Trade Marks Ordinance, 2001 — section 45

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 become 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 carrying 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 Ordinance, that a period of two 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 purposes 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 consists 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. CHAPTER V.__INFRINGEMENT PROCEEDINGS