2011 APAA Trademark Committee Special Topics-PAKISTAN. Qamar Uddin Khan M. Yawar Irfan Khan

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1 2011 APAA Trademark Committee Special Topics-PAKISTAN By Qamar Uddin Khan M. Yawar Irfan Khan "How to use a registered trademark against a non-use cancellation action and a registration notice requirement." ISSUE 1: Trademark use on the Internet Can use of a trademark on the Internet be considered as trademark use enough to defend against a non-use cancellation action? [Note] Major trademark owners wish to obtain trademark registrations in many countries for world-wide protection. After obtaining these registrations, they will have to prove use of the registered trademarks in each country for the purpose of avoiding risk of cancellation of the trademark registrations. It is well known, however, that it is often very difficult to prove use of a registered trademark in all of the countries where the trademarks are registered. If the trademark use on the Internet is accepted as a proper use, it would be very convenient. Yes, if the goods/services are available to the consumers in Pakistan then, it may be considered as use to defend against a non-use cancellation action. For example, in a case, the court held that in recent past a tremendous change has been made in commercial dealings and now instead of purchasing or placing orders at shop and/or in the office or organization the consumers and or companies approach the concerned parties by availing the facility through internet. Online shopping has become a common feature of market and is developing day by day. The consumer moves through the internet to the merchant website from where he decides that he wants to purchase 1

2 something so he is moved to online transaction server where all the information he gives in encrypted. (Reported 2004 CLD Acer, Inc. Vs. Acer Compurters) ISSUE 2: Requirement of availability for trademark use on the Internet If YES in ISSUE 1, should the goods or services be available in your region, not through importation from other countries in order to prove trademark use on the goods or services in your region? [Note] Through the Internet, we could order and purchase the goods or services bearing a registered trademark from other countries. For example, we could order and purchase books trademarked with AMAZON. In this case, however, the books are not available in your region and only upon your order, they would be imported into your region and fall into your hands. By way of another example, education services can be provided under a trademark from another country through the Internet. Is the use of these trademarks acceptable as proper trademark use in your region? Yes, if the goods/services for purchase on internet are available then use of such trademark may be considered as proper trade mark use in view of above decision of the court. ISSUE 3: Requirement of language for trademark use on the Internet If YES in ISSUE 1, should the language of the Internet be the one of your region? [Note] Supposing that use of a trademark on the Internet can be considered as trademark use enough to defend against a non-use cancellation action, there 2

3 would be some conditions to find a proper trademark use. The Joint Recommendation issued by the WIPO and the Assembly of the Paris Convention in 2001, provides that the use of a sign on the Internet shall constitute a trademark use only if the use is considered to have a commercial effect as a result of taking into consideration various factors. Therefore, is the appropriate language one of the requirements of finding a trademark use in your region? Yes. The language used on the internet should be one which is understood by the people residing in our country such as Urdu and English and so that they are able to access the website and place orders, as the purpose of the trade mark is to indicate the source of goods/services. ISSUE 4: Trademark use on internationally circulated magazines Can use of a trademark on magazines not published in your country but available through international distribution be considered as "trademark use" enough to defend against a non-use cancellation action? [Note] Assuming that a multi-national cosmetic company (Company X) ran an advertisement in "Cosmopolitan" magazine which was shown in your country through international distribution, will such evidence be enough for Company X to defend its trademark registration in your country from being canceled for non-use? Yes and No. Use of a trademark on magazines not published in Pakistan but available through international distribution may not be considered as "trade mark use" enough to defend against a non-use cancellation action because, according to Section 73(1) of the 3

4 Ordinance, it is necessary that a mark should have been put to bona fide use in Pakistan within the period of 5 years following the date of completion of registration procedure. ISSUE 5: Image advertising Can trademark use be done by so-called "image advertising"? [Note] Are there any requirements that have to be met to be eligible for "acceptable evidence of use" as a proper advertisement of a trademark use? Image advertising means, for instance, an ad showing a beautiful model on a beautiful beach, and clearly shows the trademark with a suggestion that it is used on "perfume", but there is no actual photo of the product bearing the trademark. In such case will there be a problem to claim trademark use? Yes. Use of a trademark by image advertising in a country will be considered as "trademark use" as per Section 4 (a) and (b) of the Trade Marks Ordinance 2001, which is as under: In this Ordinance, unless the context otherwise requires, any reference (a) to use of a mark shall include reference to use of the trade mark in relation to goods, as well as, on goods: (b) to use of a trade mark in relation to goods, shall include reference to use of the mark on goods, or vice versa. ISSUE 6: Trademark Registration Notice Supposing that there is a trademark XYZ which is registered only in the USA and is not registered in any of the APAA member regions, is it acceptable for the US trademark owner to export into your region the 4

5 goods under the trademark XYZ bearing the R in a circle mark? [Note] Generally, a trademark owner in one country would often put the R in circle registration notice on all of the designated goods and export the goods or services attached with the R in circle mark into other countries where the trademark is not registered. However, such exportation of the goods affixed with the R in circle mark may result in false indications of trademark registration. How would such a situation be considered in your country? Yes and No. A trademark registered in a country other than Pakistan if exports the goods with sign R in a circle into our country then it may be considered a false indication of trade mark registration because trade mark rights are territorial in nature. The purpose of R in circle with the trade mark declares to the general public that the proprietor is a registered proprietor in Pakistan and is claiming exclusive use of such trade mark. Using R in circle when the trade mark is not registered in that region would amount to an incorrect disclosure and would make such person liable for penalty for falsely representing a trade mark as registered under section 102 of the Trade Marks Ordinance The penalty may include imprisonment for a term which may extend to six months, or with fine, or with both. However, if the trademark owner indicated the trademark bearing the R in a circle mark with the name of the country where the mark was registered, then it may not be considered as false representation. According to Section 102 (3)(a) to (c) of the Ordinance, (3) 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, except (a) where that word or other expression is used in direct association with other words delineated in characters at least as large as those in which that word or other expression is delineated and indicating that the reference is 5

6 to registration as a trade mark under the law of a country other than Pakistan being a country under the law of which the registration referred to is, in fact, in force; (b) where that other expression, symbol or sign 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 law of a country other than Pakistan and in relation solely to goods or services to be exported to that country. ISSUE 7: Penalty for false indication From a legal point of view, a penalty may be imposed in the case of a false indication of a registered trademark by improper use of the R in circle mark. Please answer by using Y, N, M, or N/A and put appropriate numerals in the parenthesis, if applicable. (1) Imprisonment or confinement of no more than (6) months will be imposed. (2) Fine of no more than the amount of (240 ) US dollars will be imposed. As a matter of practice, what is the percent risk of actually being accused of false indication by the legal authorities in your country? Please select one among the following. (3) a. more than 50 % b. 30~50 % c. 10~30 % d. 1~ 10% e. less than 1% [Note] From a legal point of view, it is not allowable to indicate the R in circle mark on any of the designated goods in a country where the trademark is not registered. However, the trademark owner would often like to export the goods attached with the R in circle mark into other countries irrespective of whether or not the trademark is registered. Thus, the above question arises. (3) d. 1~ 10% The percentage risk of actually being accused of false indication in Pakistan is not very 6

7 high if the trademark owner indicated the trademark bearing the R in a circle mark with the name of the country where the mark was registered. ISSUE 8: R in circle mark and litigation Is it necessary to indicate the R in circle mark on registered trademarks when initiating trademark infringement litigation? [Note] Through this question, we would like to know whether or not the R in circle trademark registration notice is required to bring a trademark infringement court action on the basis of the trademark registration. No. The Certified extract of the Register of Trade Marks issued by the Trade Marks Registry under its seal would be sufficient to initiate a trademark infringement suit. ISSUE 9: R in circle and litigation Are there any disadvantages in a trademark infringement action due to the failure to indicate the R in circle mark. [Note] For instance, in the USA, there is some disadvantage in not indicating the R in circle mark when claiming damages in a trademark infringement action. This question aims to clarify the merit of indicating the R in circle mark and the demerit of not indicating the same. No. THE END 7

8 2011 APAA Trademark Committee Special Topics Chart "How to use a registered trademark against a non-use cancellation and registration notice requirement." (1) (2) (3) 8 9 Australia Bangladesh Hong Kong India Indonesia Japan Korea Malaysia New Zealand Pakistan Y Y Y M Y M Y Y N/A N N Philippines Singapore Sri Lanka Taiwan Thailand Vietnam [Note]: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable 8