Trade Marks Ordinance, 2001 — section 40

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 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, 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 the 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 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 domain 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 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 no 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.