Pakistan

Geographical Indications (Registration and Protection) Act, 2020

140 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

ACT NO. XVIII OF 2020

An Act to provide for registration and effective protection of geographical

indications

WHEREAS it is expedient to provide for registration and protection of

geographical indications of goods;

AND WHEREAS it is necessary to recognize and protect the geographical

indications of the Islamic Republic of Pakistan for public interest and advancing

the economic reform and development of the least developed areas of Pakistan;

AND WHEREAS it is expedient to provide the legal means for interested

parties to prevent the use of any means in the designation or presentation of

goods that indicates or suggests that the goods in question originate in a

geographical area and to prevent any use which constitutes an act of unfair

competition within the meaning of Article 22 of the Agreement on Trade Related

Aspects of Intellectual Property Rights (TRIPS);

It is hereby enacted as follows:-

CHAPTER-I

PRELIMINARY

1. Short title, extent and commencement.—(1) The Act may be

called the Geographical Indications (Registration and Protection) Act, 2020.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 141

(2) It extends to the whole of Pakistan.

(3) It shall come into force on such date as the Federal Government

may by notification in the Official Gazette appoint.

2. Definitions.—(1) In this Act, unless there is anything repugnant in

the subject or context;—

(i) “Applicant” means a natural or legal person, government

organization or statutory body, association, or group of producers,

or producer organization, or operator having an interest in the

registration;

(ii) “authorized user” means authorized user of a geographical

indication registered under this Act;

(iii) “book of specifications” means a document elaborated by the

applicant, specifying the geographical area of goods, production

standards or product specifications, and qualification process for

Geographical Indication goods;

(iv) “certification body” means an organization issuing a certificate of

conformity with the book of specifications ;

(v) “deceptively similar” means a geographical indication which so

nearly resembles to another geographical indication so as to be

likely to deceive or cause confusion;

(vi) “Director General” means Director General, Intellectual Property

Organization of Pakistan appointed under section 12 of the

Intellectual Property Organization of Pakistan Act, 2012 (XXII of

2012);

(vii) “geographical indication” or “GI” in relation to goods includes

an indication which identifies such goods as agricultural goods,

natural goods or manufactured goods originating or manufactured

or produced in a territory or a region or locality as determined by

the country, where a given quality, reputation or other

characteristics of the goods or the ingredients or components, is

essentially attributable to its geographical origin and in the case of

manufactured goods one of the activities of either the production or

processing or preparation of the goods concerned takes place in

such territory, region or locality as the case may be. For the

purpose of this clause any name which is not the name of a

territory or a region a locality or a country shall also be considered

as a geographical indication if such name refers to or indicates the

142 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

origin of goods within or from a specific geographical area within

that country and is used upon or in relation to particular goods

originating from or with in that country or a territory or a region or

locality within that country;

(viii) “geographical origin” means an area of a country, region, locality

and shall also include the sea, lake, river, island, mountain or any

other area of a similar nature;

(ix) “foreign geographical indication” means a geographical

indication that identifies a product as originating in a country other

than Islamic Republic of Pakistan;

(x) “generic name or indication” means a name which, may

correspond to the name of a territory, region or locality, does not

have in Pakistan any meaning as an indication or reference of

geographical origin and has become a commonly used name for the

goods in question;

(xi) “goods” include any agricultural, horticulture, natural, raw or

manufactured goods or goods of any industry or handicraft or any

food or drink product, whether in a processed or semi-processed or

semi­finished form;

(xii) “indication” includes any words, letters or numerals, geographical

name or other name, device or any figurative representation, label

or any combination thereof indicating or referring or suggesting or

conveying the geographical origin of the goods to which it is

applied;

(xiii) “IPO-Pakistan” means the Intellectual Property Organization of

Pakistan, established under the Intellectual Property Organization

of Pakistan Act, 2012 (XXII of 2012);

(xiv) “limitation” with its grammatical variations means any limitation

of the right to use of geographical indication given by registration

to a registrant or an authorized user thereof including limitations of

that right as to mode of use, as to use in relation to goods to be sold

or otherwise traded within Pakistan or as to use in relation to goods

to be exported outside Pakistan;

(xv) “name” includes any abbreviation of a name;

(xvi) “operator” means a natural or legal person involved in the

collection, transformation, processing, trading, or distribution of

geographical indication goods;

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(xvii) “organization” means any entity, body, department, authority or

organization so designated by the Division concerned;

(xviii) “Pakistan geographical

indication that identifies a

Republic of Pakistan;

indication” means a geographical

product as originating in the Islamic

(xix) “Paris Convention” means the Paris Convention of 20t11 March,

1883 for the protection of industrial property, as revised or

amended from time to time;

(xx) “package” includes any case, box, container, covering, folder,

receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel,

frame, capsule, cap, lid, stopper and cork;

(xxi) “Policy Board” means the Policy Board constituted under section

4 of Intellectual Property Organization Act, 2012 (XXII of 2012);

(xxii) “prescribed” means prescribed by rules made under this Act;

(xxiii) “producer”, in relation to goods, means any person who—

(a) if such goods are natural goods, exploits the goods;

(b) if such goods are agricultural goods, produces the goods and

includes the person who is an operator or processes or

packages such goods; and

(c) if such goods are handicrafts or industrial goods, makes or

manufactures the goods, and includes an operator or any

person who trades or deals in such production, exploitation,

making or manufacturing, as the case may be, of the goods;

(xxix) “qualifying country” means any country or territory which is—

(a) a member of the World Trade Organization;

(b) a member of the World Intellectual Property Organization;

(c) a party to the Paris Convention ; or

(d) any other country which the competent authority may

designate as a qualifying country on the basis of reciprocity;

(xxv) “register” means the register of geographical indications provided

under section 6;

144 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(xxvi) “registered” with its grammatical variations means registered

under this Act;

(xxvii) “registered geographical indication” means a geographical

indication which is actually on the register;

(xxviii) “registrant” means any statutory body, public body, local or

provincial administration, government enterprise or any

government organization which is a juristic person having area of

responsibility covering the geographical indication of the goods as

referred to in this Act having obtained registration and entered in

the register as proprietor of a geographical indication ;

(xxix) “Registrar” means the Registrar of Geographical Indications

referred to in section 4;

(xxx) “Registry” means the geographical indications registry mentioned

in section 3;

(xxxi) “Intellectual Property Tribunal” or “IP Tribunal” means the

Intellectual Property Tribunal established under the Intellectual

Property Organization of Pakistan Act, 2012 (XXII of 2012); and

(xxxii) “use of a geographical indication” shall include but not be

limited to, use in production, manufacturing, packing, stocking,

importing, exporting, distributing, selling, dealing and advertising

or exploiting in any other manner and any reference to such use

shall be construed to include a reference to the use of a printed or

other visual representation of the geographical indication.

(2) Words and expressions used and not defined in this Act shall have

the same meaning as are assigned to them in the Trade Marks Ordinance,

2001(XIX of 2001).

CHAPTER-II

GEOGRAPHICAL INDICATION REGISTRY

3. Geographical Indications Registry.—(1) For the purposes of this

Act, the concerned Division shall establish a Geographical Indications Registry

under the management and control of IPO Pakistan. The Trade Marks Registry

and its branches established under the Trade Marks Ordinance, 2001(XIX of

2001) shall carry out functions of the Geographical Indications Registry and its

branches till such time a separate GI Registry is established under this Act.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 145

(2) The GI Registry shall maintain a register of record to be called the register of geographical indications. GI Register shall be maintained at Trade Marks Registry for the time being and shall be handed over and transferred to the GI Registry once it has been established under this Act.

(3) For the facilitation of applicants, the IPO Pakistan with the prior approval of Policy Board may set up offices of the Registry at such places, as deems necessary, as and when required.

(4) The Geographical Indications Registry shall have its own seal.

4. Registrar geographical indications and other functionaries.— The IPO Pakistan may, by notification in the official Gazette, appoint an officer who shall serve as the Registrar:

Provided that the Registrar of Trade Marks, appointed under sub-section (1) of section 7 of the Trade Marks Ordinance, 2001 (XIX of 2001) shall perform the functions of Registrar Geographical Indications till the appointment of an officer as Registrar under this section, to carry out his functions under this Act:

Provided further that the appointment of Registrar under this section shall be made within three hundred and sixty days after the commencement of this Act.

5. Delegation of Authority of the Registrar.—(1) The IPO Pakistan shall with the prior approval of the Policy Board appoint one or more deputy registrars and assistant registrars for the purposes of this Act.

(2) Under direction of IPO Pakistan, the Registrar may delegate its powers to the deputy registrars and assistant registrars who shall discharge such functions of the Registrar under this Act as the Registrar may delegate from time to time.

(3) Any reference in this Act to the Registrar shall include a reference to any deputy registrar or assistant registrar in the discharge of such functions.

(4) IPO Pakistan may authorize the Registrar to delegate any function of the Registrar to any other officers of the GI Registry other than the deputy and assistant registrars.

6. Register of geographical indication.—(1) There shall be kept at each branch, a copy of the register of geographical indication which shall contain all registered geographical indications with names, addresses and descriptions of the registrants, the names and addresses and descriptions of authorized users and such registers may be maintained wholly or partly in electronic form. The register shall be open for inspection of the public at all convenient times in the same manner as the originals thereof.

146 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(2) The register shall contain list of registrants and authorized users of

geographical indications.

(3) The register shall be divided into two Parts called respectively Part.

A and Part B.

(4) The particulars relating to the registration of the registrant of

geographical indications shall be incorporated and included in Part A of the

register in the prescribed manner.

(5) The particulars relating to the registration of the authorized users

shall be incorporated and included in Part B of the register in the prescribed

manner.

(6) Any person may obtain extracts from the register in the prescribed

manner.

CHAPTER-III

REGISTRATION OF GEOGRAPHICAL INDICATION

7. Registration of registrant of geographical indication.—(1)

Registration of proprietor of geographical indication of any or all goods subject

to definite territory of a country shall comprise of such class of goods as may be

classified by the Registrar in accordance with the international classification of

goods for the purposes of registration of geographical indications.

8. Prohibition of registration of a geographical indication.—(1)

An indication shall not be registered as a geographical indication,—

(i) which does not correspond to the definition of geographical

indication contained in clause (vii) of sub-section (1) of section 2;

or

(ii) the use of which is likely to deceive or cause confusion; or

(iii) which is not or has ceased to be protected in its country of origin;

or

(iv) which has fallen into disuse in that country; or

(v) which is determined by the Registrar to be a generic name or an

indication; or

(vi) which is opposed to morality or public policy.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 147

9. Registration of homonymous geographical indication.—(1) A

homonymous geographical indication is entitled to be considered for registration

under this Act.

(2) Prior to registration under sub-section (1) the Registrar shall satisfy

himself that he has considered—

(i) all practical conditions under which the homonymous indication in

question shall be differentiated from other homonymous

indication;

(ii) equitable treatment of the producers of the goods concerned; and

(iii) that the consumers of such goods shall not be confused or misled in

consequence of such registration.

Explanation.—Homonymous geographical indications (GI) are

those that are spelled or pronounced alike, but which identify

products originating in different places, usually in different

countries. In principle, these indications should coexist, but such

coexistence may be subject to certain conditions. For example, it

may be required that they be used only together with additional

information as to the origin of the product in order to prevent

consumers from being misled. A GI may be refused protection if,

due to the existence of another homonymous indication, its use

would be considered potentially misleading to consumers with

regard to the product‟s true origin.

10. Registration of foreign geographical indication.—(1) A

geographical indication of a foreign country shall be registered in the Islamic

Republic of Pakistan as long as it is registered in accordance with the local

legislation in its country of origin. The title and date of the legislative or

administrative provisions or of judicial decisions regarding protection to the

geographical indication in the country of origin shall be considered for accepting

foreign GI application.

(2) The Registry shall not allow the registration of a foreign

Geographical Indication which is not or has ceased to be protected in its country

of origin or which has fallen into disuse in that country.

(3) The application for registration of foreign geographical indication

shall be made at the Registry by its legal representative in Pakistan.

(4) During the registration procedure, the Registry may require the

applicant or its legal representative to submit any information related to

registration in the country of origin which may affect its registration in Pakistan.

148 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

CHAPTER-IV

PROCEDURE FOR REGISTRATION OF REGISTRANT OF GI

11. Right to own and register geographical indication.—(1) The

Federal Government shall be the holder and exclusive owner of all the

geographical indications of the Islamic Republic of Pakistan.

(2) The Federal Government may allow any statutory body, public

body, local or provincial administration, government enterprise or any

government organization which is a juristic person having area of responsibility

covering the geographical indications in the territory of Islamic Republic of

Pakistan to apply for and register the product as a geographical indication as a

registrant in such form, manner and accompanied by such fees as may be

prescribed.

(3) When a product bearing geographical indication is registered at the

Registry in accordance with the provisions of this Act, such producers or

operators whose practices are in compliance with the book of specification shall

have the right to use the geographical indication as authorized users. The

producers or operators, with the formal assent of the Registrant, shall apply to

the Registry for obtaining registration as authorized users.

(4) The concerned Division shall be responsible for conciliating any

conflicts and engage in advocacy in relation to drafting of book of specification

during pre-registration phase of geographical indications.

(5) The concerned Division shall regulate cooperation agreement with

organizations to enable pre-registration processes of geographical indication and

facilitate in arranging consultations with producers and operators in drafting

book of specification.

12. Content of Application for registration of geographical

indication.—(1) The application for registration of a geographical indication by

the Applicant shall contain the following documents for registration, namely:—

(i) name and address of applicant filing the application;

(ii) geographical indication for which registration is sought;

(iii) class of goods to which the geographical indication shall apply;

(iv) geographical area to which the geographical indication applies and

a map of that area;

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 149

(v) title and date of the legislative or administrative provisions or of

judicial decisions regarding the protection to the geographical

indication in the qualifying country of origin;

(vi) statement of such particulars in relation to the producers or

operators of the concerned goods, if any;

(vii) goods for which the geographical indication applies;

(viii) quality, reputation or other characteristics of the goods,

geographical origin and other details as may be prescribed for

which the geographical indication is used;

(ix) book of specifications containing product standards or product

specifications; and

(x) such other particulars as may be prescribed and shall be subject to

the payment of prescribed fee.

(2) In addition to other factors, the reputation of products may also be

determined on the basis of their being widely known to and selected by

consumers.

(3) The quality and characteristics of products of geographical

indication shall be defined by one or several qualitative, quantitative or

physically, chemically, microbiologically perceptible criteria which can be tested

by technical means or experts with appropriate testing methods as may be

prescribed.

13. Conformity of geographical indication with book of specification.—

(1) The concerned Division, by notification in the official Gazette shall designate

a certification body to guarantee, inspect, test and monitor quality, reputation or

other characteristics of products seeking registration of geographical indications

in a prescribed manner.

(2) The designated certification body shall confirm the specifications

identified in the book of specifications from accredited confirmatory assessment

bodies or research institutes or impartial public authority or public organization

or organization approved by concerned Division for this purpose.

(3) In case there is non-compliance with the book of specifications by

the producers or operators as authorized users of registered geographical

indication, following measures may be adopted by the certification body,

namely:—

150 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(i) notice served to the authorized user for non­compliance;

(ii) warning made to the producer or operator or authorized user;

(iii) in case no remedial action is taken within reasonable time,

temporary disqualification of the rights to use the geographical

indication by the producer or operator or authorized user by

making an application to the Registrar; and

(iv) application to the Registrar for suspension or cancellation of the

rights to use the geographical indication by the non-compliant

authorized user.

(4) The Registrar may approve the suspension after investigation and

scrutiny as deemed fit.

(5) The cost of such confirmation of compliance with the book of

specifications shall be borne by the authorized users. The registrant may

contribute to these costs as the case may be.

14. Technical assistance of experts.—The Registrar may, if so

require, be assisted in technical aspects in various fields such as geology or

meteorology involved in any case by any expert who has experience and

expertise in the matter in order to consider or make a decision or ascertain the

correctness of the particulars furnished in the application.

15. Examination for registration.—(1) The Registrar shall cause the

application to be examined to determine whether it fulfills the criteria and other

requirements.

(2) In examining the application, the Registrar may call the applicant

or any person concerned to give explanation or furnish additional evidence to

him. Where it is necessary to have opinion of an expert in the field related to

matter under consideration, the Registrar shall send the matter to the expert for

his consideration and opinion in the prescribed manner.

16. Grant of registration of registrant.—(1) When an application for

registration of a geographical indication has been accepted, the Registrar shall

register the registrant of the product bearing geographical indication mentioned

in the application and the geographical indication shall stand registered from the

date of making of said application and it shall be deemed to be the date of

registration.

(2) On the registration of a geographical indication, the Registrar shall

issue to the registrant, a certificate in such form as may be prescribed, sealed

with the seal of the Registry.

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(3) Subject to the provisions of this Act, the Registrar may accept an

application absolutely or subject to such amendments, modifications, conditions

or limitations, if any, as he may deem fit.

(4) In case of conditional acceptance of application, the Registrar shall

record in writing the grounds for such conditional acceptance and the reasons to

be recorded in writing for arriving at such decision.

(5) The Registrar may amend the register or a certificate of registration

for the purpose of correcting a clerical error or an obvious mistake.

17. Application for registration of authorized user.—(1) Any

natural or juristic person or group of persons claiming to be an operator,

producer or group of producers interested in the right to use registered

geographical indication, may apply in writing to the Registrar subject to the

formal assent of the registrant in the prescribed manner for registering him as an

authorized user of such geographical indication.

(2) The application under sub-section (1) shall be accompanied by a

statement confirming compliance with the book of specifications and such

documents of facts as may be prescribed and required by the Registrar to

determine as to whether such person is the producer or operator of the goods

referred to in the application and such fee as may be prescribed.

(3) The Registrar shall cause the application to be examined to

determine whether it fulfills the criteria and other requirements.

(4) In examining the application, the Registrar may call the applicant

or any person concerned to give explanation or furnish additional evidence to

him.

(5) Where registration of a geographical indication as authorized user,

is not completed within twelve months from the date of the application by reason

of default on the part of the applicant, the Registrar may, after giving notice to

the applicant in the prescribed manner, treat the application as abandoned unless

it is completed within the time specified.

18. Withdrawal of acceptance.—(1) Where, after the acceptance of

an application for registration of an authorized user of geographical indication

but before its registration, the Registrar is satisfied,—

(i) that the application has been accepted in error; or

(ii) that in circumstances of the case the application for use of

geographical indication should not be registered; or

152 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(iii) that it should be registered subject to conditions or limitations; or

(iv) that it should be registered subject to conditions, additional to or

other than the conditions or limitations subject to which the

application has been accepted, he may, after hearing the applicant,

if he so desires, withdraw the acceptance and proceed as if the

application had not been accepted.

19. Advertisement.—(1) When an application for registration of an

authorized user of the product bearing geographical indication has been

accepted, whether absolutely or subject to conditions or limitations, the Registrar

shall advertise that application immediately in such manner as may be

prescribed.

(2) Where after the advertisement of an application,—

(i) an error in the application has been corrected; or

(ii) the application has been permitted to be amended,

the Registrar in his discretion may either cause the application to be advertised

afresh, a new or may notify such correction which has been made in the

application in the prescribed manner.

20. Opposition to registration.—(1) Within a period of three months

from the date of advertisement or re-advertisement of the application for

registration of authorized user of a product bearing geographical indication, any

interested person may give to the Registrar notice of opposition in writing in

prescribed manner for opposition to the registration.

(2) This notice of opposition under sub-section (1) shall be made in

such manner and on payment of such fee as may be prescribed.

(3) The Registrar shall serve a copy of the notice of opposition to the

Applicant for registration as authorized user and within two months from the

receipt by the applicant of the notice of opposition, the applicant shall send to

the Registrar in the prescribed manner a counter-statement of the grounds on

which he relies for his application and if he does not do so, he shall be deemed to

have abandoned the application.

(4) Within two months from the receipt of copy of notice of

opposition, the applicant may send a counter-statement of the grounds on which

he relies upon to the Registrar in the prescribed manner.

(5) If he fails to do so in the prescribed time limit he shall be deemed

to have abandoned the application.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 153

(6) If the applicant sends such counter-statement, the Registrar shall

cause a copy thereof to be served on the person giving notice of opposition.

(7) Any evidence upon which the opponent and the applicant may rely

shall be submitted in such manner and within such time as may be prescribed to

the Registrar, and the Registrar shall give an opportunity to them to be heard, if

they so desire.

(8) After hearing the parties, considering the evidence and taking into

account ground of objection whether relied upon by the opponent or not, the

Registrar shall decide whether the registration is to be permitted absolutely or

subject to conditions or limitations, if any, or not to be permitted.

(9) If any party does not appear for hearing, the Registrar may ex parte

decide on the notice of opposition on merits, upon consideration of the evidence

available on record.

(10) Where a person giving notice of opposition or an applicant sending

a counter statement neither resides nor carries on business in Pakistan, the

Registrar may require him to give security for the costs of proceeding before

him.

(11) The Registrar may, on request, permit correction of any error or

any amendment in a notice of opposition or a counter-statement in the prescribed

manner.

21. Extension of time.—(1) If the Registrar is satisfied, on application

made to him in the prescribed manner and accompanied by the prescribed fee,

that there is sufficient cause for extending the time for doing any act not being a

time expressly provided in this Act, whether the time so specified has expired or

not, he may subject to such conditions as he may think fit to impose, extend the

time and inform the parties accordingly.

(2) Nothing in sub-section (1), shall be deemed to require the Registrar

to hear the parties before disposing of an application for extension of time and

no appeal shall lie from any order of the Registrar under this section.

22. Correction and Amendment.—(1) The Registrar may, at any

time, whether before or after acceptance of an application for registration, permit

the correction of any error or permit an amendment of the application.

23. Grant of registration of an authorized user.—(1) Where the

Registrar finds that conditions provided for in this Act are fulfilled and either—

(i) the registration of an authorized user has not been opposed within

the prescribed time limit; or

154 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(ii) the authorized user has provided statement affirming compliance

with the book of specifications; or

(iii) the registration of the authorized user has been opposed by notice

and the opposition has been decided in the Applicant‟s favour; or

(iv) no appeal has been filed against the Registrar‟s decision for

registration as an authorized user,

the Registrar shall, unless the concerned Division otherwise directs, register the

said authorized users mentioned in the application.

(2) The authorized users, when registered under sub-section (1), shall

be registered from the date of filing of said application.

(3) The Registrar shall issue a certificate of the registration to the

authorized users bearing the seal of the Registry and shall publish a reference to

the said registration in the prescribed manner.

(4) The Registrar may amend the register for addition, correction or

omission of entries relating to authorized users.

(5) Where an application is made by any aggrieved person or any legal

person or an organization or designated certification body or registrant that an

authorized user is dealing with a registered geographical indication in a manner

which is detrimental to the public interest at large and in non-compliance of

book of specifications and the Registrar is satisfied according to all legal

considerations contained in this Act, he may pass an order for rectification of the

register or cancel the registration as he may deem legally fit.

(6) Such orders of the Registrar shall be binding on all the parties

including the aggrieved party or authorized user, provided that appeal against the

Registrar‟s decision shall lie to the High Court.

24. Regulatory mechanism for registered geographical indication.—

(1) The procedure for inspection and monitoring shall be prepared by concerned

Division for regulatory mechanism including scope, frequency, and procedures

of monitoring activities and penalties to ensure the compliance of geographical

indication products with the book of specification.

(2) The use of registered geographical indication by the authorized

users shall be subject to compliance with the book of specification.

(3) IPO Pakistan shall facilitate in promotion, marketing and effective

use of products bearing geographical indications.

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(4) The designated certification body conforming product specification

and product standards of geographical indication goods shall present an annual

report to the concerned Division at the end of each calendar year containing a list

of authorized users including but not limited to goods, quantity and quality

acknowledged and actions taken against non-compliance of the book of

specification.

(5) Concerned Division shall oversee the efficiency of the designated

certification body or bodies.

25. Duration, renewal, removal and restoration of registration.—

(1) The registration of a Registrant of geographical indication shall be perpetual.

(2) The registration of an authorized user shall be for a period of ten

years.

(3) The Registrar shall, on application made in the prescribed manner,

by the authorized user, within the prescribed period and subject to the payment

of the prescribed fee, renew the registration of the authorized user, for a period

of ten years from the date of expiration of the original registration or of the last

renewal of registration, as the case may be (which date is in this section referred

to as the expiration of the last registration).

(4) At the prescribed time, before the expiration of the last registration

of the authorized user, the Registrar shall send notice in prescribed manner to the

authorized user regarding the date of expiration and the conditions as to payment

of fees and otherwise upon which a renewal of registration may be obtained,

and, if at the expiration of time prescribed in the notice, the said conditions are

not been duly complied, the Registrar may remove the authorized user from the

register:

Provided that the Registrar shall not remove the authorized user from the

register, if an application is made in the prescribed form and the prescribed fee

and surcharge is paid within six months from the expiration of the last

registration of the authorized user, as the case may be, and shall renew the

registration of the authorized user for a period of ten years.

(5) Where an authorized user has been removed from the register for

non-payment of the prescribed fee, the Registrar shall, after six months and

within one year from the expiration of the last registration of the authorized user,

on receipt of an application in the prescribed form and on payment of the

prescribed fee, if satisfied that it is just so to do, restore the authorized user, as

the case may be, to the register and renew registration of authorized user, either

generally or subject to such condition or limitation as he thinks fit to impose, for

a period of ten years from the expiration of the last registration.

156 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

CHAPTER- V

RIGHTS CONFERRED BY REGISTRATION OF GEOGRAPHICAL

INDICATION

26. Rights conferred by registration.—(1) The registration of a

geographical indication shall give,—

(i) to the registrant of the geographical indication and the authorized

user to get relief in respect of infringement of the registered

geographical indication;

(ii) to the authorized user, the exclusive right to use the geographical

indication in relation to the goods in respect of which the

geographical indication is registered;

(iii) right to take action against an infringer or counterfeiter; and

(iv) right to prevent the use of a registered geographical indication by

any person in any manner in relation to the concerned products to

which the geographical indication relates.

27. Use of geographical indication.—(1) When Geographical Indication

has been registered for any particular product, the producers or operators of such

product who is entered in the Register as authorized users, is entitled to use the

registered geographical indication for goods, subject to compliance with product

specification.

(2) The use of registered geographical indication includes applying it

on products, packages, advertising material and any other document related to

registered geographical products.

28. National logo for certifying geographical indication

products.—(1) The Registry shall establish a National Geographical Indication

logo to certify all geographical indication products registered in Pakistan.

(2) National Geographical Indication logo along with registered name

of product and any other mark and detail shall appear on the label of marketed

products in a prescribed manner.

29. Registration to be prima facie evidence of validity.—(1) In all

legal proceedings relating to a geographical indication, the certificate of

registration granted under this Act, being a copy of the entry in the register under

the seal of the Geographical Indications Registry, shall be prima facie evidence

of the validity thereof and be admissible in all courts without further proof or

production of the original.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 157

(2) Nothing in this section shall be deemed to affect right of action in

respect of an unregistered geographical indication.

CHAPTER- VI

INFRINGEMENT OF REGISTERED GEOGRAPHICAL INDICATION

30. Infringement of geographical indication.—(1) A person shall

infringe a registered geographical indication if such person uses a geographical

indication which is identical with the registered geographical indication.

(2) A person shall infringe a registered geographical indication, if such

person uses it in the course of trade on following grounds, namely:—

(i) the use of a geographical indication in respect of goods of the same

or similar description but not originating in the country indicated

by the geographical indication in question or the true place of

origin of the goods is falsely indicated or the geographical

indication is used in translation or accompanied by expressions

such as “kind”, “type”, “style”, “imitation” used in such a manner

which misleads the persons as to the geographical origin of such

goods; or

(ii) any use of a geographical indication that, even if it identifies goods

truly originating in the place designated by that geographical

indication, designates products that do not comply with the

relevant book of specification as recorded on the register shall be

deemed as an infringement; or

(iii) the mark is deceptively similar to the geographical indication and

there exists a likelihood of confusion on the part of public, which

includes the likelihood of association with the geographical

indication.

31. When a geographical indication is not infringed.—(1) A person

shall not infringe a registered geographical indication when the—

(i) person uses it in good faith; or

(ii) person‟s name or the name of the person‟s place of business is used

but such use does not result in a likelihood of confusion or

otherwise interfere with an existing geographical indication; or

(iii) name of the predecessor in business of the person or the name of

the predecessor‟s place of business is used;

158 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(iv) person uses the geographical indication in good faith to indicate the

intended purpose of goods, in particular as accessories or spare

parts, or services; or

(v) person uses the geographical indication for the purposes of

comparative advertising.

CHAPTER- VII

INFRINGEMENT PROCEEDINGS

32. Action for infringement.—(1) Save as otherwise provided in this

Act, an infringement of a registered geographical indication shall be actionable

by the holder or registrant and the authorized user of the geographical indication.

(2) In an action for infringement all such relief by way of damages,

injunctions, accounts or otherwise shall be available to the holder or registrant

and the authorized user of the geographical indication as is available in respect

of the infringement of any other property right.

(3) Nothing in this Act shall be deemed to affect rights of action

against any person for passing off goods as the goods of another person or the

remedies in respect thereof.

33. Infringement of unregistered geographical indications.—(1) No

proceedings to prevent, or recover damages for, infringement of an unregistered

geographical indication shall be instituted by any person.

(2) Nothing in this Act shall be deemed to affect rights of action

against any person for passing off goods as goods of another person or any

remedies available therein.

34. Infringement proceedings.—(1) No person shall be entitled to

institute any proceeding to recover damages for an unregistered geographical

indication.

(2) Any interested person and any interested group of producers or

consumers may institute proceedings in the IP Tribunal to prevent infringement

in respect of a registered geographical indication.

(3) Following use of registered geographical indication shall constitute

infringement,—

(i) use in the designation or presentation of a good that indicates or

suggests that the goods in question originates in a geographical

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 159

area other than the true place of origin in a manner which misleads

the public as to the geographical origin of the goods; or

(ii) use which constitutes an act of unfair competition within the

meaning of Article 10 bis of the Paris Convention; or

(iii) use of a geographical indication in respect of goods of the same or

similar description but not originating in the place indicated by the

geographical indication in question, even where the true origin of

the goods is indicated or the geographical indication is used in

translation or accompanied by expressions such as “kind”, “type”,

“style”, “imitation” or the like; or

(iv) use of a geographical indication that, even if it identifies goods

truly originating in the place designated by that geographical

indication, designates goods that do not comply with the relevant

specification as recorded on the register.

(4) The relief which a court may grant in any suit for infringement

under this section may include —

(i) an injunction and confiscation of the products; and

(ii) damages or share in the profits at the option of the plaintiff.

35. Suits for infringement to be instituted before IP Tribunals.—

(1) No suit in matters relating to infringement of a geographical indication or

otherwise relating to any right in a geographical indication shall be instituted in

any other court except an IP Tribunal.

36. Order for erasure of offending mark.—(1) Where a person is

found to have infringed a registered geographical indication, the High Court or

an IP Tribunal may make an order requiring him—

(i) to cause the offending geographical indication to be erased,

removed or obliterated from any infringing goods, material or

articles in his possession, custody or control; or

(ii) to secure the destruction of the infringing goods, material or

articles, if it is not reasonably practicable for the offending

geographical indication to be erased, removed or obliterated.

(2) If an order under sub-section (1) is not complied with or it appears

to the High Court or IP Tribunal, as the case may be, that such an order may not

be complied with, the High Court or IP Tribunal may order that infringement

goods, material or articles be delivered to such person and may further direct for

160 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

erasure, removal or obliteration of the mark or for destruction, as the case

may be.

37. Infringing goods, material or articles.—(1) Subject to sub-

section (2), goods shall be infringement goods in relation to a geographical

indication, if those or packaging there of bear a mark identical or deceptively

similar to that mark and—

(i) application of the mark to the goods or packaging thereof was an

infringement of the registered geographical indication;

(ii) the goods are proposed to be imported into Pakistan and

application of the mark in Pakistan to those or packing thereof is an

infringement of the registered geographical indication; or

(iii) the mark otherwise been used in relation to the goods in such a

way as to infringe the registered geographical indication.

(2) Nothing in sub-section (1) shall be construed as affecting the

importation of goods which may be lawfully imported into Pakistan.

(3) Material shall be infringing material in relation to a registered

geographical indication, if it bears a mark identical or deceptively similar to that

mark and either it is,—

(i) used for labeling or packaging goods as a business paper or for

advertising goods, in such a way as to infringe the registered

geographical indication; or

(ii) intended to be so used and such use would infringe the registered

geographical indication.

(4) Infringing articles in relation to a registered geographical

indication means such articles which—

(i) are specifically designed or adapted for making copies of a mark

identical or similar to that mark; and

(ii) a person has in his possession, custody or control, knowing or

having reason to believe that those have been or are to be used to

produce infringing goods or material.

38. Order as to disposal of infringing goods, material or articles.—

(1) Where infringing goods, material or articles have been confiscated, an

application may be made to the High Court or IP Tribunal,—

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 161

(i) for an order that those be destroyed or forfeited; or

(ii) for a decision that no such order may be made.

(2) In considering what order, if any, should be made, the IP Tribunal

shall consider whether other remedies available in an action for infringement of

the registered geographical indication may be adequate to compensate the

aggrieved party and protect their interests.

(3) Where there are more persons than one interested in the goods,

materials or articles, the IP Tribunal shall make such order as it thinks just.

(4) If the IP Tribunal decides that no order should be made under this

section, then the person, in possession of the goods shall be entitled to retain

them.

CHAPTER-VIII

PENALTIES AND PROCEDURES

39. Meaning of applying Geographical Indications.—(1) A person

shall be deemed to apply a geographical indication for goods who—

(i) applies to the goods themselves or uses it in relation to goods;

(ii) applies to any package in or with which the goods are sold or

exposed for sale or had in possession for sale or for any purpose of

trade or manufacture; or

(iii) places, encloses or annexes any goods which are goods which are

sold or exposed for sale or had in possession for sale or for any

purpose of trade or manufacture in or with any package or other

thing to which a trade description has been applied; or

(iv) uses a geographical indication in any manner reasonably likely to

lead to the belief that the goods in connection with which it is used

are designed or described by that geographical indication ; or

(v) in relation to the goods uses a geographical indication in any sign,

advertisement, invoice, catalogue, business letter, price list or other

commercial documents and goods are delivered or services are

rendered to a person in pursuance of a request or order made by

reference to the geographical indication as so used.

162 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

(2) A geographical indication shall be deemed to be applied to goods

whether it is woven in, impressed on, otherwise worked into or annexed or

affixed to the goods or to any packaging or other thing.

40. False application of geographical indication.—(1) A person

shall falsely apply geographical indication if such person uses in the course of

trade a geographical indication which—

(i) is used without the consent of the registrant or authorized user of

geographical indication makes the geographical indication or

deceptively similar geographical indication; or

(ii) falsifies any genuine geographical indication, whether by

alteration, addition, effacement or otherwise; or

(iii) where the geographical indication is a well-known geographical

indication or has a reputation in Pakistan and the use of the

Geographical Indication being without due cause, takes unfair

advantage of or is detrimental to the distinctive character or the

repute of the geographical indication; or

(iv) uses such registered geographical indication as his trade name or

part of his trade name; or

(v) uses such registered geographical indication as his domain name or

part of his domain name or obtains such domain name without

consent of the proprietor of the registered geographical indication,

with the intention of selling such domain name to another

including the proprietor of the registered geographical indication;

or

(vi) uses any package bearing a geographical indication which is

identical with or deceptively similar to the geographical indication

of such registrant or authorized user, for the purpose of packing,

filling or wrapping therein any goods other than the genuine goods

of the authorized user of the geographical indication.

(2) Any geographical indication falsely applied as mentioned in sub-

section (1), is in this Act referred to as a false geographical indication.

(3) In all legal proceedings, a person who sells or offers goods for sale

or puts those 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

geographical indication, the burden of proving the consent of the registrant or

authorized user shall lie on the accused and be treated as a party to infringement

of a registered geographical indication, unless he proves that,—

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 163

(i) having taken all reasonable precautions, he had reasons to suspect the genuineness of the geographical indication;

(ii) on demand made by IP Tribunal or High Court, as the case may be, he gave all the information in his power with respect to the persons from whom he obtained such goods; and

(iii) he had otherwise acted innocently.

41. Penalty for applying false geographical indication, etc.—(1) Any person who,—

(i) falsely applies geographical indication to goods; or

(ii) applies to any goods to which an indication of the country or place

in which they were made or produced or the name and address of manufacture or person for whom the goods are manufactured is required

(iii) tampers with, alters or effaces an indication of origin which has been applied to any goods; or

(iv) causes any of the aforementioned things to be done, shall, unless he proves that he acted without intent to defraud,

shall be punished with imprisonment of either description for a term which shall not be less than six months but which may extend to three years, or with fine

which shall not be less than ten hundred thousand rupees, or with both.

42. Penalty of falsely representing a geographical indication as registered.—(1) No person shall make any representation—

(i) with respect to a mark not being a registered geographical

indication to the effect that it is a registered geographical indication;

(ii) with respect to a part of a registered geographical indication not being a part separately registered as a geographical indication, to the effect that it is separately registered as a geographical

indication;

(iii) to the effect that a registered geographical indication is registered in respect of any goods in respect of which it is not, in fact, registered; or

(iv) to the effect that the registration of a geographical indication gives an exclusive right to the use thereof in any circumstances in which,

164 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

having regard to limitations entered on the register, the registration does not, in fact, give that right.

(2) If any person contravenes any of the provisions of sub-section (1),

he shall be punishable with imprisonment for a term which shall not be less than

one month but which may extend to six months, or with fine which shall not be

less than five hundred thousand rupees, or with both.

(3) For the purposes of this section, the use in Pakistan in relation to a

geographical indication 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,—

(i) where that other expression is of itself such as to indicate that the

reference is to such registration as is mentioned in clause (i); or

(ii) where that word is used in relation to a mark registered as a

geographical indication under the laws of a country other than

Pakistan and in relation solely to goods to be exported to that

country.

(4) The Registrar may, either himself or upon a complaint in writing

made to him, call upon any person who is allegedly contravening any of the

provisions of clauses (i) to (iii) of sub-section (1) to show cause as to why action

should not be taken against him:

Provided that power of the Registrar shall be limited to the imposition of

fine as provided under sub-section (2), in addition he may refuse the application

for registration of the geographical indication if his application for registration of

GI as authorized user is pending. In case the authorized user of geographical

indication is registered, Registrar may order invalidation of the registration or

any combination thereof, as the case may be.

CHAPTER-IX

PROHIBITION ON ASSIGNMENT AND TRANSMISSION

43. Prohibition on transfer etc.—Notwithstanding anything

contained in any law for the time being in force, any right to a registered

geographical indication shall not be the subject matter of assignment,

transmission, licensing, pledge, mortgage, licensing or any such other agreement

by the authorized user, provided that on the death of an authorized user his right

in a registered geographical indication shall devolve on his successor in title

under the law for the time being in force.

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 165

CHAPTER-X

RECTIFICATION AND CORRECTION OF THE REGISTER

44. Power to vary a registration, and rectify or correct the Register.—

(1) Any person having a sufficient interest may apply for the rectification of an

error or omission in the Register:

Provided that an application for rectification may not be made in respect

of a matter affecting validity of registration of a geographical indication.

(2) The effect of rectification of the register shall be that the error or

omission in question shall be deemed never to have been made.

(3) The Registrar may, on application made in prescribed manner, by

the registrant or an authorized user enter any change in his name or address as

recorded in the register.

(4) The Registrar may, if he considers it necessary, implement any

amended or substituted classification of goods for purposes of registration of a

geographical indication as may be prescribed.

(5) The existing entries on the register may be amended to record any

new classification as may be prescribed.

45. Power to vary or cancel registration as an authorized user.—

(1) The registration of a person as an authorized user may be —

(i) amended, corrected or cancelled by the Registrar on the application

by the Registrant of the geographical indication or certification

body or organization in the prescribed manner for failure to

observe such conditions and restrictions which were pre-requisites

of registration as an authorized user;

(ii) amended, corrected or cancelled by the Registrar on the application

in writing in the prescribed manner by an authorized user of the

geographical indication; and

(iii) cancelled by the Registrar as envisaged under clauses (i) and (ii).

(2) Registration of authorized user may be varied or cancelled by IP

Tribunal in case of infringement of a registered geographical indication. It may

be varied or cancelled by High Court in case an appeal is filed against a decision

of registrar or an appeal filed against the order of IP Tribunal; in the prescribed

manner by any person aggrieved or organization on the grounds that the

166 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

authorized user has used the geographical indication in violation of the

provisions of this Act.

46. Rectification of registration of a trademark.—The Registrar of

Trade Marks Registry may, on his own motion or on application of an interested

party, refuse or rectify the registration of a trademark which consists of a

geographical indication with respect to goods not originating in the territory

indicated, if use of the indication in the trademark for such goods is of such a

nature so as to mislead the public with regard to the actual place of origin.

47. Power of Registrar to withdraw or transfer cases.—The Registrar

may, by order in writing and for reasons to be recorded therein, withdraw any

matter pending before an officer appointed under section 5 and deal with such

matter himself either de novo or from the stage it was so withdrawn or transfer

the same to another officer so appointed who may, subject to special directions

in the order of transfer, proceed with the matter either de novo or from the stage

it was so transferred.

48. Conflicting marks.—The Registrar shall, ex officio or at the

request of an interested person, refuse or invalidate registration of an authorized

user which contains or consists of a geographical indication to be used with

respect to goods of the same or similar description as those designated by that

geographical indication.

MISCELLANEOUS

49. Procedure before the Registrar.—(1) In all proceedings before

the Registrar under this Act,—

(i) the Registrar shall have all the powers of a civil court for the

purposes of receiving evidence, administering oaths, enforcing

attendance of witnesses, compelling discovery and production of

documents, issuing commissions for examination of witness and

granting a certificate of contested validity; and

(ii) evidence shall be given by affidavit, provided that the Registrar

may, if he thinks fit, take oral evidence in lieu of or in addition to

such evidence by affidavit.

(2) The Registrar shall not exercise any powers vested in him under

this Act or the rules made thereunder adversely to any party duly appearing

before him, without giving such party an opportunity of being heard.

50. Appeal against decision of the Registrar.—(1) Save as otherwise

expressly provided in this Act, an appeal shall lie, within the prescribed period,

PART I] THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 167

against any decision of the Registrar under this Act or rules made thereunder to

the High Court having jurisdiction:

Provided that if any suit or other proceedings concerning the

geographical indication in question is pending before an IP Tribunal, the appeal

shall lie to the High Court within whose jurisdiction that IP Tribunal is situated.

(2) Subject to the provision of this Act and of rules made thereunder,

the provisions of the Code of Civil Procedure, 1908 (Act V of 1908), shall apply

to appeal before the High Court.

51. Application of certain provisions of the Trade Marks Ordinance

2001 (XIX of 2001), including provisions in relation to importation of

infringing goods, material or articles.—The provisions of sections 52 to 68,

101, 104,113, 119,126 of the Trade Marks Ordinance 2001(XIX of 2001) shall

have effect to proceedings under this Act, in relation to all such matters referred

to and provided therein as they have effect in relation to similar matters under

the said Ordinance with respect to goods, except that references to the

Ordinance, trademark, Trademarks Registry and district court they shall be

deemed to be a reference to this Act, geographical indication, Geographical

Indications Registry and IP Tribunal respectively.

52. Adaptation of classification of goods.—For the purposes of this

Act, the Registrar shall use prescribed classifications, as revised or amended

from time to time.

53. Revocation.—Any interested person may request the Registrar

within twelve months of registration of an authorized user of geographical

indication; or the High Court at any time after registration of an authorized user

to revoke the registration of a geographical indication on the grounds provided

under section 8:

Provided that if any suit or other proceedings concerning the same

geographical indication are pending before an IP Tribunal, the application shall

be made to the High Court within whose jurisdiction that IP Tribunal is located.

54. Power of fee setting and collection.—The concerned Division

shall prescribe a schedule of fee and charges for services rendered to the

applicants and the public or as otherwise required under this Act. Any fee

collected under this Act or the rules shall be deposited in the name of Director

General IPO as demand draft or as may be prescribed.

55. Power to make rules.—The concerned Division shall make rules,

by notification in the official Gazette.

168 THE GAZETTE OF PAKISTAN, EXTRA., MARCH 31, 2020 [PART I

56. Registrar and other officers not compellable to produce

register.—The Registrar or any officer of the Registry shall not, in any legal

proceedings to which he is not a party, be compellable to produce the register or

any other document in his custody, the contents of which can be proved by the

production of a certified copy issued under the Act or to appear as a witness to

prove the matters therein recorded unless by order of the IP Tribunal made for

special cause.

57. Power to remove difficulties.—If any difficulty arises in giving

effect to the provisions of this Act, the Federal Government may, by notification

in the official Gazette, make such provisions not inconsistent with the provisions

of this Act as may appear to be necessary for removing the difficulty.

58. Repeal and savings.—(1) Clause (xix) of section 2 of the Trade

Marks Ordinance, 2001(XIX of 2001) is hereby repealed.

(2) On the commencement of this Act any geographical indication

registered under the Trade Marks Ordinance, 2001(XIX of 2001), shall

automatically stand repealed and a fresh registration process under this Act shall

require to be initiated. A non-exhaustive indicative list of prospective

geographical indications of Islamic Republic of Pakistan is provided for fresh

registration process in the Schedule of the Act.

TAHIR HUSSAIN,

Secretary.

PRINTED BY THE MANAGER, PRINTING CORPORATION OF PAKISTAN PRESS, ISLAMABAD.

PUBLISHED BY THE DEPUTY CONTROLLER, STATIONERY AND FORMS, UNIVERSITY ROAD, KARACHI.