name shall be protected without the obligation of filing or 
registration under this Ordinance whether it forms part of a trade mark or not. 
 
 
 
 
Page 61 of 91 
 
 
 
 
1[CHAPTER-XA.___ 
 
INTERNATIONAL REGISTRATION OF TRADE MARKS 
 
 92A. International registration under Madrid Protocol. ___The provisions of t his Chapter 
shall apply to international applications and international registrations under the Madrid Protocol. 
 
 92B. Definitions.___In this Chapter, unless the context otherwise requires, ___ 
(i) “application”, in relation to a contracting state or a contracting organization, 
means an application made by a person wh o is a citizen of, or is domiciled in, 
or has a real and effective industrial or commercial establishment in, that 
contracting state or a state which is a member of that contracting organization, 
as the case may be. 
Explanation.___For the purposes of this clause, “real and effective industrial or commercial 
establishment” means and includes any establishment where some bona fide industrial or commercial 
activity takes place and need not necessarily be the principal place of business; 
(ii) “basic application” means an applica tion for the reg istration of a trade mark 
filed under section 22 and which is used as a basis for applying for an 
international registration; 
(iii) “basic registration” means the registration of a trade mark under section 33 
and which is used as a basis for applying for an international registration; 
(iv) “common regulations” means the Common Regulations under the Madr id 
Agreement Concerning the International Registration of Marks and the 
Protocol Relating to that Agreement; 
(v) “contracting organization” means a contracting party that is an  inter-
governmental organization; 
(vi)    “contracting party” means a contracting state or contracting organization party 
to the Madrid Protocol; 
(vii) “contracting state” means a country party to the Madrid Protocol; 
(viii) “designation”, with its grammatical variations, is a request for the extension of 
protection under Article 3ter(1) or (2) of the Madrid Protocol, as the case may 
be; it also means such extension as recorded in the International Register; 
(ix)  “designated contracting party” is a Contracting Party for which the extension 
of protection has b een requested under Article 3ter(1) or  (2) of t he Madrid 
Protocol, as the case may be, or in respect of which such extension has been 
recorded in the international register; 
(x)     “international application” means an application for international registration 
or for extension of the protection resulting from an international registration to 
any contracting party made under the Madrid Protocol; 
  
1Ins. by Act No. LVIII of 2023, s.34. 
 
Page 62 of 91 
 
 
 
 
 (xi)    “international bureau” means the international bureau of the world intellectual 
property organization; 
(xii) “international registration” m eans the registration of a trade mark in the 
register of the international bureau effected under the Madrid Protocol; 
(xiii) “Madrid Agreement” means the Madrid Agreement Concerning the 
International Registration of Marks adopted at Madrid on the l4th day of 
April, 1891, as subsequently revised and amended; 
(xiv) “Madrid Protoco l” means the Protocol relating to the Madrid Agreement 
Concerning the International Registration of Marks adopted at Madrid on the 
27th day of June, 1989, as amended from time to time; and 
(xv) “office of origin” means the office through the intermediary o f which the 
international application is filed in accordance with Article 2(2) of the Madrid 
Protocol. 
92C. Trade Marks Registry to deal with international applications .___An international 
application shall be dealt with by the Trade Marks Registry or such  branch offices of the Registry, as 
the Organization may specify. 
92D. International application ori ginating from Pakistan .___(1) Where an application for 
registration of a trade mark has been made under section 22 or a trade mark has been registered 
under section 33, the applicant or the registered proprietor may make an international application on 
the form prescribed by the Common Regulations for international registration of that trade mark. 
(2) A person holding an international registration may make an  international application on 
the form prescribed by the Common Regulations for extension of the protection resulting from such 
registration to any other contracting party. 
(3) An international application under sub -section (1) or sub -section (2) shall des ignate the 
contracting parties where the protection resulting from the international registration is required. 
(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the 
international application correspond to the partic ulars appearing, at the time of the certification, in 
the application under section 22 or the registration under section 33, and shall indicate the date and 
number of that application or the date and number of that registration as well as the date and numb er 
of the application from which that registration resulted, as the case may be, and shall within the 
prescribed period, forward the international application to the international bureau for registration, 
also indicating the date of the international application. 
92G. Duration and renewal of international registration. ___(1) The international 
registration of a trade mark at the international bureau shall be for a period of ten years and may be 
renewed for a period of ten years from the expiry of the preceding period. 
(2) Subject to payment of a surcharge prescribed by the rules, a grace peri od of six 
months shall be allowed for renewal of the international registration. 
 
Page 63 of 91 
 
 
 
 
92H. Transformation.___The date of filing of an application for the registration of a tra de 
mark made to the Registrar in accordance with Article 9 quinquies of the Madrid Protocol shall be 
the date of the cancelled international registration and, if the international registration enjoyed the 
right of priority, the application shall enjoy the same priority. 
92I. Extracts from the international register .___(1) Extracts from the international register 
issued by the international bureau shall be exempt from any legalization in Pakistan. 
(2) In all legal proceedings relating to a trade mark in an i nternational registration in which 
Pakistan is a designated contracting party, the fact that a person is recorded as proprietor thereof in 
the international register shall be prima facie evidence of the validity of the international registration 
of the trade mark and of all subsequent assignments and transmissions thereof.] 
CHAPTER XI.___SPECIAL PROVISIONS FOR TEXTILE GOODS 
 93. Textile goods.___The 1[administrative division] shall prescribe classes of goods, in this 
Chapter referred to as textile goods, to the trade marks used in relation to which the provisions of this 
Chapter shall apply, and subject to the said provisions, the other provisions of this Ordinance shall 
apply to such trade marks as they apply to trade marks used in relation to other classes of goods. 
 94. Restrictions on registration of textile goods.___(1) In respect of textile goods, b eing 
piece goods___ 
(a)  no m ark consisting of a line h eading alone shall be registerable as a  trade 
mark; 
(b)  a line heading shall not be deemed to be adapted to distinguish; and 
(c)  the registration of a trade mark shall not give any exclusive right to the use 
of a line heading. 
 (2) In respect of any textile goods, the registration of letters or numerals, or any 
combination thereof, shall be subject to such conditions and restrictions as may be prescribed. 
 
 
 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, ss. 35. 
 
Page 64 of 91 
 
 
 
 
 95. Advisory Committees.___(1) The 1 [administrative division] may, in such manner, as 
may be prescribed, constitute one or more Advisory Committees of persons well versed in the 
usages of the textile trade for the purposes of this Chapter. 
 (2) The Registrar shall consult any s uch Advisory Committ ee with respect to any 
circumstances peculiar to the textile trade arising on an application to register a trade mark in respect 
of textile goods. 
 (3) The place of meeting and the conduct of business of any such Advisory Committee shall 
be determined as may be prescribed. 
CHAPTER XII.___RECTIFICATION AND CORRECTION OF THE 
REGISTER 
 96. Rectification or correction of Register.___(1) Any person having a sufficient 
interest may apply for the rectification of an error or omission in the Register: 
Provided that an application for rectification may not be made in respect of a matter 
affecting the validity of the registration of a trade mark. 
 (2) An application for rectification may be made to the Registrar, except that___ 
(a) if proceedings concerning the trade mark in question are pending in the High 
Court or 1[an IP Tribunal], the application shall be made to the High Court or 
1[an IP Tribunal]; and 
(b) in case the application is made to the Registrar, he may at  any stage  of the 
proceedings refer the application to the High Court or 1[an IP Tribunal]. 
 (3) Except where the Registrar or the High Court or 1[an IP Tribunal ] directs otherwise, the 
effect of rectification of the Reg ister shall be that the error or  omission in question shall be deemed 
never to have been made. 
(4) The Registrar may, on application made in such manner, as may be prescribed, by the proprietor 
of the registered trade mark, or a licensee, enter any change in his name  or address as recorded in the 
Register. 
 97. Adoption of entries to new classification. ___(1) The Registrar may, if he considers  it 
necessary, implement any amended or substituted classification of goods or services for the purposes 
of the registration of trade marks as may be prescribed. 
 (2) The existing entries on the Register may be amended to record any new classification as 
may be prescribed. 
 
 
 
1Subs. by Act No. LVIII of 2023, s.36-37. 
 
Page 65 of 91 
 
 
 
 
 (3) Any such power of amendment referred to in sub -sections (2) and (3), shall not be 
exercised so as to extend the rights conferred by the registration except where it appears to the 
Registrar that compliance with this requirement would involve und ue complexity and that any 
extension would not be substantial and would not adversely affect the rights of any person. 
 (4) The Registrar may,___ 
(a)  require the proprietor of a registered trade mark, within such time as may be 
prescribed, to file a proposal for amendment of the Register; and 
(b)  cancel or refuse to renew the registration of the trade mark in the event of his 
failing to do so. 
 (5) Any proposal, referred to in sub -section (4), shall be advertised and may be opposed in 
such manner as may be prescribed. 
CHAPTER XIII.___OFFENCES, PENALTIES AND PROCEDURE 
 98. Meaning of applying a trade description. ___(1) A person shall be deemed to apply a 
trade description to goods or services who___ 
(a)  applies a trade description to the goods themselves o r uses it in relation to 
goods or services; 
(b)  applies a trade description to any package in or with which the goods are sold, 
or exposed for sale, or had in possession for sale or for any purpose of trade o r 
manufacture; 
(c)  places, encloses or annexes  any goods which are sold or exposed for sa le, or 
had in possession for sale or for any purpose of trade or manufacture in or 
with any package or other thing to which a trade description has been applied; 
(d)  uses a trade description in any manner reasona bly likely to lead to the belief 
that the goods or services in connection with which it is used are designated or 
described by that trade description; or 
(e)  in relation to the goods or services uses a trade description in any sign, 
advertisement, invoice , catalogue, business letter, price list or other 
commercial documents, and goods are delivered or services are rendered to a 
person in pursuance of a request or order made by reference to the trade 
description as so used. 
 (2) A trade description shall be  deemed to be  applied to goods whether it is woven in, 
impressed on, otherwise worked into, or annexed or affixed to, the goods or to any packaging or 
other thing. 
 99. Penalty for applying false trade description, etc.___Any person who___ 
(a)  applies any false trade description to goods or services; ___ 
 
Page 66 of 91 
 
 
 
 
(b)  applies to any goods to which an indication of the country or place in which 
they were made or produced or the name and address of manufacturer or 
person for whom the  goods are manufactured is required to be  applied under 
section 126, a false indication of such country, place, name or address; 
(c)  tampers with, alters or effaces an indication of origin which has been applied 
to any goods to which it is required to be applied under section 126; or 
(d)  causes any of the aforementioned things to be done, 
 
shall, unless he proves that he acted without intent to defraud, be punished with imprisonment of 
either description 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. 
 100. Enhanced penalty on s econd or subsequent convictions .___Whoever having already 
been convicted of an offence under section 99 is again convicted of any such offence shal l be 
punished for the second and every subsequent offence with imprisonment of either description for a 
term which shall not be less than six months but which may extend to three years, or with fine which 
shall not be less than one hundred thousand rupees, or with both. 
101. Penalty for falsification of entries in Register .___Any person who makes, or causes 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. 
102. Penalty for falsely representing  a trade mark as registered .___(1) No person shall 
make any representation— 
(a)  with respect to a mark not being a registered trade mark, to the effect that it is 
a registered trade mark; 
(b)  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; 
(c)  to the effect that a registered trade mark is registere d in respect of any goods 
or services in respect of which it is not, in fact, registered; or 
(d)  to the effect that the registration of a trade mark gives an exclusive right to the 
use thereof in any circumstances in which, having regard to limitations entered 
on the Register, the registration does not, in fact, give that right. 
(2) If any person contravenes any of the provisions of sub -section (1), he shall be punishable 
with imprisonment for a term which shall not be less than one month but which may ext end to six 
months, or with fine which shall not be less then twenty thousand rupees, or with both. 
(3) For the purposes of this section, the use in Pakistan in relation to a trade mark of the word 
“registered”, or of any other expression referring whether expressly or impliedly to registration, shall 
be deemed to import a reference to registration in the Register, except___ 
 
Page 67 of 91 
 
 
 
 
(a)  where that word or other expression is used in direct association with other 
words delineated in characters at least as large as those in which that word or 
other expression is delineated and indicating that the reference is to 
registration as a trade  mark under the laws of a country  other than Pakistan, 
being a country under the laws of which the registration referred to is, in fac t, 
in force; 
(b)  where that other expression is of itself such as to indicate that the reference is 
to such registration as is mentioned in clause (a); or 
(c)  where that word is used in relation to a mark registered as a trade mark under 
the laws of a co untry other than Pakistan and in relation solely to goods or 
services to be exported to that country. 
(4) 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 provision s of clauses (a) to (d) of sub -section 
(1) to show cause as to why action should not be taken against him: 
Provided that power of the Registrar shall be limited to the imposition of fine as provided 
under sub-section (2) or, if pending, to refusal of appli cation for registration of the trade mark, or if 
the trade mark is registered, to inval idation of the registration, or  any combination thereof, as the 
case may be. 
103. Restraint of use of Government Arms and State emblems.___If a person, without due 
authority, uses in connection with any trade, business, calling or profession___ 
(a)  the flag of Pakistan in such manner as to be misleading; 
(b)  Government Arms or arms so closely resembling the same as to be calculated 
to deceive, in such manner as to be ca lculated to lead to the belief that he is 
duly authorised so to use the Government Arms; 
(c) name, title and semblance of Quaid-i-Azam Mohammad Ali Jinnah or Allama 
Dr. Mohammad Iqbal or any variations thereof, or any device, emblem or title 
in such manner as to be calculated to lead to the belief that he is employed by, 
or supplies goods to, or is connected with, the Federal Government or any 
Provincial Government or any department of any such Government; or 
(d)  the emblem, the official seal and the name or any abbreviation of the name of 
the United Nations or any subsidiary body set upon by the United Nations or 
of the World Health Organization or of the World Intellectual Property 
Organization or of the World Trade Organization in such manner as is to be  
calculated to lead to the belief that he is duly authorized by the competent 
authorities of these organizations to use the emblem, seal or name,   
he, may, at the suit of the Registrar or of any  person who is authorized to use  such Arms, 
device, emblem or title, be restrained by injunction from continuing so to use the same; 
 
Page 68 of 91 
 
 
 
 
Provided that noting in this section shall be construed as affecting the right, if any, of the 
proprietor of a trade mark containing such Arms, device, emblem or title to continue to use such 
trade mark. 
104. Offences by companies.___(1) If the person committing an offence under this Ordinance 
is a company, the company as well as every person in charge of, and  responsible to, the company for 
the conduct of its business at the time of th e commission of the offence shall be deemed to be guilty 
of the offence and shall be liable to be proceeded against and punished accordingly: 
Provided that nothing contained in this sub -section shall render any such person liable to any 
punishment if he pr oves that the offence was committed without his knowledge or that he exercised 
all due diligence to prevent the commission of such offence. 
(2) Notwithstanding anything contained in sub -section (1), where an offence has been 
committed by a company and it i s proved that the offence has been committed with the consent or 
connivance of, or that the commission of the offence is attributable to any neglect  on the part of any 
director, manager, secretary or other officer of the company, such director, manager, se cretary or 
other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded 
against and punished accordingly. 
Explanation.—For the purposes of this section___ 
(a)  “company” means any body corporate and includes a partner ship, firm or 
other association of individuals; and 
(b)  “director” in relation to a firm, means a partner in the firm. 
105. Powers to award compensation for offences .___(1) In any prosecuti on under this 
Ordinance, the High Court o r 1[an IP Tribunal] may, when passing a sentence of fine, direct that an 
amount not exceeding fifty per  cent 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. 
(2) The payment of any compensation to any person under sub -section (1), shall be without 
prejudice to his right to any claim in a suit or other proceedings which may be instituted, or may be 
pending in the High Court or 1[an IP Tribunal], in relation to the same matter. 
106. Punishment of ab etment in Pakistan of acts done out of Pakistan .___If any person, 
being within Pakistan, abets the commission, without Pakistan of any act which, if committed in 
Pakistan, would, under this Ordinance, be an offence, he may be tried for such ab etment in any place 
in Pakistan in which he may be found and be punished therefor with the punishment to which he 
would be liable if he had himself committed in that place the act which he abetted. 
107. Penalty for improperly describing a place of business as connected with the Trade 
Marks Registry.___If any person uses his place of business, or on any document issued by him, or 
otherwise, words which would reasonably 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. 
1Subs. by Act No. LVIII of 2023, s. 38. 
 
Page 69 of 91 
 
 
 
 
CHAPTER XIV.___MISCELLANEOUS AND GENERAL PROVISIONS 
 108. Power of Registrar to require use of forms. ___(1) The Registrar may require the use of 
such forms as he may direct for any purpose relating to the registration of a trade mark or any  other 
proceedings before him under this Ordinance. 
 (2) The forms and any directions of the Registrar with respect to their use shall be notified in 
the manner as may be prescribed. 
 109. Information about applications and registered trade marks.___(1) After publication 
of an application for registration of a trade mark the Registrar shall on request provide a person with 
such information and permit him to inspect such documents relating to the application, or to any 
registered trade mark resulting from it, as may be specif ied in the request , subject to such 
restrictions, as may be prescribed. 
 (2) Any request under sub -section (1) shall be made in the prescribed manner and be 
accompanied by the prescribed fee. 
 (3) Before publication of an application for registration of a trade mark, document or 
information constituting or relating to the application shall not be published by the Registrar or 
communicated by him to any person except___ 
(a)  in such cases and to such extent as may be prescribed; or 
(b)  with the consent of the applicant,  
 
but subject to the provisions of sub-section (4). 
 (4) Where a person has been informed that an application for registration of a trade mark has 
been made, and that the applicant will if the application is granted bring proceedings against him in 
respect of acts done after publication of the application, he may make a request under sub -section (1) 
notwithstanding that the application has not been published and that sub -section shall apply 
accordingly. 
 110. Costs, security for costs  and fine.___(1) Provisions may be made by rules  empowering 
the Registrar, in any proceedings before him under this Ordinance___ 
  (a)  to award any party such costs as he may consider reasonable; 
(b)  to impose fine as he may consider reasonable; and 
(c)  to direct how and by whom costs or fines shall be paid. 
 (2) Any such order of the Registrar may be executable in the same way as a decree of a 
Civil Court. 
 
 
 
  
 
Page 70 of 91 
 
 
 
 
 (3) Provisions may be made by rules empowering the Registrar, in such cases as may be 
prescribed, to require a party to proceedings before him to give security for  costs in relation to those 
proceedings or to proceedings on appeal and as to the consequences if security is not given. 
 111. Procedure before the Registrar. ___(1) In all proceedings under this  Ordinance before 
the Registrar— 
(a)  the Registrar  shall have all the powers of a Civil Court for the  purposes of 
receiving evidence, administering oaths, enforcing the attendance of 
witnesses, compelling the discovery and production of documents, issuing  
commissions for the examination of witnesses and granting a certificate of 
contested validity; 
1[(b)  evidence, shall be given by affidavit.]  
 (2)  The Registrar shall not exercise any powers vested in him by this Ordinance or the 
rules made thereunder adversely to any party duly appearing before him, if required in writing within 
the prescribed time so to do, without giving such party an opportunity of being heard. 
112. Certificate of validity of contested registration. ___If in any legal proceedings in which 
the validity of the registration of a trade mark comes into question and a decision is given in favour 
of the proprietor of the trade mark, the tribunal may grant a certificate to that effect, and if such a 
certificate is granted, then in any subsequent legal proceedings in which the said validity comes into 
question, the said proprietor on obtaining a final order or judgment in his favour shall, unless the said 
final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges 
and expenses as between legal practitioner and client. 
 
 113. Registrar's appearance in proceedings involving the Register .___(1) In all 
proceedings before the Court involving application for___ 
 
(a) the revocation of the registration of a trade mark; 
 
(b)  a declaration of the invalidity of the registration of a trade mark; or 
 
(c)  the rectification of the Register  
 
the Registrar shall be entitled to appear and be heard and shall appear if so directed by the High 
Court. 
(2) Unless otherwise directed by the High Court, the Registrar may instead of appearing 
submit to the High Court a statement in writing signed by him, giving particulars of___ 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s.39. 
 
Page 71 of 91 
 
 
 
 
(a)  any proceedings before him in relation to the matter in issue;  
(b)  the grounds of any decision given by him affecting it; 
(c)  the practice of the Trade Marks Registry in like cases; or 
(d)  such matters relevant to the issues and within his knowledge as Registrar as he 
thinks fit. 
and the statement shall be deemed to form part of the evidence in the proceedings. 
 (3) Anything which the Registrar is or may be authorized or require to do under this 
section may be done on his behalf by a duly authorized officer by him. 
 114. Appeal against the decision of th e Registrar. ___(1) Save as otherwise expressly 
provided in this Ordinance, an appeal shall lie, within the prescribed period, against any decision of 
the Registrar under this Ordinance or rules made thereunder to the High Court having jurisdiction: 
 Provided that if any suit or other proceedings concerning the trade make in question is 
pending before the High Court or 1[an IP Tribunal] , the appeal shall lie to that High Court, as the 
case may be, to the High Court within whose jurisdiction that 1[IP Tribunal] is situated.   
 (2) In an appeal by an applicant for registration against a decision of the Registrar under 
section 21, 22 or 28, it shall not be open, save with the express permission of the High Court, to the 
Registrar or any party opposing the appeal  to 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. 
 (3) Subject to the provisions of this Ordinance and of rules made thereunder, the provisions 
of the Code of Civil Procedure, 1908 (Act V of 1908), shall apply to appeal before the High Court or 
1[an IP Tribunal] under this Ordinance. 
 115. Procedure before the Federal Government.___In all proceedings under this Ordinance 
before the Federal Government , evidence shall be given by affidavit, provided that the Federal 
Government may, if it thinks fit, take oral evidence in lieu of, or in addition to , such evidence by 
affidavit, and shall for that purpose have all the powers of a Civil Court referred to in clause (a ) of 
section 111. 
 
 
 
 
 
 
 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s.40. 
 
Page 72 of 91 
 
 
 
 
 116. Procedure in certain cases of option to apply to the High Court, a District Court or 
the Registrar.___Where under this Ordinance, an applicant  has the option of making an application  
either to the High Court 1[IP Tribunal] or to the Registrar___ 
(a)  if any suit or proceedings concerning the trade mark in question are p ending 
before the High Court 1[IP Tribunal], the application shall be made to the High 
Court or, as the case may be, the 1[IP Tribunal]: and 
(b)  in any other case, if the application is made to the R egistrar, he may at any 
stage of the proceedings refer the application to the High Court 1[IP Tribunal]. 
 117. Suits for infringement to be instituted before 1[IP Tribunal] .___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 1[except an IP Tribunal] having jurisdiction to try the suit. 
 118. Costs of Registrar in proceedings before the High Court or 1[an IP Tribunal] .___In 
all proceedings under this Ordinance before the High Court or 1[an IP Tribunal] , the costs of the 
Registrar shall be in the discretion of the High Court or, as the case may be, the 1[IP Tribunal], but 
the Registrar shall not be ordered to pay the costs of any of the parties. 
 119. Burden of proving use of trade mark. ___If in any civil proceedings under this 
Ordinance, if a question arises as to the use to which a registered trade mark has been put, it shall be 
for the proprietor to show what use has been made of it. 
 120. Certain persons to be public servants. ___Every person appointed under this Ordinance 
shall be deemed to be a public servant within the meaning of section 21 of the Pakistan Penal Code, 
1860 (Act XLV of 1860). 
 121. Documents open to public inspection .___(1) Save as otherwise provided in this  
Ordinance___ 
(a)  the Register and any document upon which any entry in the Register is based; 
(b)  every notice of opposition to the registration of a trade mark, application for 
rectification before the Registrar , counter-statement thereto, and any affidavit 
or documents filed by the parties in any proceedings before the Registrar; 
(c)  such other documents as the Registrar may, by notification in the Journal 
specify, shall su bject to such conditions as may be prescribed, be open to 
public inspection at the Trade Marks Registry. 
 (2)  Any person may, on an application to the Registrar and on payment of such fees as may 
be prescribed, obtain a certified copy of any entry in the Register or any document referred to in sub-
section (1). 
 
 
1Subs. by Act No. LVIII of 2023, ss. 41-43. 
 
Page 73 of 91 
 
 
 
 
 122. Death of a party to any proceedings under this Ordinance. ___If a person who is a 
party to any proceedings under this Ordinance, not being any proce edings before the High Court or 
1[an IP Tribunal] , dies pending the proceedings, the Registrar may, on request, and on proof to his 
satisfaction of the transmission of the interest of the deceased person, substitute in the proceedings 
his successor in interest in his place, or if the Registrar is of opinion that the interest of the deceased 
person is sufficiently represented by the surviving parties, permit the proceedings to continue without 
the substitution of his successor in interest. 
 123. Extension of time.___(1) If the Registrar is satisfied, on application made to him  in the 
prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending 
the time for doing any act not being a time expressly provided in this Ordinance, whether the time so 
specified has expired or not, he may subject to such conditions as he may think fit to impose, extend 
the time and inform the parties accordingly. 
 (2) Nothing in sub -section (1)  shall be deemed to require the Registrar to hear th e parties 
before disposing of an application for extension of time and no appeal shall lie from any order of the 
Registrar under this section. 
 124. Registrar and other officers not compellable to produce Register, etc. ___The 
Registrar or any officer of th e Trade Marks Registry shall not, in any legal proceedings to which he 
is not a party, be compellable to produce the Register or any other document in his custody the 
contents of which can be proved by the production of a certified copy issued under this O rdinance or 
to appear as a witness to prove the matters therein recorded unless by order of the High Court or 1[an 
IP Tribunal] made for special case. 
 125. Power to require goods to show indication of origin.___(1) The Federal Government 
may, by notificat ion in the official Gazette, require that goods of any description specified in the 
notification, which are made o r produced beyond the limits of Pakistan and imported into Pakistan, 
or which are made or produced within the limits of Pakistan, shall from s uch date as may be 
appointed by the notification not being less than three months from its issue, have applied to them an 
indication of the country or place in which they were made or produced, and of the name and address 
of the manufacturer or the person for whom the goods were manufactured. 
 (2) The notification under sub -section (1) may specify the manner in which such indication 
shall be applied, that is to say whether to goods themselves or in any other manner and the times or 
occasions on which the presence of the indication shall be necessary, that is to say, whether on 
importation only, or also at the time of sale, whether by wholesale or retail or both. 
 (3) The provisions of section 23 of the General Clauses Act, 1897 (X of 1897), shall apply to 
the issue of a notification under sub -section (1), as they apply to the making of a rule or bye -law the 
making of which is subject to the condition of previous publication. 
 
 
 
 
1Subs. by Act No. LVIII of 2023, ss. 44-45. 
 
Page 74 of 91 
 
 
 
 
 (4) A notification under sub -section (1), shall not apply to goods made or produced beyond 
the limits of Pakistan and imported into Pakistan, if in respect of those goods the 1[Director General, 
IPR (Enforcement), Director. IPR (Enforcement) or Collector of Customs or any competent authority 
under the Custom Act, 1969 (IV of 1969)]  is satisfied at the time of importation that they are 
intended for exportation whether after transhipment in or transit through Pakistan or otherwise. 
 126. Address for service. ___(1) Every applicant or opponent in  any proceedings under this 
Ordinance, who does not reside or carry on business within Pakistan, shall give an address for 
service in Pakistan and such address may be treated as the actual address of that person for all 
purposes connected with the proceedings in question. 
 (2) The address for service shall be deemed to be address of the applicant or the opponent and 
all documents in relation to the application or notice of opposition may be served by leaving them at 
or sending them by registered post to the  address of service of the applicant or opponent, as the case 
may be. 
1[(3) An application filed under Madrid Protocol for international registration of marks shall 
be subject to such conditions as may be prescribed.] 
 127. Trade mark agents. ___(1) Where b y or under this Ordinance any act, other than  the 
making of an affidavit, is required to be done by any person, the act may, subject to such conditions  
as may be prescribed, be done, in lieu of by that person himself, by duly authorised agent who se is 
registered with the Trade Marks Registry in the prescribed manner as a trade mark agent. 
 (2) The Federal Government may, by notification in the official Gazette, make rules for 
providing qualifications, registration and conduct of trade mark agents. 
 128. Fees.___(1) There shall be paid in respect of applications and registration and  other 
matters under this Ordinance such fees as may be prescribed. 
 (2) Provisions may be made by rules for___ 
(a) the payment of a single fee in respect of two or more matters; and 
(b) the circumstances if any in which a fee may be repaid or remitted. 
 
 
 
 
 
 
1Subs. and added by Act No. LVIII of 2023, s.46-47. 
 
Page 75 of 91 
 
 
 
 
 129. The Federal Government and a Provincial Government to be bound. ___The 
provisions of this  Ordinance shall be binding on  the Federal Government and 1[Provincial 
Governments]. 
 130. Power to make reciprocal arrangements with any other Government.___Without 
prejudice to the provisions of Articles 3 and 4 of the Agreement on Trade Related Aspects of 
Intellectual Property Right s. 1994, the Federal Government may, by notification  in the official 
Gazette, enter into reciprocal arrangements with other Governments for the purpose of this 
Ordinance. 
 131. Power of the High Court to make rules. ___The High Court may make rules consiste nt 
with the provisions of this Ordinance as to the conduct and procedure of all proceedings under this 
Ordinance before it. 
 132. Power of the Federal Government to make rules.___(1) The Federal Government may, 
subject to the condition of previous publication, by notification in the official Gazette, make rules for 
carrying out the purposes of this Ordinance. 
 (2) In particular and without prejudice to the generality of the foregoing power, such rules 
may provide for all or any of the following matters, namely:___  
(i)  the matters to be included in the Register under sub-section (1) of section 10; 
(ii)  conditions and restrictions subject to which the Register shall be open to the 
inspection of the public under sub-section (5) of section 10; 
(iii)  classification of goods and services in accordance with the international 
classification of goods and services under sub-section (1) of section 12; 
(iv)  publication of alphabetical index of classification of goods and services under 
sub-section (2) of section 12; 
(v)  the manner in which the Registrar may notify a word as an international non-
proprietary name under section 16; 
(vi)  the manner of making an  application for registration of a trade  mark under 
sub-section (1) of section 22; 
(vii)  the manner and perio d for making a Convention application under clause (b) 
of sub-section (2) of section 25; 
(viii)  the matters related to the manner of claiming a  right to priority on the basis of 
a Convention application under sub-section (7) of section 25; 
(ix)  conditions for grant of temporary protection in respect of goods or services 
during exhibition under sub-section (4) of section 26; 
 
 
1Subs. by Act No. LVIII of 2023, s. 48. 
 
Page 76 of 91 
 
 
 
 
(x)  the manner of giving notice to the Registrar under sub -section (2) of section 
28 for o pposing an application for registration advertised or re -advertised 
under sub-section (1) of section 28 and the fee payable for such application, 
making an application for extension of time under sub -section (2) of section 
28 and the fee payable for such application; 
(xi)  the manner of serving a copy of the notice on the applicant, an application for 
extension of time under sub -section (4) of section 28 and the fee payable for 
such application, sending a counter -statement of the grounds and fee payable 
for such application; 
(xii)  the manner of serving a copy of the counter -statement on the opponent, an 
application for extension of time under sub -section (5) of section 28 and the 
fee payable for such application, sending a rejoinder to the Registrar; 
(xiii)  the manner of sending a copy of the rejoinder to the applicant under sub -
section (6) of section 28; 
(xiv)  the manner of submitting any evidence under sub-section (7) of section 28 and 
time limit for submitting such evidence; 
(xv)  the manner of permitti ng correction of any error in, or any amendment of, a 
notice of opposition, a counter -statement, or a rejoinder under sub -section (9) 
of section 28; 
(xvi)  the manner of notifying the Registrar under sub -clause (i) of clause (b) of 
section 30; 
(xvii)  the time within which an application shall be registered  under sub-section (1) 
of section 33; 
(xviii)  the fee payable and the time within which such fee is payable under sub -
section (2) of section 33; 
(xix)  the manner of publication of the registration and t he form of certificate of 
registration under sub-section (4) of section 33; 
(xx)  the manner of giving notice under sub-section (5) of section 33; 
(xxi)  the manner of informing the proprietor of a registered trade mark of the date of 
expiry within which t he registration may be renewed under sub -section (2) of 
section 35; 
(xxii)  the further period in which additional renewal fee shall be paid under sub -
section (3) of section 35: 
(xxiii)  the manner and conditions for restoration of the registration which h as been 
removed from the Register under sub-section (6) of section 35; 
(xxiv)  the matter related to the publication of alteration and the making of objections 
by any person claiming to be affected by it under sub-section (3) of section 37; 
 
Page 77 of 91 
 
 
 
 
(xxv)  the matters related to manner and effect of a surrender, and for protecting the 
interests of other persons having a right in the registered trade mark under sub-
section (2) of section 38; 
(xxvi)  the time period within which the applicant, by notice in writing to the 
1[Director General, IPR (Enforcement), Director, IPR (Enforcement) or 
Collector of Customs or any competent authority under the Custom Act, 1969 
(IV of 1969)] , consents to the release of the goods under clause (a) of sub -
section (2) of section 59; 
(xxvii)  the particulars of the transaction which are to be entered in the Register under 
sub-sections (1) and (3) of section 70; 
(xxviii) the matters specified in sub-sections (4) and (5) of section 70; 
(xxix)  the manner of making application and the fee pay able for such application 
under sub-section (4) of section 72; 
(xxx)  the classes of goods under section 93; 
(xxxi)  the conditions and restrictions subject to which registration of letters or 
numerals, or any combination thereof in respect of textile good s may be 
allowed under sub-section (2) of section 94; 
(xxxii)  the manner of constituting one or more Advisory Committees under sub -
section (1) of section 95, and matters related to the place of meeting and 
conduct of business of such Committees under sub-section (3) of that section; 
(xxxiii) the manner of making an application under sub-section (4) of section 96;  
(xxxiv) the matters relating to the empowering the Registrar to do such things as he  
considers necessary to implement any amended or substituted  classification of 
goods or services for the purposes of the registration of trade marks under sub-
section (1) of section 97; 
(xxxv)  the time within which a proposal for amendment could be mad e under clause 
(a) of sub-section (4) of section 97; 
(xxxvi) the manner of opposition under sub-section (5) of section 97; 
(xxxvii) the manner of notification of the forms and any directions of the Registrar 
with respect to their use under sub-section (2) of section 108; 
 
 
 
1Subs. by Act No. LVIII of 2023, s. 49. 
 
Page 78 of 91 
 
 
 
 
(xxxviii) the restrictions imposed, manner of making application and fee payable 
under sub-section (1) of section 109; 
(xxxix) the cases and extent to which application for registration of a trade mark, 
documents or information constituting or relating to the application may be 
published by the Registrar or communicated by him to any person under sub -
section (3) of section 109; 
(xl)  the matters related to empowering the Registrar for the purposes of sub -
section (1) of section 110; 
(xli)  the matters related to  empowering the Registrar to require a party to 
proceedings before  him to give security for costs, in relation to those 
proceedings or to proceedings on appeal, and as to the consequences if 
security is not given under sub-section (3) of section 110; 
(xlii)  the period within which an appeal from any decision of the Registrar under 
this Ordinance or rules made thereunder may lie to the High Court or 1[* * *] 
having jurisdiction under sub-section (1) of section 114; 
(xliii)  the manner of giving notice under sub-section (2) of section 114; 
(xliv)  the conditions under which documents listed in sub -section (1) of section 121 
may be open to public inspection under the said sub-section; 
(xlv)  the fee payable for obtaining a certified copy under sub -section (2) of section 
121; 
(xlvi)  the manner of making an application and the fee payable therefor under sub-
section (1) of section 123; 
(xlvii)  the conditions under which any act other than the making of an affidavit may 
be done by duly authorized agent under sub-section (1) of section 127; 
(xlviii) the matters related to qualifications, registration and conduct of trade mark 
agents under sub-section (2) of section 127; 
(xlix)  the fees payable for making applications, registrations and other matters under 
sub-section (1) of section 128; 
(l)  the matters related to the payment of a single fee in respect of two or more 
matters and the circumstance, if any, in which a fee may be repaid or remitted 
under sub-section (2) of section 128; 
(li)  the making of further requirements with which the regulations may have  to 
comply under sub-para (2) of para 5 of the First Schedule; 
 
 
1Omitted by Act No. LVIII of 2023, s. 49. 
 
Page 79 of 91 
 
 
 
 
(lii)  the making of further requirements with which the regulations may have to 
comply under sub-para (2) of para 6 of the Second Schedule; 
(liii)  the procedure for identification and classification of computer related services 
associated with Internet under sub-para (3) of para 2 of the Third Schedule; 
(liv)  the making of procedure for putting entries under sub-para (2) of para 2, and 
sub-para(2) of para 9 of the Fourth Schedule; 
(lv)  the manner of making application and the fee payable for such application 
under sub-para (2) of para 11 of the Fourth Schedule; 
(lvi)  the entry of additional information in the Register; 
(lvii)  the regulation of awarding of costs by the Registrar under this Ordinance;  
(lviii) the matters related to establishment of branches of the Trade Marks Registry; 
(lix)  the manner in which, in proceedings under this Ordinance before t he Registrar 
or the 1[Organization], application shall be made, notices given and matters 
advertised; 
(lx)  the matters related to times or periods required by this Ordinance to be 
advertised;  
(lxi)  and matters generally related to business of the Trade Marks Registry or its  
branches and for regulating all things by this Ordinance placed under the 
discretion of the Registrar or the 1[Organization]; and 
(lxii)  any other matter which is required to be, or may be prescribed. 
 133.  Transitional.___The provisions of the Fourth Schedule shall have effect with respect 
to transitional matters, including the treatment of trade marks registered under the Trade Marks Act, 
1940 (V of 1940), and applications for registration and other proceedings pending under that A ct, on 
the commencement of this Ordinance. 
 134.  Repeal and savings.___(1) The Trade Marks Act, 1940 (V of 1940), is hereby repealed. 
 (2) The Trade Marks Registry and its branches existing at the commencement of this  
Ordinance shall be continued as if they had been established under this Ordinance. 
 (3) The Registrar, other officers and any other person appointed to the Trade Marks Registry 
established under the Trade Marks Act, 1940 (V of 1940), shall be deemed to have been appointed to 
the Trade Marks Registry established under this Ordinance. 
 
 
 
1Subs. by Act No. LVIII of 2023, s. 49. 
 
Page 80 of 91 
 
 
 
 
THE FIRST SCHEDULE 
[See section 82(2)] 
COLLECTIVE MARKS 
 1. General.___The provisions of this Ordinance shall apply to collective marks subject  to the 
provisions contained in this Schedule. 
 2. Signs of which a collective mark may consist. ___In relation to a collective mark  the 
reference in clause (xlvii) of section 2 to distinguish goods or s ervices of one undertaking form those 
of other undertakings shall be construed as  a reference to distinguishing goods or services of 
members of the association which is the proprietor of the mark from those of other undertakings. 
 3. Indication of geographical origin. ___(1) Notwithstanding the provisions of clause  (c) of 
sub-section (1 ) of section 14, a collective mark may be registered which consist of marks or 
indications which may serve, in trade, to distinguish the geographical origin of the goods or services. 
 (2) The proprietor of such a mark shall not be entitled to prohibit the use of the marks or 
indications in accordance with the honest practices in industrial or commercial matters, in particular, 
by a person who is entitled to use a geographical name. 
 4. Collective mark not to be misleading as to character or significance. ___(1) A collective 
mark shall not be registered if the public is liable to be mislead as regards the character or 
significance of the mark, in particular, if it is likely to be taken to be something other than a 
collective mark. 
 (2) The Registrar may accordingly require that a mark in respect of which application is made 
for registration include some indication that it is a collective mark. 
 (3) Notwithstanding the provisions of sub -section (7) of section 27 and application may be 
amended so as to comply with any such requirement. 
 5. Regulations governing use of collective mark.___(1) Any application for registration of a 
collective mark may be filed with the Registrar along with regulations governing the use of the mark. 
 (2) The regulations referred to in sub-para (1) shall specify the persons authorized to use the 
mark, the conditions of membership of the association and, where they exist,  the conditions of the 
use of the mark, including any sanctions against misuse. 
 (3) Any further requirements with which the regulations referred to in sub -para (1) shall have 
to comply may be imposed as may be prescribed. 
 6. Approval of regulations by the Registrar. ___(1) A collective mark shall not be  registered 
unless the regulations governing the use of the mark___ 
(a)  comply with the requirements of para (2) of para 5 and any further 
requirements as may be prescribed; and 
(b)  are not contrary to public policy or to accepted principles of morality. 
 
Page 81 of 91 
 
 
 
 
 (2) Before the end of the prescribed period  after the date of the pu blication for registration of 
a collective mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee 
failing which the application shall be deemed to have been withdrawn. 
 7. Procedure of acceptance or refusal of applicat ion.___(1) The Registrar shall  consider 
whether the requirements specified in sub-para (1) of para 6 are duly met. 
 (2) If it appears to the Registrar that such requirements are not met, he shall inform the 
applicant and give him an opportunity, within suc h period as the Registrar may specify, to make 
representation or to file amended regulations. 
 (3) If the applicant fails to satisfy the  Registrar that such requirements are met, or to file 
regulations amended so as to meet them, or fails to respond before  the end of the specified period, 
the Registrar shall refuse the application. 
 (4) If it appears to the Registrar that such requirements, and the other requirements for 
registration, are met he shall accept the application and shall proceed in accordance with section 28. 
 8. Regulations to be published.___(1) The regulations governing the use of a collective mark 
shall be published and notice of opposition may be given, and observation may be made , relating to 
the matters specified in sub-para (1) of para 6. 
 (2) The provisions of sub -para (1) shall be in addition to any other grounds on which the 
application may be opposed or observations made. 
 9. Regulations to be open to inspection. ___The regulations governing the use of a registered 
collective mark shall be open to public inspection in the same way as the Register. 
 10. Amendment of regulations.___(1) An amendment of the regulations governing the use of 
a registered collective mark shall not be effective unless and until the amended regulations are filed 
with the Registrar and accepted by him. 
 (2) Before accepting any amended regulations the Registrar may, in any case where it appears 
to him expedient to do so, cause them to be published. 
 (3) If the Registrar does so, a notice of opposition may be given , and observations may be 
made, relating to the matters specified in sub-para (1) of para 6. 
 11. Infringement of rights of authorized user. ___The following provisions shall  apply in 
relation to an authorized user of a registered collective mark as in rela tion to a licensee of a trade 
mark, namely:___ 
(a)  sub-section (7) of section 40; 
(b)  sub-section (2) of section 51; and 
(c)  section 53. 
 12. Infringement of a registered collective mark. ___(1) The provisions of this para  shall 
have effect as regards the rights of an authorized user in relation to infringement of registered 
collective mark. 
 
Page 82 of 91 
 
 
 
 
 (2) An authorized user shall be entitled, subject to any agreement to the contrary between him 
and the proprietor, to call on the proprietor to take infringement pro ceedings in respect of any matter 
which affect his interests. 
 (3)  If the proprietor___ 
(a)  refuses to do so; or  
(b)  fails to do so within two months after being called upon, 
the authorized user may bring the proceedings in his own name as if he were the proprietor. 
 (4) Where infringement proceedings are brought under this para, the authorized user may not, 
without the leave of the High Court, proceed with the action unless the proprietor is either joined as a 
plaintiff or added as a defendant. 
 (5) Th e provisions of para (4) shall not affect the granting of interlocutory relief on an 
application by an authorised user alone. 
 (6) A proprietor who is added as a defendant as provided in sub -para (4) shall not be made 
liable for any costs in the action unless he takes part in the proceedings. 
 (7) In infringement proceedings brought by the proprietor of a registered collective mark, any 
loss suffered or likely to be suffered by authorised user shall be taken into account, and the High 
Court or 1[an IP Tribu nal] may give such directions as it thinks fit as to the extent to which the 
plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users. 
 13. Additional grounds for  revocation of registration. ___Apart from the grounds of  
revocation provided for in section 73, the registration of a collective mark may be revoked on any of 
the following grounds, namely:___ 
(a)  that the manner in which the mark has been used by the proprietor has caused 
it to become liable to mislead the public in the m anner referred to in sub -para 
(1) of para 4; 
(b)  that the proprietor has failed to observe, or to secure the observance of, the 
regulations governing the use of the mark: or  
(c)  that an amendment of the regulations governing the use of mark has been 
made so that such regulations— 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s. 50. 
 
Page 83 of 91 
 
 
 
 
(i)  no longer comply with the requirement of sub -para (2) of para 5, and 
any further conditions as may prescribed; or 
(ii)  are contrary to public policy or to accepted principles of morality. 
 14. Additional grounds for invalidity of registration. ___Apart from the grounds of  
invalidity provided for in section 80, the registration of a collective mark may be declared invalid on 
the ground that the mark was registered in breach of the p rovisions of sub-para (1) of para 4, or sub-
para (1) of para 6. 
THE SECOND SCHEDULE 
[See section 83(2)] 
CERTIFICATION MARKS 
 1. General.___The provisions of this Ordinance shall apply to certification marks subject to 
the provisions contained in this Schedule.  
 2. Signs of which certification mark may consist. ___In relation to a certification mark the 
reference in clause (xlvii) of section 2 to distinguish goods or services of one undertaking from those 
of other undertaking shall be construed as a referenc e to distinguishing goods or services which are 
certified from those which are not. 
 3. Indication of geographical origin. ___(1) Notwithstanding the provisions of clause (c) of 
sub-section (1) of section 14, a certification mark may be registered which con sist of signs or 
indications which may serve, in trade, to designate the geographical origin of the goods or services.  
 (2) The proprietor of such a mark shall not be entitled to prohibit the use of the signs or 
indications in accordance with honest pract ices in industrial or commercial matters, in particular, by 
a person who is entitled to use a geographical name. 
 4. Nature of proprietor’s business. —A certification mark shall not be registered if the 
proprietor carries on a business involving the supply of goods or services of the kind certified. 
 5. Certification mark not to be misleading as to character or significance. ___(1) A 
certification mark shall not be registered if the public is liable to be misled as regards the character or 
significance of the  mark, in particular, if it is likely to be taken to be something other than a 
certification mark. 
 (2) The Registrar may, accordingly, require that a mark in respect of which application has 
been made for registration include some indication that it is a certification mark.  
 (3) Notwithstanding the provisions of sub -section (7) of section 27, an application may be 
amended so as to comply with any such requirement. 
 6. Regulations governing use of certification mark. ___(1) An application for registration o f 
a certification mark may be filed with the Registrar along with regulations governing the use of the 
mark.  
 
Page 84 of 91 
 
 
 
 
 (2) The regulations referred to in sub -para (1) shall indicate who shall be authorized to use 
the certification mark, the characteristics by the mark, how the certifying body shall test those 
characteristics and supervise the use of the mark, the fee, if any, to be paid in connection with the 
operation of the mark and the procedures for resolving disputes.  
 (3) Any further requirements with which the regulations referred to in sub-para (1) shall have 
to comply may be imposed as may be prescribed. 
 7. Approval of regulations by the Registrar. ___(1) A certification mark shall not be 
registered unless___  
(a)  the regulations governing the use of the mark—  
(i)  comply with the requirements of sub-para (2) of para 6, and any further 
requirements, as may be prescribed; and  
(ii)  are not contrary to public policy or to accepted principles of morality; 
and  
(b)  the applicant is competent to certify the goods or services for which the mark 
is to be registered.  
 (2). Before the end of the prescribed period after the date of the application for registration of 
a certification mark, the applicant shall file the regulations with the Registrar and pay the pre scribed 
fee, failing which the application shall be deemed to be withdrawn. 
 8. Procedure for acceptance or refusal of application. ___(1) The Registrar shall consider 
whether the requirements specified in sub-para (1) of para 7 are met.  
 (2) If it appears  to the Registrar that such requirements are not met, he shall inform the 
applicant and give him an opportunity, within such period as the Registrar may specify, to make 
representation or to file amended regulations.  
 (3) If the applicant fails to satisfy  the Registrar that such requirements are met, or to file 
regulation amended so as to meet them, or fails to respond before the end of the specified period, the 
Registrar shall refuse the application.  
 (4) If it appears to the Registrar that such requirem ents, and the other requirements for 
registration, are met, he shall accept the application and shall proceed in accordance with section 28. 
 9. Regulations to be published. ___The regulations governing the use of a registered 
certification mark shall be published and notice of opposition may be given, and observations may be 
made, relating to the matters specified in sub -para (1) of para 7, in addition to any other grounds on 
which the application may be opposed or observations made.  
 10. Regulations to be  open to inspection. ___The regulations governing the use of a 
registered certification mark shall be open to be public inspection in the same way as the Register. 
 11. Amendment of regulations.___(1) An amendment of the regulations governing the use of 
a r egistered certification mark shall not be effective unless and until the amended regulations are 
filed with the Registrar and accepted by him.  
 
Page 85 of 91 
 
 
 
 
 (2) Before accepting any amended regulations the Registrar may, in any case where it appears 
to him expedient to do so, cause them to be published.  
 (3) If he does so, a notice of opposition may be given, and observations may be made, 
relating to the matters specified in sub-para (1) of para 7. 
 12. Consent to assignment of registered certification mark. ___The ass ignment or other 
transmission of a registered certification mark shall not be effective without the consent of the 
Registrar.  
 13. Infringement of rights of authorised user. ___The following provisions shall apply in 
relation to an authorised user of a reg istered certification mark as in relation to a licensee of a trade 
mark, namely:—  
(a)  sub-section (7) of section 40;  
(b)  sub-section (2) of section 51; and  
(c)  section 53. 
 14. The High Court or 1[an IP Tribunal] to take into account loss suffered by authorised 
users.___In infringement proceedings brought by the proprietor of the registered certification mark 
any loss suffered or likely to be  suffered by authorised user shall be taken into account and the High 
Court or 1[the IP Tribunal]  may give such  directions as it thinks fit as to the extent to which the 
plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users. 
 15. Additional grounds for revocation of registration. ___Apart from the grounds of 
revocation provided for in sec tion 73, the registration of a certification mark may be revoked on any 
of the following grounds, namely:___ 
(a)  that the proprietor has begun to carry on such a business as is specified in para 
4; 
(b)  that the manner in which the mark has been used by t he proprietor has caused 
it to become liable to mislead the public in the manner referred to in sub -para 
(1) of para 5;  
(c)  that the proprietor has failed to observe, or to secure the observance of, the 
regulations governing the use of the mark;  
(d)  that an amendment of the regulations has been made so that the regulations__ 
 
 
 
 
1Subs. by Act No. LVIII of 2023, s. 51. 
 
Page 86 of 91 
 
 
 
 
(i)  no longer comply with the requirements of sub -para (2) of para 6, and 
any further conditions as may be prescribed; or  
(ii)  are contrary to public policy or to accepted principles of morality; or  
(e)  that the proprietor is no longer competent to certify the goods or services for 
which the mark is registered. 
 16. Additional grounds for invalidity of registration. ___Apart from the gr ounds of 
invalidity provided for in section 80, the registration of a certification mark may be declared invalid 
on the ground that the mark was registered in breach of the provisions of para 4, sub-para (1) of para 
5 or sub-para (1) of para 7. 
THIRD SCHEDULE 
[See section 84(2)] 
DOMAIN NAMES 
 1. General.___The provisions of this Ordinance shall apply to domain names subject to  the 
provisions contained in this Schedule. 
 2. Requirements for registration.___(1) A domain name if used as a source identifier may be 
registered as a trade mark in respect of relevant goods or services. 
 (2) The applicant for registration of domain name shall show that he offers goods or services 
via Internet using the domain name. Such evidence shall be in the form of specimen showi ng use of 
the domain name as a source identifier. 
 Explanation.___For the purpose of this para, use of a domain name shall be taken as  source 
identifier if it is used on Internet to distinguish goods or services of one undertaking from the other 
provided that use of a domain name as a mere directional reference, similar to use of a telephone 
number or business address shall not be taken as use of the domain name as a source identifier. 
 (3) Provisions may be made by rules for further identification and clas sification of computer 
related services associated with Internet. 
 3. Indication of geographical origin. ___(1) Notwithstanding the provisions of clause  (c) of 
sub-section (1) of section 14, a domain name may be registered which consist of marks or indications 
which may serve, in trade, to distinguishing the geographical origin of the goods or services. 
 (2) The proprietor of such a mark shall not be entitled to prohibit the use of the marks or 
indications in accordance with honest practices in industrial or  commercial matters, in particular, by 
a person who is entitle to use a geographical name. 
 4. Domain name not to lie misleading as to character or significance. ___(1) A  domain 
name shall not be registered if the public is liable to be mislead as regards t he character or 
significance of the mark, in particular, if it is likely to be taken to be something other than a domain 
name. 
 (2) The Registrar may, accordingly, require that a mark in respect of which application has 
been made for registration include some indication that it is a domain name. 
 
Page 87 of 91 
 
 
 
 
 (3) Notwithstanding the provisions of sub -section (7) of section 27, an application may be 
amended so as to comply with any such requirement. 
 5. Procedure for acceptance, opposition and registration. ___The provisi ons of this 
Ordinance for acceptance, registration and opposition as they apply to trade marks shall also apply to 
the domain names. 
 6. Term of registration and renewal. ___Notwithstanding the provisions of sections  32 and 
33, a domain name shall be 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. 
 7. Provisions of section 73 not to apply to domain names. ___The provisions of section 73 
shall not apply to domain names. 
 8. Rules.___Provisions may be made by rules for further identification and classification of 
computer related services associated with Internet. 
THE FOURTH SCHEDULE 
(See section 134) 
TRANSITIONAL PROVISIONS 
 1. Introductory.___(1) In this Schedule, ___ 
(a)  “existing registered mark” means a trade mark or certification mark registered 
under the Trade. Marks Act, 1940 (V of 1940), immediately before the 
commencement of this Ordinance; 
(b)  “1940 Act” means the Trade Marks Act, 1940 (V of 1940); and 
(c)  “old law ” means the 1940 Act and any law for the time being in force, 
applying to existing registered marks immediately before the commencement 
of this Ordinance. 
 (2)  For the purposes of this Schedule, ___ 
(a)  an app lication shall be treated as pending on the commencement of this 
Ordinance if it was made but not finally determined before such 
commencement; and 
(b)  the date on which it was made shall be taken to be the date of filing under the  
1940 Act. 
 2. Existing registered trade mark.___(1) The existing registered  marks shall be transferred, 
on the commencement of this Ordinance, to the Register, and shall have effect, subject to the 
provisions of this Schedule, as if registered under this Ordinance. 
 (2) The existing registered marks registered as a series under sub-section (3) of section 11 of 
the 1940 Act shall be similarly registered in the new Register. 
 
Page 88 of 91 
 
 
 
 
 (3) Provisions may be made by rules for putting such entries in the same form as is required 
for entries under this Ordinance. 
 (4) In any other case notes indicating that the existing registered marks are associated with 
other marks shall cease to have effect on the commencement of this Ordinance. 
 3. Disclaimer, limitations and conditions.___A disclaimer, limitation or condition entered on 
the register kept under the 1940 Act in relation to an existing registered mark immediately before the 
commencement of this Ordinance shall be transferred to the Register and have effect as if entered on 
the Register in pursuance of section 15. 
 4. Effect of Infringement.___(1) The provisions of sections 39 to 42 shall apply in  relation to 
an existing registered mark as from the commencement of this Ordinance and the provisions of 
section 46 shall apply in relation to infringe ment of an existing registered mark committed after the 
commencement of this Ordinance, subject to sub-para (3). 
 (2) The old law shall continue to apply in relation to infringement committed before the 
commencement of this Ordinance. 
 (3) It shall not be an infringement of___ 
(a)  an existing registered mark; or 
(b)  a registered trade mark of which the distinctive elements are the same or 
substantially, the same as those of an existing registered mark and which is 
registered for the same goods or services, 
 
to continue after the commencement of this Ordinance any use which did not amount to infringement 
of the existing registered mark under the old law. 
 5. Infringing goods, material and articles. ___The provisions of section 4 8 shall apply  to 
infringing goods, material or articles trade before or after the commencement of this Ordinance. 
 6. Rights and remedies of licensee or authorised user .___ (1) The provisions of  section 75 
shall apply to license granted before the commencement of this Ordinance, but only in relation to any 
infringement committed after such commencement. 
 (2) The provisions of para 14 of the Second Schedule shall apply only in relation to 
infringement committed after the commencement of this Ordinance. 
 7. Co-ownership of registered trad e mark. ___The provisions of section 24 shall  apply as 
from the commencement of this Ordinance to an existing registered trade mark of which two or more 
persons were, immediately before such commencement, registered as joint proprietor; 
 Provided that so lo ng as the relations between the joint proprietors remain such as are 
described in sub-section (2) of section 17 of the 1940 Act, there shall be taken to be an agreement to 
exclude the operation of sub-sections (2) and (3) of section 24. 
 8. Assignment of r egistered trade mark. ___ (1) The provisions of section 67 shall  apply to 
transactions and events occurring after the commencement of this Ordinance in relation to an 
 
Page 89 of 91 
 
 
 
 
existing registered trade mark, and the old law shall continue to apply in relation to tra nsactions and 
events occurring before such commencement. 
 (2) The existing entries under section 35 of the 1940 Act shall be transferred on the 
commencement of this Ordinance to the Register, and shall have effect as if made under section 70. 
 (3) An application for registration under section 35 of the 1940 Act, which is pending before  
the Registrar on the commencement of this Ordinance shall be treated as an application for 
registration under section 70 and shall proceed accordingly: 
 Provided that the Reg istrar may require the applicant to amend his application so as to 
conform with the requirements of this Ordinance. 
 (4) An application for registration under section 35 of the 1940 Act, which has been 
determined by thy Registrar but not finally determined  before the commencement of this Ordinance 
shall be dealt with under the old law, and the provisions of sub -para (2) shall apply in relation to any 
resulting entry in the Register. 
 (5) Whether before the commencement of this Ordinance, a person has become entitled by 
assignment or transmission to an existing registered trade mark but has not registered his title, any 
application for registration after such commencement shall be made under section 70. 
 (6) In case to which the provisions of sub -para (3) or (5) applies, the provisions of sub -
section (2) of section 35 of the 1940 Act shall continue to apply, and the provisions of sub -section 
(3) of section 68 shall not apply, as regards the consequences of failing to register. 
 9. Licensing of registered trade mark.___(1) The provisions of section 73 and sub-section 
(2) of section 74 shall apply only in relation to licences granted after the commencement of this 
Ordinance, and the old law shall continue to apply in relation to licences granted to authorised use rs 
before the commencement of this Ordinance. 
 (2) The existing entries under section 39 of the 1940 Act shall be transferred on the 
commencement of this Ordinance to the Register, and shall have effect as if made under section 70. 
 (3) Provisions may be made by rules for putting entries referred to in sub-para (2) in the same 
form as is requires for entries made under this Ordinance. 
 (4) An application for registration as a registered user which is pending before the Registrar 
on the commencement of this Ordinance shall be treated as an application for registration of a licence 
under sub-section (1) of section 70 and shall proceed accordingly: 
 Provided that the Registrar may require the applicant to amend his application so as to 
conform with the requirements of this Ordinance. 
 (5) An application for registration as a registered user which has been determined by the 
Registrar but not finally determined before the commencement of this Ordinance shall be dealt with 
under the old law, and the provisions of s ub-para (2) shall apply in relation to any resulting entry in 
the Register. 
 
Page 90 of 91 
 
 
 
 
 (6) Any proceedings pending on the commencement of this Ordinance under section 42 of the 
1940 Act shall be dealt with under the old law and any necessary alteration shall be made  to the 
Register. 
 10. Pending applications for registration. ___(1) An application for registration of a  mark 
under the 1940 Act which is advertised under sub -section (1) of section 15, or the proviso to that 
sub-section of the 1940 Act , or an order has be en made for its advertisement before the 
commencement of this Ordinance shall be dealt with under the old law, subject as provided in the 
following paras, and if registered, the mark shall be treated for the purpose of this Schedule as an 
existing registered trade mark. 
 (2) The provisions of section 12 of the 1940 Act shall be disregarded in dealing, after the 
commencement of this Ordinance, with an application for registration. 
 11. Conversion of pending application. ___(1) In the case of pending applicati on for  
registration which has not been advertised under sub -section (1) of section 15, or the proviso  to that 
sub-section of the 1940 Act , neither an order has been made for such advertisement before the 
commencement of this Ordinance, the applicant may give notice to the Registrar claiming to have the 
registrability of the mark determined in accordance with the provisions of this Ordinance. 
 (2) The notice under sub -para (1) s hall be in the prescribed form, be accompanied by the 
appropriate fee and be given no later than twelve months after the commencement of this Ordinance. 
 (3) The notice under sub-para (1), duly given shall be irrevocable and have the effect  that the 
application shall be treated as if made immediately after the commencement of this Ordinance. 
 12. Trade marks registered a ccording to old classification. ___The Registrar may  exercise 
his powers to secure that any existing registered trade marks which do not conform to the system of 
classification prescribed under section 12 are brought in conformity with that system. 
 13. Claim to priority from overseas application. ___The provisions of section 25 shall apply 
to an application for registration under this Ordinance made after the commencement of this 
Ordinance notwithstanding that the Convention application was made before such commencement. 
 14. Duration and renewal of registration. ___(1) The provisions of subsection (1) of  section 
32 shall apply in relation to the registration of a mark in pursuance of an application made after the 
commencement of this Ordinance, and the old law shall apply in any other case. 
 (2) The provisions of sub -section (2) of section 32 and section 33  shall apply where the 
renewal falls due on or after the commencement of this Ordinance, and the old law shall conti nue to 
apply in any other case. 
 (3) In either case referred to in sub-para (2) or (3), it shall be immaterial when the fee is paid. 
 15. Pending application for alteration of registered trade mark. ___An application under 
section 48 of the 1940 Act, which is p ending on the commencement of this Ordinance shall be dealt 
with under the old law and any necessary alteration shall be made in the Register. 
 
Page 91 of 91 
 
 
 
 
 16. Revocation for non-use.___ (1) An application under section 37 of the 1940 Act, which is 
pending on the comm encement of this Ordinance shall be dealt with under the old law and any 
necessary alteration shall be made to the Register. 
 (2) An application made under clause (a) or (b) of sub -section (1) of section 73 may be made 
in relation to an existing registered mark at any time after the commencement of this Ordinance: 
 Provided that no such application for the revocation of the registration of an existing 
registered mark under section 38 of the 1940 Act may be made until more than five years after the 
commencement of this Ordinance. 
 17. Application for rectification. ___(1) An application under section 46 of 47 of 1940  Act, 
which is pending on the commencement of this Act shall be dealt with under the old law and any 
necessary alteration shall be made to the Register. 
 (2) For the purpose of proceedings under section 80 as it applies in relation to an existing 
registered mark, the provisions of this Ordinance shall be deemed to have been in force at a ll 
material times: 
 Provided that no objection to the validity of the registration of an existing registered mark 
may be taken on the grounds specified if sub -section (3) of section 17 in conflict with earlier mark 
registered for different goods. 
 18. Regulations as to use of certification mark. ___(1) Regulations gove rning the use of an 
existing registered certification mark deposited at the Trade Marks Registry under the 1940 Act shall 
be treated after the commencement of this Ordinance as if filed under para 6 of the Second Schedule. 
 (2) Any request for amendment of the regulations which was pending on the commencement 
of this Ordinance shall be dealt with the old law. 
 
 
 
 
 
________________ 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
Date: 11-09-2024