Intellectual Property (IP) is the currency of future economy. IP matters are on top of the Global Economy Agenda. The world is fast becoming a global village where IP matters are being increasingly monitored and shared. A lot of International Legislation has occurred such as Paris Convention of 1883, Berne Copyright Convention, Universal Copy Right Convention, TRIPS, etc and such other agreements and protocols (international treaties) as applicable from time to time;
Pakistan's ObligationsPakistan is under International obligations and signatory of following regimes:
1. Paris Convention of 1883
1. Trade Marks Ordinance, 2001
Improvements in Laws to Meet Global Obligations
TRADE MARK ORDINANCE, 2001
Counterfeit Trade Mark Goods
Meaning of applying a trade description:-
1. A person shall be deemed to apply a trade description
to goods or services who:-
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.
Penalty for applying false trade description, etc.
1. Any person who;-
Penalty for falsely representing a trade mark as registered.
1. No person shall make any representation:-
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 any 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 then three months but which may extend to two years, or with fine which shall not be less than fifty thousand rupees, or with both.
THE DESIGNS ORDINANCE, 2000
Action For Infringement
a)Save as otherwise provided in this Ordinance, an infringement of a registered trade mark shall be actionable by the proprietor of the trade mark.
Order as to Disposal of Infringing Goods, Material or Articles
a)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 a District Court.-
Infringing Goods, Material or Articles May be Treated as Prohibited
The proprietor of the registered trade mark may give notice in writing to the Collector of Customs that-
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 Collector of Customs, is identical with, or deceptively similar to the registered trade mark; and
COPY RIGHT ORDINANCE, 2001
Any person who knowingly infringes or abets the infringement of.
PATENTS ORDINANCE, 2000
Proceeding For Infringement of Patents
Section 60. Suit for infringement of a patent. (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this ordinance in respect of an invention, makes sells or uses the invention without his license, or counterfeits it, or imitates it:
Section 61. Relief in suit for infringement. [ (1) In any suit for infringement the Court shall have the power,
Provided that this provision shall apply subject to prior proof by the plaintiff that the allegedly infringing product is identical to the product directly produced by patented process:
Provided further that in the addiction of proof to the contrary, the legitimate interest of defendants in protecting their manufacturing and business secret shall be taken into account.]
(2) In any suit for infringement:-
(a) the Court shall have authority to order prompt and effective provisional measures:--
(i) to prevent an infringement, and in particular, to prevent the entry into the channels of commerce of goods, including imported goods after customs clearance; and
(ii) to preserve relevant evidence in regard to the alleged infringement;
(b) the Court shall have the authority to order provisional measures, inaudita altera parte where appropriate , in particular, where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrate able risk of evidence being destroyed;
(c) the Court shall have the authority to require the applicant to provide any reasonable available evidence to satisfy it with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse;
(d) where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the least, and a review, including a right to be heard , shall take place upon request of the defendant with a view to deciding within a reasonable period after the notice of the measures shall be modified , revoked or confirmed;
(e) the Court may require the applicant to supply other information necessary for identification of the goods concerned;
(f) without prejudiced to the provisions of clause (d), provisional measures taken on the basis of clauses (a) and (b) shall, upon the request of defendant, be revoked or otherwise cease to have affect if proceedings leading to a decision on the merit of the case are not initiated within a reasonable period not to exceed twenty working days or thirty-one calendar days; and
(g) where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement, the Court shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for an injury caused by these measures.
Section 71. Penalty for contravention of secrecy provisions relating to certain inventions. If any person fails to comply with any direction given under section 25 or makes or causes to be made an application for the grant of a patent in contravention of section 26. he shall be punishable with imprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand rupees, or with both.
Section 72. Penalty for false representation. If any person falsely represents that any article sold by him is patented in Pakistan or is the subject of an application for a patent in Pakistan, he shall be punishable with fine which may extend to five thousand rupees.
Explanation 1. For the purposes of this section, a person shall be deemed to represent:-
(b) that an article is the subject of an application for a patent in Pakistan, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for” , “patent pending”, or some other words implying that an application for a patent for the article has been made in Pakistan.
Explanation 2. The use of words “patent”, “patented”, “patented applied for”, “patent pending” or other words expressing or implying that an article is patented or that patent has been applied for shall be deemed to refer to a patent in force in Pakistan, or to a pending application for a patent in Pakistan, as the case may be, unless there is accompanying indication that patent has been obtained or applied for in any country outside Pakistan.
THE PARIS CONVENTION
Section 85.Meaning of “Paris Convention” and Convention Country”. In this Ordinance:- Paris convention means the Paris convention for the Protection of Industrial Property of the 20th March 1883, as revised or amended from time to time: and a” Convention country” means a country other than Pakistan which is a Party to the Paris Convention.
Section 86. Protection of well known trade mark.
(1) Reference in this Ordinance to a trade mark which is entitled to protection as a 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 mark of a person who:-
(b) is domiciled in, or has 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 reference 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;
(3) The owner of 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 similar to the well-known trade mark:-
(a) in relation to identical or similar goods or services , where the use is likely to 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.
Section 102. Penalty for falsely representing a trade marks as registered.—
(2) If any person contravenes any of the provisions of sub-section (1), he shall not be less than one month but which may extend to six months, or with fine which shall not be less than twenty thousand rupees, or with both.
(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, expect:-
(a) where that word or other expression is used in direct association with other words delineated in character 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 fact, 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 country other than Pakistan and in relation solely to good or services to be exported to that country.
(2)An application for rectification may be made to the Registrar, expect 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 case the application is made to the Registrar, he may at any stage of the proceedings refer the application to the High Court or a District Court.
(3) Except where the Registrar or the High Court or a District Court directs otherwise, the effect of rectification of the Register 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 license, enter any change in his name or address as recorded in the Register.
BERNE COPYRIGHT CONVENTION
(1) The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mods or form of its expression, such as books , pamphlets and other writing, lectures, addresses, sermons and other works of the same nature; dramatic or dramatic-musical works; choreographic works and entertainments in dumb show; musical composition with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography ; works of drawing; painting, architecture, sculpture, engraving and lithography, photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.
(2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of woks shall not be protected unless they have been fixed in some material forms.
(3) Translation, adaptations, arrangements of music and other alteration of a literary or artistic works shall be protected as original works without prejudice to the copyright in the original work.
(4) It shall be matter for legislation in the countries of the Union to determine the protection to be granted to official texts of a legislative, administrative and legal nature, and to official translation of such texts.
(5) Collections of literary or artistic work such as encyclopedia and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections.
(6) The work mentioned in this Article shall enjoy protection in all countries of the Union. This protection shall operate shall for the benefit of the author and his successors in title.
(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this convention the extent of protection, as well as the means of redress afforded to the author to project his right, shall be governed exclusively by the laws of the country where protection is claimed.
(3) Protection in the country of origin is governed by domestic law, However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors.
If any person found guilty of above offence, will be punished with rigorous imprisonment for a term which may extend to one year, and with fine ranging from one hundred rupees to two thousand rupees;
Section 4: PROHIBITION OF MIIXING AND SELLING MIXED FOOD
“a” in contravention of the prescribed rule or
“2” No person shall sell, offer, keep or store any food so mixed, coloured, stained or powdered.
Section 5: Prohibition of sale, preparation, manufacture, import or export of unwholesome food intended for human consumption.
1. No person shall directly or indirectly, himself or by any other person:
a. prepare, manufacture, keep or store for sale, sell or, offer to sell any food which is unsound, unwholesome injurious to health or unfit for human consumption; or
1. Whoever contravenes any of the provisions of section, 3,4,5,6,7,8,9,10, to 13 shall be punished.
a. for a first offence with rigorous imprisonment for a term which may extend to one year, and with fine ranging from one hundred rupees to two thousand rupees;
2. Whoever contravenes any of the provisions of section 18 or section 21 or of any Rule shall be punished with imprisonment for a term which may extend to one year and with fine.
3. Any person who attempts to contravene, or abets the contravention of any of the provisions mentioned in sub section (1) is provided for such contravention.
THE DRUG ACT, 1976
which has been manufactured, packed or held under unsanitary conditions whereby if [has] been contaminated with dirt, filth of any other foreign matter or whereby it may have been rendered injurious to health; or
which bears or contains as an ingredient a substance other than the prescribed substance; or
with which any substance has been mixed or packed so as to reduce its quality or strength or for which any substance has been substituted wholly or in part;
Which purports to be the product of a manufacturer, place or country of whom or of which it is not truly a product; or
Which is imported or exported or sold or offered or exposed for sale under a particular name while actually it is another drug; or
The label of which bears the name of an individual or company purporting to be its manufacturer or producer which individual or company is fictitious or does not exist
Prohibition- Drug Act, 1976
SEC -23 Import, manufacture and sale of drugs. ------ (1) No person shall himself or by any other person on his behalf:-
a. export, import or manufacture for sale or sell:
i. any spurious drug;
c. sell any drug except under, and in accordance with the condition of , a license issued under this Act;
f. Supply incorrect, incomplete or misleading information, when required to furnish any information under this Act or the rules;
g. Peddle, hawk or offer for sale any drug in a park or public street or on a highway, foot path or public transport or conveyance;
h. Import, manufacture for sale, or sell any substance, or mixture of substances, which is not a drug but is presented in a form or a manner which is intended or likely to cause the public to believe it to be a drug;
(ii) In the case of imported drug, by the manufacturer or importer of that drug or, if the drug is imported through an indenter by the such indenter;
2. Nothing in sub-section (1) shall apply to the manufacturer or subject to prescribed conditions, of small quantities of any drug for the purpose of clinical trial, examination, test, analysis or personal use.
a. exports, imports, manufactures for sale or sell any spurious drug or any drug which is not registered;
2. Whoever, himself or by any other person on his behalf:-
3. Subject to the provision of sub-section (1), sub-section (2) and sub-section (3), whoever himself or by any other person on his behalf contravenes any of the provision of this Act or any rule shall be punishable with imprisonment for a term which may extend to five years, or with fine which may extend to fifty thousand rupees, or with both.
Pakistan Penal Code, 1860
Under Section 472 Making or possessing counterfeit seal etc with intent to comment forgery punishable under section 467 Whoever makes or counterfeits any seal, plate or other instruments for making and impression, Intending that the same shall be used for the purpose of committing any forgery, which would be punishable under section 467 of this code, or with such intent, has in the possession any such seal, plate or other instruments, knowing the same to be counterfeit, shall be punishable with imprisonment for life, or with imprisonment of either description for a term which may extend to seven year, and shall also be liable to fine
Under section 482 Punishment for using false trade-mark or property mark :-
Whoever uses any false trade or any false property mark shall, unless he proved that he acted with out intent to defraud, be punished with imprisonment of either description for a term which may to two years, or with fine, or with both.
Whoever makes or has in his possession any die, plate or other instruments for purpose of counterfeiting a trade mark or property mark or has in his possession a trade mark or property mark for the purpose of denoting that any goods are the manufacture of merchandise they are not, or that belong to a person to whom they do not belong, shall be punished with imprisonment of either description for a term which may extend to three years, or with fine, or with both.
Under section 486 Selling goods marked with counterfeit trade mark or property mark:-
PRESS, NEWSPAPERS,NEWS AGENCIES AND BOOKS REGISTRATION ORDINANCE, 2002
Keeper of Printing Press to Make Declaration
No person shall keep in possession any press printing of books or paper, unless he has made and subscribed before the District Co-ordination Officer within whose local jurisdiction such press may be, by a declaration in Form ‘A” or such other form as may be prescribed, and the District Co-ordination Officer shall, immediately upon the filing of such from, issue a receipt for the same.
Every declaration made and subscribed under sub-section (1) shall be authenticated under the signature and official seal of the District Co-ordination Officer before whom the said declaration is made.
The District Co-ordination Officer shall be, by an order in writing, refuse to authenticate declaration made and subscribed under sub-section (1) if he is satisfied that,
The title of the printing press proposed to be kept or operated is the same as the title of Any printing press already being operated at any place in the Province; or
The printer was convicted of an offence involving moral turpitude within five years before the date of this making and subscribing the declaration.
Whoever printers or publishes any book or paper or disseminates news in contravention of the provision of section 3 shall be publishable with fine not exceeding twenty thousand rupees or with simple imprisonment for not exceeding six months or with both.
Penalty for Keeping Printing Press without Making a Declaration Required by Section
Whoever keeps in his possession any printing press without making a declaration as is required under section 4, shall be punishable with fine not exceeding twenty thousand rupees or with imprisonment for a term not exceeding six month or with both.
CUSTOM ACT, 1969
Sec.15. Prohibitions. No goods specified in the following clauses shall be brought into or taken out of Pakistan, namely:-
(a) counterfeit coins, forged or counterfeit currency notes, and any other counterfeit product;
(b) any obscene book pamphlet, paper, drawing, painting, representation, figure, photograph, film, or, article, video or audio recording , CDs or recording on any other media;
(c) goods having applied thereto a counterfeit Trade Mark within the meaning of the Pakistan Penal Code, 1860 (Act XLV of 1860), or a false trade description within the meaning of the Copy Right Ordinance, 1962 (XXXIV), the registered Layout-Design of Integrated Circuits Ordiance,2000 (Xlv), the Patents Ordinance, 2000 (LXI OF 2000) , and the Trade Marks Ordinance, 2001 (xix OF 2001), and section 32 of this Act;
(d) goods made or produced outside Pakistan and having applied thereto any name or Trade Mark, being or purporting to be the name or Trade Mark of any manufacturer, dealer or trader in Pakistan unless,
(i) the name or Trade Mark is, as to every application thereof, accompanied by a definite indication of the goods having been made or produced in a place outside Pakistan; and
(ii) the country in which that place is situated is in that indication shown in letter as large and conspicuous as any letter in the name or Trade Mark, and in the same language and character as the name or Trade Mark;
(e) goods involving infringement of Copyrights, layout –design of integrated circuits , industrial designs, patents within the meaning of the Copyright Ordinance , 1962 ( XXXIV of 1962), the Registered Designs Ordinance, 2002 ( XLV OF 2000), and the Patents Ordinance, 2000 (LXI of 2000), respectively ; and
(f) goods made or produced outside Pakistan and intended for sale, and having applied thereto, a design in which copy right exists under the Copy Right Ordinance, 1962 ( XXXIV of 1962), the Registered Lay-out-Designs of Integrated Circuits Ordinance, 2000 (XLIX of 2000), the Registered Design Ordinance , 2000 (XLV of 2000), the Patent Ordinance, 2000 (LXI of 2000), and the Trade Mark Ordinance, 2001 ( XIX of 2001), in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design, patent, copyright except when the application of such design has been made with the licence or written consent of the registered proprietor, right holder of the design, patent or copyright, as the case may be.]
Section 16. Power to Prohibit or restrict importation and exportation of goods:-
The [Federal Government] may, from time to time, by notification in the official Gazette, prohibit or restrict the bringing into or taking out of any goods of specified description by air, sea or land.
THE MARCHANDISE MARKS
Means may description, statement of other indication direct or indirect,----
(a) as to the number, quantity, measure, gauge, or weight of any goods, or
And the use or any numeral, word or mark which according to the custom of the trade is commonly take to be an indication of any of the above matter shall be deemed to be a trade description with in meaning of this Act;
False Trade Description:
Means a trade description which is untrue in a material respect as regard the goods to which it is applied , and includes every alteration of a trade description , whether by way of addition , effacement or otherwise, where that alteration makes the description untrue in a material respect, and the fact that a trade description in 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 Act;
Section 5. Application of trade description: (1) A person shall be deemed to apply a trade description to goods who—
(a) applies it to the goods themselves; or
(b) applies to any covering , label, reel or other thing in or which the goods are sold or are exposed or had in possession for sale or any purpose of trade or manufacture; or
(c) places, enclose or annexes any goods which are sold, or are exposed or had in possession for sale or any purpose of trade or manufacture, in, with or to any covering, label, reel or other thing to which a trade description has been applied; or
(d) use a trade description in any manner reasonably calculated to lead to the belief that the goods in connection with which it is used are designated or described by that trade description.
(2) A trade description shall be deemed to be applied whether it is woven, impressed or otherwise worked into or annexed or affixed to the goods or any covering, label, reel or other thing.
(3) The expression” covering” includes any stopper, cask, bottle, vessel, box, cover, capsule, case, frame or wrapper, and the expression “label” includes any band or ticket.
[5-A. Power to require goods to show indication of origin:
(1)The Federal, Government may, by notification in the official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of Pakistan and imported into Pakistan, shall, from such 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 company or place in which they were made or produced, or of the name and address of the manufactured.
(2) The notification may specify the manner in which such indication shall be applied, that is so asay , whether to the goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessarily , that is to say, whether on importation only, or also at the time of sale, whether by wholesale or retail or both.
(3) No notification under this section shall be issued, unless application is made for its issue by persons or association on which the presence of the indication shall be necessarily, that is to say, whether on importation only, or also at the time of sale, whether by wholesale or retail or both.
(3) No notification under this section shall be issued, unless application is made for its issue by person or associations substantially representing the interest of dealers in or manufacturers, producers, or users of, the goods concerned, or unless the Federal Government is otherwise convinced that it is necessary in the public interest to issue the notification, with or without such inquiry as the Federal Government may consider necessary.
(4) The provisions of Sections 23 of the General Clauses Act, 1897 (X of 1897) shall apply to the issue of a notification under this section as they apply to the making of rules or bye-laws the making of which is subject to the condition of previous publication.
(5) A notification under this section shall not apply to goods made or produced beyond the limits of Pakistan and imported into Pakistan and imported into Pakistan, if in respect of those goods the Collector of Customs is satisfied at the time of importation that they are indented for exportation whether after transshipment in or transit through Pakistan or otherwise.]
(6) All goods imported into Pakistan to which any notification under this section applies shall be deemed to be goods of which the bringing into or taking out of Pakistan has been prohibited or restricted under Sec. 16 of the Customs Act, (1969 IIV of 1969) and all the provisions of that Act Shall have effect accordingly.
(7)Whoever contravenes the provisions of any notification under this section in relation to any goods made or produced in Pakistan, or sell, or exposes or has in his possession for sale or any purposes of trade or manufacture, any goods in relation to which the provisions of any notification under this section has been contravened, shall, unless he furnishes the proof provided for in Section 7, be liable to the punishment provided for in that section and the Court convicting or acquitting him may direct the forfeiture to Government of all goods in relation to which the offences has been committed or, but for such proof as aforesaid , would have been committed.]
Section 6. Penalty for applying a false trade description:
Section 7. Penalty for selling goods to which a false trade description is applied:
(a) that , having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the trade description, and
(b) that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods or things, or
(c) that otherwise he acted innocently,
Be punished with imprisonment for a term which may extend to three months, or with fine which may extend to two hundred rupees, and in case of a second or subsequent conviction with imprisonment which may extend to one year, or with fine, or with both.
THE PUNJAB CONSUMER PROTECTION ACT, 2005
21. False, deceptive or misleading representation.
Section 24. Consumer Protection council.
Section 32. Penalties.
(1) Where a manufacturer fails to perform or in any way infringes the liabilities provided in section 4to 8, 11, 13, 14, 16, 18 to 22, he shall be punished with imprisonment with may extend to two years or with fine which may extend to hundred thousand rupees or with both in addition to damages or compensation as may be determined by the court.