Trade Marks Ordinance, 2001 — section 86

86. Protection of well known trade mark..—_(1) Reference in this Ordinance to a trade mark which is entitled to protection as 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

(a)is a national of a Convention country; or

(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 references 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;

(ii)the degree of inherent or acquired distinctiveness of the trade mark;

(iii)the Pakistan or worldwide duration of the use and advertising of the trade mark;

(iv)the Pakistan or worldwide commercial value attributed to the trade mark;

(v)the Pakistan or worldwide geographical scope of the use and advertising of the trade mark;

(vi)the Pakistan or worldwide quality and image that the trade mark has acquired; and

(vii)the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and the presence or absence of identical or deceptively similar third party trade marks validly registered or used in relation to identical or similar goods and services.

(3)The owner of a 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 cause 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.