Trade Marks Ordinance, 2001 — section 60

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 working days not exceeding ten days, within that period so extended 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)].

(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. 1 Subs. by Act No. LVIII of 2023, ss. 21-22

(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 (Enforcement) 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.