This document summarizes key concepts related to trademarks, including: 1. The different types of trademarks such as fanciful, arbitrary, suggestive, descriptive, and generic marks. 2. Requirements for trademarks such as being capable of graphical representation and distinguishing goods/services of one business from another. 3. Grounds for refusal of registration including marks that are devoid of distinctive character, exclusively descriptive, or commonly used in the trade. However, marks can still be registered if they have acquired distinctiveness through use. 3. Additional restrictions on registering shape marks which result from the nature of the goods, are necessary for a technical result, or give substantial value to the goods.

1. Notes Made By: Sir Arun Berkat
Compiled By: Abdul Samee Sohoo
Slide To PDF For purpose of Save Printing Expenses.
TYPES OF TRADEMARKS
▪ Fanciful trademarks;
▪ Arbitrary trademarks;
▪ Suggestive trademarks;
▪ Descriptive trademarks; &
▪ Generic marks
FANCIFUL/COINED TRADEMARKS:
Fanciful or coined marks are neologisms which have been invented for the sole purpose of functioning as a
trademark and have no other meaning than acting as a mark.
ARBITRARY TRADEMARKS:
An arbitrary mark is commonly known word that is applied to an unfamiliar product. Although, the terms are
found in a dictionary, they have no relevance when applied to the goods in question and are, thus, arbitrary.
SUGGESTIVE TRADEMARKS:

2. Suggestive marks are marks that suggest a quality or characteristic of the goods and services. It is a term that,
while it does not expressly state the nature of the goods or service, can still be associated with said goods
through a basic relationship. Suggestive marks require some imagination, thought, or perception to reach a
conclusion as to the nature of the goods or services.
DESCRIPTIVE TRADEMARKS:
A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and
only serves to describe the product.
GENERIC TRADEMARKS MARKS:
A generic term is the common name for the products or services in connection with which it is used. Generic
"marks" are devices which actually name a product and are incapable of functioning as a trademark.
TM OWNER GENERIC NAME/MARK NAME OF TM
FIAT CHRYSLER. COMPACT SUV
PFIZER. LIP BALM
JOHNSON & JOHNSON. ADHESIVE BANDAGES
WHAM-O. FLYING DISC
NORDICA. INLINE SKATES

3. GENERICIZED TRADEMARKS:
A genericized trademark is a trademark or brand name that has become the generic name for, or synonymous
with, a general class of product or service. Trademark erosion, or genericide happens when a trademark
becomes so common that it starts being used as a common name. Once it becomes common, it cannot be
granted trademark protection.
COMMON NAME GENERICIZED TRADEMARK
MOVING STAIRCASES ESCALATOR
PETROLEUM DISTILLATE KEROSENE
RETURN TOPS YO-YO
SLIDE FASTENERS ZIPPER
VACUUM FLASKS THERMOS
SECTION 14 (1):
The following shall not be registered, namely:-
(a) mark which do not satisfy the requirement 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 goods or of
rendering of services, or other characteristics of goods or services; and
(d) trade mark which consist exclusively of marks or indications which have become customary in the language
or in the bona fide and established practices of the trade;
Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if, before the date
of application for registration. it has in fact, acquired a distinctive character as a result of the use made of it or
is a well know trade mark.
SECTION 14 (1) (A):
Section 2 clause (xlvii): "trade mark" means any mark capable of being represented graphically which is
capable of distinguishing goods or services of one undertaking from those of other undertakings

4. ▪ There must be a mark;
▪ The mark must be capable of graphical representation; &
▪ The mark must be capable of distinguishing the goods or services of one undertaking from other undertakings
MARK:
Section 2 clause (xxiv): "mark" includes, in particular, a device, brand, heading, label, ticket, name including
person name, signature, word, letter, numeral, figurative elements, colour, sound or and combination thereof
QUESTION: Do the above mentioned items constitute a complete list of marks?
GRAPHICAL REPRESENTATION:
The mark must be capable of being represented clearly and precisely. Although, an administrative
requirement, the objective is to enable interested parties to judge the monopoly given. There are three
fundamental functions of the graphical representation requirement:
PROPERTY FUNCTION: To determine exactly what sign or mark is protected;
ADMINISTRATIVE FUNCTION: To assist the trademark authorities in dealing with the sign; &
PUBLICITY/INFORMATION FUNCTION: To assist third parties in finding out whether a particular mark
has been registered and whether a fresh application for a mark conflicts with earlier registered trademarks.
The function of the representation is to enable the sign to be represented visually, particularly by means of
images, lines or characters, so that it can be precisely identified. In order to fulfil its function, the
representation of any sign put forward for registration must be: CLEAR, PRECISE, SELF-CONTAINED,
EASILY ACCESSIBLE, INTELLIGIBLE, DURABLE, UNEQUIVOCAL AND OBJECTIVE.
COLOUR MARKS:
Providing vague descriptions such as “red” or “pale yellow” will be subject to refusal as it lacks precision.
Providing samples also fails as samples do not satisfy the durability requirement i.e. they tend to fade over
time. Using an internationally recognised identification code (such as Pantone, RAL or Focoltone) will
constitute a graphic representation, being precise and stable.
SOUND MARKS:
Consider the case where an applicant states, “The mark consists of the sound of a dog barking”. This is vague
in the extreme and begs questions such as “What breed of dog?” “Is it a friendly, warning or aggressive
bark?” “How loud is it?” “How long is the duration?” As it invites subjective interpretation, the end result that

5. follows is that it is not clear and unambiguous. It has been suggested that in future with regard to sound
marks, it may perhaps be possible to submit the mark in electronic form. However, it must be noted that
unlike digital image files, sound marks cannot be reproduced on paper. Besides, sound marks may not sound
the same when played on different audio devices and systems e.g. the sound being played on a Samsung
mobile and a Apple mobile. Trademark experts advocate that for sound marks, submission of a conventional
musical notation is perhaps a better option which satisfies the requirement of graphical representation.
OLFACTORY/SMELL MARKS:
Regarding olfactory signs, the graphic representation requirement is not satisfied by a chemical formula, by a
description in writing, by depositing an odour sample or by a combination of those elements. A chemical
formula is not sufficient because few people would recognise from the formula the odour in question: hence,
the chemical formula would not be sufficiently intelligible. A further point was that the formula does not
represent the odour, but the substance itself. A description in written words is not sufficient because it is not
sufficiently clear, precise and objective. The deposit of an odour sample does not constitute a (graphic)
representation. Furthermore, an odour sample is not sufficiently stable or durable. This begs the question that
how does one fulfil this requirement? It has been suggested that the applicant may define the odour by
reference to accepted standards of classification for odorants such as the Zwaardemaker smell system but this
suggestion still has to be tested.
CAPABLE OF DISTINGUISHING:
To be capable of distinguishing the goods/services of one undertaking from those of others, the mark must say
or be capable of saying on its face that the goods/services come from an undertaking X rather than from Y or
Z or any other. The function of a registered trademark is serve as a guarantee of trade origin: a badge of
origin. This is the essential function of a trademark. Examples of marks unable to distinguish include SOAP
for soaps, Window Cleaning for window cleaning services, etc. It is stated that “capable of distinguishing”
means “able to distinguish” or “serves to distinguish”.
TASTE/GUSTATORY AND TOUCH/HAPTIC MARKS:
A sign which is perceptible via the sense of taste or touch can constitute a trade mark but for obvious reasons,
taste and touch marks fall to be treated in the same way as smell marks.
TASTE/GUSTATORY AND TOUCH/HAPTIC MARKS:
A sign which is perceptible via the sense of taste or touch can constitute a trade mark but for obvious reasons,
taste and touch marks fall to be treated in the same way as smell marks.
TRADEMARK DISTINCTIVENESS:

6. Trademark distinctiveness is an important concept in the law governing trademarks. A trademark may be
eligible for registration, or registrable, if it performs the essential trademark function. Trademarks can either
be:
▪ Distinctive by nature / inherently distinctive; or
▪ Distinctive through nurture / acquired distinctiveness / distinctive through continuous and extensive use.
ASSESSING THE DISTINCTIVE CHARACTER:
▪ Inherent characteristics of the mark including whether it contains a descriptive element or not;
▪ Market share held by the mark;
▪ How intensive, geographically widespread and long standing use of the mark has been;
▪ Amount invested in the mark;
▪ The proportion of the relevant section of public which, because of the mark, identifies the goods or services as
originating from a particular undertaking;
▪ Statements from chambers of commerce and industry or other professional associations.
Reference should also be made to the goods and services for which registration is sought. Furthermore, as
regards the consumers, they are those who are reasonably observant, well informed and cautious.
SECTION 14(1)(B):
Marks which are devoid of any distinctive character will be refused registration. This is a wider provision than
Section 14 (1) (c) and (d) as a mark/sign will still be refused registration under this clause even if it has passed
the conditions set out in clauses (c) and (d). However, a mark which fails the test, for instance, under clause
(c) is necessarily devoid of possessing any distinctive character under this clause.
For example, where a mark has been used prior to it being used in a trademark sense, that use may prevent the
mark from performing its essential function if the first use still comes to mind or is deeply established in the
mind of the relevant public. In a case, the issue was whether a mark which had been used for sport by the
governing body in Brazil by the Brazilian football team until 1971 and had appeared on the shirts of famous
football figures possessed any distinctive character. The court answered in the negative holding that the prior
use deprived it of its power to signify trade origin.
SECTION 14 (1) (C):

7. The section prevents the registration of marks that are exclusively descriptive. If there is a sufficiently direct
and specific relationship between the sign and the goods / services for which it is being sought, registration
will be refused.
▪ Kind: Doublemint for mint flavoured chewing gum;
▪ Quality: 5star for hotels;
▪ Quantity: Duo or dual for speakers sold in pairs;
▪ Intended purpose: Easycover for floor coverings;
▪ Value: Overlaps with quality but could also be a reference to the value of the product or service or the
consumer’s ability to purchase, e.g Budget;
▪ Geographical Origin: COVERED IN NEXT SLIDE;
▪ Time of production of goods or rendering of services: Day by Day for milk and 24 hours for news services;
▪ Other characteristics: All other descriptive marks such as Options for Insurance.
If the relevant public associates the mark purely with the relevant services provided rather than linking the
mark with something unusual or particular to the goods or services, the mark will not be registrable.
GEOGRAPHICAL ORIGIN:
A trademark is not registerable if it is clearly descriptive or deceptively mis-descriptive of the place of origin
of the goods or services with which the trademark is used [the latter part falling under Section 14 (3) (a) as
well].
The analysis should cover:
the type of goods or services involved;
the average consumers to whom the services are offered; and
the character of the geographic location.
SECTION 14 (1) (D):
The section prevents the registration of marks that are exclusively descriptive. Marks or signs that are
commonly or customarily used in the relevant trade or profession will be refused registration under this head.
These may consist of words, logos, shapes devices…. any sign that is used commonly in the trade e.g
Comfort for beds, Clean for detergents.

8. Relationship between Section 14 (1) (b – d) and the Proviso:
The grounds between the two can be justified on the basis of public interest. It is not in the public interest to
have marks and signs registered as trademarks which do not serve the primary function of being a source
identifier. Such marks and signs do not possess a distinctive character.
There is a public interest in not registering trademarks which would prejudice the rights of other undertakings
to use ordinary language to describe the nature and characteristics of their goods and services or prevent
others in using language generally used in that particular area. Would other traders in good faith legitimately
want to use the word in the course of business? If the answer is yes, the mark should not be registered.
However, the issue is different if the mark has become distinctive through use. Then, in such cases, the
proviso states that the mark ought to be granted registration.
SECTION 14 R/W SECTION 80 (1) AND (2):
Section 14 provides for grounds which have to be satisfied when registering for a mark and Section 80 applies
to trademarks that have been registered.
Section 80 (1) states that trademarks that have been registered in violation of Section 14 shall be declared
invalid.
However, section 80 (2) states that trademarks registered in violation of Section 14 (1) (b), (c) and (d) shall
not be declared invalid if they have acquired a distinctive character through use following registration.
SECTION 14 (2):
A mark shall not be registered if it consists exclusively of
▪ The shape which results from the nature of the goods themselves;
▪ The shape of goods which is necessary to obtain a technical result; or
▪ The shape which gives substantial value to the goods.
THE SHAPE WHICH RESULTS FROM THE NATURE OF THE GOODS
THEMSELVES:
Marks that consist of shapes which result exclusively from the nature of the goods themselves (the nature of
the goods refers to their essential qualities or innate characteristics) are denied registration under this clause.
Businesses are unlikely to choose a mark consisting of a shape which is the result of the nature of the goods as

9. that would be incapable of indicating origin. For example, rectangle for a picture frame, circle/sphere for
footballs, cricket, tennis, etc.
This particular provision may be summarised as “You cannot register the natural shape of the goods”. The
natural shape of goods is descriptive of them. These are shapes which traders may legitimately want to use.
THE SHAPE OF GOODS WHICH IS NECESSARY TO OBTAIN A TECHNICAL
RESULT:
Where the essential functional features of the shape are attributable only to the technical result, registration
will not be granted. Shapes whose essential characteristics perform a technical function will be refused
registration because such registration would otherwise impede the freedom of choice in respect of the
technical solution. Even if the technical result is achieved by other methods, registration of such marks will
still be refused. The rationale is to safeguard the rights of competitors in being able to utilise the same
technology. Moreover, functional features are dealt with under Patent law and not Trademark law.
For example, shapes of keyboard, razors, screw driver, etc.
THE SHAPE WHICH GIVES SUBSTANTIAL VALUE TO THE GOODS:
Shape marks which are purchased for their aesthetic/decorative characteristics or eye appeal are excluded.
Consideration must be given as to whether the shape enhance the attractiveness of goods and strongly
influence consumer preferences. This requires a determination of whether the value is substantial and this, in
turn, requires a comparison between the shape mark for which registration is being sought and shapes applied
to equivalent articles. If the shape for which registration is being sought is inherently better, registration will
be refused. If the appearance of the good is a strong factor, the application for registration will fail.
Appearance of goods is dealt with under Designs law.
SHAPE MARKS:
Shape marks are treated in the same manner as other forms of trademarks with one important exception.
There are three specific grounds for refusal of registration that apply to shape marks which consist exclusively
of one of three particular types of shape. The rationale behind these provisions are that certain kinds of shapes
can never be sufficiently distinctive to serve as source identifiers and are incapable of distinguishing goods or
services. Another reason for refusing protection to certain kinds of shapes is that potentially unlimited
protection could otherwise be granted to shapes that ought to be protected by other Intellectual Property laws.
A shape mark will always be judged firstly in the light of Section 14 (2) as that is preliminary to the other
grounds of refusal. If it is caught under the section, the matter ends there. But, once that criteria is fulfiled,
then the relevance of acquired distinctiveness arises.

10. DISTINCTIVE CHARACTER OF SHAPE MARKS:
Distinctiveness in terms of shape marks is a particular issue as consumers normally do not perceive shape
marks as trademarks. The average consumers are not in habit of making assumptions about the origin of
goods on the basis of the shape. In a case where registration was sought for 3-D shape for cheese, it was said:
“… an average consumer, surveying the myriad of cheeses on display in a good supermarket or on a
restaurant cheese platter would be astonished to be told that one of the shapes was a trade mark. Consumers
do not expect to eat trade marks or part of them… without established use and recognition it cannot be said
that they would regard shape alone as giving them a guarantee of origin.”
Reference should be had to:
▪ Goods or services for which registration is sought;
▪ Reference to the perception of the relevant people
SECTION 14 (3) & (4):
3. No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of,
or contains, any scandalous design, or any matter the use of which would-
▪ by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a
High Courts or District Court;
▪ be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, per se, or in terms of goods
or services it is intended to be so registered; or
▪ 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.

11. RELATIVE GROUNDS OF REFUSAL:
Section No.
17
Relationship With
Earlier Mark
Relationship With Goods Or
Services For Which Earlier
Trademark Registered Or
Earlier Right Used
Proof Of
Likelihood
Of
Confusion
Notes
Section 17 (1) Identical Identical No Unregistrable per se
Section 17 (2)
(a) & (b)
Identical
Similar
Similar
Identical or Similar
Yes
Yes
----
Section 17 (3)
(a) & (b)
Identical or Similar
to earlier mark
having a reputation
Not Similar No Must take unfair advantage of, or be
detrimental to the distinctive
character of the earlier trademark
Section 17 (4)
(a)
Nothing specific
but use can be
prohibited
Probably similar or same field
of activity at least
Deception
probably
If prevented by law, in particular,
passing off
Section 17 (4)
(b)
Nothing specific
but use can be
prohibited
Depends on relevant rights and
infringement
No
Other earlier rights such as
copyright, design right or registered
design.
SECTION 17 (1):
Where there is a complete identity of the sign and the earlier trademark and the goods or services, a likelihood of
confusion is presumed. In cases falling under this provision, two situations may arise:
▪ What is the impact of wholly trivial differences between the marks?
▪ What is the position if one mark contains the whole of the other mark, but includes additional words or a
device as part of the mark?
As regards the first case, the trademarks do not have to be completely identical in all respects and a sign is
identical to an earlier trademark where. Both signs have to be assessed it reproduces, without any
modifications or additions, all the elements constituting the trademark or where, viewed as a whole, it
contains differences so insignificant that they may go unnoticed by an average consumer globally from the
viewpoint of an average consumer who rarely has time to make a direct comparison between the two and must
rely on the imperfect picture of them ingrained in his mind. It would be the overall impression including the

12. aural, visual and conceptual similarities that would matter in cases where one of the mark contains
insignificant differences.
Where additional words or devices are used, the marks are no longer identical as differences would be apparent.
SECTION 17 (2) (A) & (B):
Following are the principles which assist in determining cases under this provision to assess the likelihood of
confusion:
▪ The likelihood of confusion must be assessed globally, taking account of all the relevant factors;
▪ The matter is to be judged from the perspective of the average consumer of the goods or services in issue, who
is reasonably well – informed, reasonably observant and circumspect;
▪ In the assessment of marks under this head, the court must determine the degree of aural, visual and
conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those
different elements taking into account the nature of the goods in question and the circumstances in which the
are marketed.
▪ The visual, aural and conceptual similarities of the marks must be assessed by a reference to the overall
impressions created by the marks bearing in mind their distinctive and dominant components. The perception
of the marks in the mind of the average consumer plays a decisive role in the overall application of the
likelihood of confusion.
▪ The average consumer normally perceives the mark as a whole and does not proceed to analyse its various
details. The assessment of the similarity between two marks does not amount into taking into consideration
only one component of a complex trademark and comparing it with another mark, but each is considered as a
whole.
▪ There is a greater likelihood of confusion where the earlier trademark has a highly distinctive character, either
per se or because of the use that has been made of it. Such marks enjoy broader protection than marks with a
less distinctive character, so there may be a likelihood of confusion even when there is a lower level of
similarity between the marks.
▪ The average consumer rarely has the chance to make direct comparisons between marks and must rely upon
the imperfect picture of them he has kept in his mind; further, the level of attention is likely to vary according
to the category of goods in question.
▪ Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods and
between the marks, i.e. interdependence between the marks and the goods or services. A lesser degree of

13. similarity between the marks may be offset by a greater degree of similarity between the goods or services,
and vice – versa.
▪ Mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the
purposes of the assessment.
▪ But the risk that the public might believe that the goods come from the same or economically linked
undertakings does constitute a likelihood of confusion within the meaning of the section. There can be no
confusion if the public does not believe that the goods come from the same undertaking.
▪ The look and sound of the marks;
▪ The goods to which the marks are applied;
▪ The physical nature of the goods;
▪ The respective uses of the respective goods;
▪ The trade channels through which the goods arrive in the market;
▪ In the case of self – serve consumer items, where in practice they are respectively found or likely to be found
in supermarkets and in particular whether they are, or likely to be, found on the same or different shelves;
▪ Whether the goods will be in competition of each other or not;
▪ The nature and kind of customer (for example, trade/professional customers would be less likely to be
confused as to origin than ordinary customers);
▪ The surrounding circumstances;
▪ A consideration of what would likely to happen if both marks were to be used.
LIKELIHOOD OF ASSOCIATION:
▪ The concept of a likelihood of association was said to stem from Benelux uniform trademark law and
encompasses cases where the mark complained of merely brings the senior mark to mind, without necessarily
causing confusion as to origin. Mere association is not enough to establish a likelihood of confusion. The
likelihood of confusion must always be proved to the satisfaction of the national court as the concept of the
likelihood of association is not an alternate concept to that of the likelihood of confusion, but serves to define
its scope.

14.  The nature of the products: they are their essential qualities or characteristics. Actually, it is the answer to
the question: what are these products? How are they made? Which materials are made of?
 Their intended purpose: it answers the question: what need do these goods/services satisfy?
 Their method of use: the question is: how are these goods used?
 Complementarity: there is a complementary if there is a close connection between the goods (or services), in
the sense that one is indispensable or very important for the use of the other
 In competition: goods are in competition with each other when they serve the same or similar purpose and
are offered to the same actual and potential customers
 Distribution channels: they must be intended as the places of distribution. For instance: are the goods sold in
the same shops?
 Relevant public: the actual and potential customers of the goods in question
 Usual origin of the products: which kind of company does produce the products in question?
TRDEMARK DILUTION:
There must be an association or link between the senior and junior trademark.
The consumers should believe that there is a connection between the goods or services of both parties.
‘reputation’ implies a certain degree of knowledge of the earlier trademark among the public. Depending on
the goods or services involved, this may mean either the public at large or a more specialised section of the
public such as traders in a specific sector. The factors to be taken into account in judging reputation include,
in particular:
market share;
the intensity, geographic extent and duration of use of the earlier trade mark; and
the size of investment made by undertaking the promotion of the earlier trade mark.
BLURRING AND TARNISHING

15. TRADEMARK DILUTION
Trademark dilution is a concept of trademark law that grants the proprietor of famous trademarks
the right to prevent others from using his or her trademark in a manner that dilutes its distinctive
character or reputation.1
It is important to note that there is no need to prove the likelihood of
confusion in dilution cases. However, there must be an association or link between the senior and
junior trademark. The consumers should believe that there is a connection between the goods or
services of both parties. In other words, this “link”refers to the fact that the earlier mark would
be brought to mind by the average consumer when he or she encounters the later mark used for
the goods or services of the later mark.
Dilution of a famous registered trademark may be caused by the later trademark by two ways:
1. Where the use of the later trademark takes2
or would take3
unfair advantage of the earlier
trademark. Under this category, if the later trademark takes unfair advantage of the earlier
trademark by attempting to capture the established repute of an earlier trademark or
“seeking to ride on the back of the reputation of the earlier trademark”, registration will
be refused. The later mark is similar to a parasite in these cases. This use is termed as
blurring.
2. Where the use of the later trademark causes or would cause detriment to the earlier
trademark. Under this class, if the later trademark attempts to harm the reputation of the
well-known trademark, the application is rejected. Consider, for example, those cases
where the junior trademark, being identical or similar, is to be applied to products of
inferior quality or to goods or services possessing a negative or distasteful image, this
would damage the standing of the earlier trademark.This is called tarnishing or
denigrating the earlier trademark.
1
The phrase “preventing the use of the famous trademark” refers to cases where the trademark holder of a famous
trademark opposes the registration of a junior trademark under Section 17 as well as to those cases where the
trademark holder files a suit for trademark infringement under Section 40 of the Trademarks Ordinance, 2001.
2
Section 40 (4).
3
Section 17 (3).

16. From Trademark Ordiance Some Section:
14. Absolute grounds for refusal of registration:
(1) The following shall not be registered, namely:-
(a) mark which do not satisfy the requirement of clause (xlvii) of section 2;
(b) 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 goods or of rendering of services, or
other characteristics of goods or services; and
(d) trade mark which consist exclusively of marks or indications which have
become customary in the language or in the bona fide and established practices of
the trade;
Provided that a trade mark shall not be refused registration by virtue of clause
(b), (c) or (d) if, before the date of application for registration. it has in fact,
acquired a distinctive character as a result of the use made of it or is a well know
trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(3) No trade mark nor any part thereof in respect of any goods or services shall be
registered which consists of, or contains, any scandalous design, or any matter the
use of which would-
(a) by reasons of its being likely to deceive or to cause confusion or
otherwise, be disentitled to protection in a High Courts or District Court;
(b) be likely to hurt the religious susceptibilities of any class of citizens of
Pakistan, per se, or in terms of goods or services it is intended to be so registered;
or
(c) be contrary to any law, for the time being in force or morality.

17. (4) A trade mark shall not be registered if or to the extent that the application is
made in bad faith.
17. Relative grounds for refusal of registration:
(1) A trade mark shall not be registered if it is identical with an earlier trade mark
and the goods or services, for which the trade mark is applied for, are identical with
the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because-
(a) it is identical with an earlier trade mark and is to be registered for
goods- or services similar to those for which the earlier trade mark is registered; or
(b) it is similar to an earlier trade mark and is to be registered for goods
or services identical with or similar to those for which the earlier trade mark is
registered.
and there exists a likelihood of confusion on the part of the public which includes
the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered.
shall not be registered if, or to the extent that, the earlier trade mark has a
reputation in Pakistan and the use of the later mark without due cause would take
unfair advantage of, or be detrimental to , the distinctive character or the repute of
the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its use in Pakistan is
liable to be prevented-
(a) by virtue of any law, in particular, the law of passing off, protecting an
unregistered trade mark or other mark used in the course of trade; or
(b) by virtue of an earlier right other than those referred in sub-section
(1), (2) and (3) or clause (a) of this sub-section, in particular by virtue of the law of
copyright design right or registered designs.
(5) Nothing in this section shall prevent the registration of a trade mark where the
proprietor of the earlier trade mark or other earlier consents to the registration.
(6) Where separate applications are made by different persons to be registered as
proprietor respectively of trade marks which are identical or nearly resemble each
other. in respect of the same goods or description of goods, the Registrar, if thanks

18. fit, may refuse to register any of them until their rights have been determined by the
High Court or a District Court.
18. Meaning of "earlier trade mark".- In this ordinance. "earlier trade mark"
means:
(a) a registered trade mark or a Convention trade mark as per the Paris
Convention which has a date of application for registration carlier than that of the
trade mark in question, talking account, where appropriate, 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 mar which, on the date of application for registration of the
trade mark in question, or where appropriate, of the priority claimed in respect of the
application, was entitled to protection under the Paris Convention as a well known
trade mark.
(2) References in this Ordinance to an earlier trade mark include a trade mark in
respect of which an application for registration has been made and which, if
registered, would be an earlier trade mark by virtue of clause (a) or (b) of subsection (1), subject to its
being so registered.
(3) A trade mark shall, within clause (a) or (b) of sub-section (1), where registration
expires, continue to be taken into account in determining of a later mark for a period
of one year after the unless the Registrar is satisfied that there was no bona fide use
of the mark during two years immediately preceding the expiry.
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 of the right 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 shall being before the date on which
the trade mark is in fact registered.

19. (6) The rights conferred by registration of trade mark under this ordinance shall
extend to trade marks registered under the Trade Marks Act, 1940 (V of 1940).
40. Infringement of registered 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 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. there exists a likelihood of confusion 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 trade mark
is registered;
(c) services of the same description 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 person uses in the course of
trade 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.

20. (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 domain
name without 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 intended 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 to reasons to suspect
the genuineness of the mark; and
(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.
80. Grounds for invalidity of registration:
(1) The registration of a trade mark may 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 subsection (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 registered acquired a distinctive character in
relation to the goods or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the ground that
there is-
(a) an earlier trade mark in relation to which the conditions set out in sub-
section (1), (2) or (3) of section 17 obtain; or
(b) an earlier right in relation to which the condition set out in sub-section (4)
of section 17 is satisfied.
unless the proprietor of that earlier trade mark or other earlier right has
consented to the registration.

21. (4) An application for declaration of invalidity may be made by an interested party
either to the Registrar or to the High Court or a District Court, except that-
(a) if proceedings concerning the trade mark in question are pending in the
High Court or a District Court, the application shall be made to the High Court or a
District Court; 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 High Court or a
District Court.
(5) In the case of bad faith in the registration of a trade mark, the Registrar may
apply to the High Court or a District Court for a declaration of the invalidity of the
registration.
(6) Where the grounds of invalidity exist in respect of only some of the goods or
services for which the trade mark is registered, the trade mark 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 that use, there shall 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 later trade mark is
invalid; or
(b) to oppose the use of the later mark in relation to the goods or services in
relation to which it has been so used.
unless the registration of the later 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 no longer be invoked against his later trade mark.