Registered Designs Ordinance, 2000.
MINISTRY OF LAW, JUSTICE, HUMAN RIGHTS AND
(Law, Justice and Human Rights Division)
Islamabad, the 7 September 2000
No. F. 2(1)/2000-Pub.-The following Ordinance made by the President is hereby published for general information:
ORDINANCE NO. XLV OF 2000 AN ORDINANE
to repeal and to re-enact the law relating to industrial designs.
WHEREAS it is expedient to repeal and re-enact the law relating to protection of industrial designs, and for matters ancillary thereto or connected therewith;
AND WHEREAS, the National Assembly and the Senate stand suspended in pursuance of the Proclamation of Emergency of the fourteenth day of October, 1999 and the Provisional Constitution Order No. 1 of 1999:
AND WHEREAS the President is satisfied that circumstances exist which render it necessary to take immediate action;
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of fourteenth day-of October, 1999, and Provisional Constitution Order No. 1 of 1999, as well as Order No.9 of 1999, and in exercise of all powers enabling him in that behalf, the Preside the Islamic Republic of Pakistan is pleased to make and promulgate the following Ordinance:
CHAPTER I – PRELIMINARY
- Short title, extent and commencement.-
- (1) This Ordinance may be called the Registered Designs Ordinance, 2000.
- (2) It extends to the whole of Pakistan.
- (3) It shall come into force at once.
In this Ordinance, unless there is anything repugnant in the subject or contexts,-
- (a) “article” means any article of manufacture and includes an part of an article if made and sold separately;
- (b) “assignee” includes the legal representative of a decease assignee, and any references to the assignee of any person include references to the assignee of the legal representative or assignee of that person;
- (c) “Convention country” means a country declared as such under section 9;
- (d) “registration of design” means the right to prevent third parties from applying a design to an article and from making, importing, selling, hiring or offering for sale or hire any article in respect of which a design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied and from making anything enabling such article to be made as aforesaid, except with the license or written consent: of the registered proprietor;
- (e) “design” means features of shape, configuration, pattern ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by technical and functional considerations;
- (f) “Patent Office” means the Patent Office established, or deemed to have been established under section 4,
- (g) “prescribed” means prescribed by rules;
- (h) “proprietor or creator of a design means,-
- (i) where the author or creator of the design, for good consideration executes the work for some other person, the person for whom the design is so executed,
- (ii) where a design or the right to apply a design to an article becomes vested, whether by assignment, transmission or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, in respect and to the extent in and to which the design or right has been so vested, that other person or, as the case may be, the original proprietor and that other person;
- (iii) if and to the extent to which two or more persons have created the same design independently of each other, the person whose application has the earliest filing date or, if priority is claimed, the earliest validity claimed priority date shall have the right to the registration of industrial design, as long as the said application is not withdrawn, .abandoned or rejected; and
- (iv) in any other case, the author or creator of the design as may be assigned or as may be transferred by succession;
- (i) “register” means the register of designs kept in pursuance of section 16;
- (j) “registered proprietor or agent”, in respect of a design, means the person for the time being entered in the register of designs as proprietor of the design;
- (k) “Registrar” means the Controller of Patents and Designs appointed under section 3 of the Patents Ordinance, 2000.
- (I) “rules” means rules made under this Ordinance; and
- (m) “set of articles” means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied and
- (i) any reference in this ordinance to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set; and
- (ii) any question arising under this Ordinance whether a number of articles constitute a set of articles shall be determined by the Registrar; and, notwithstanding anything contained in this Ordinance, any determination of the Registrar under this sub-section shall be final.
CHAPTER II –
REGISTRABLE DESIGNS AND PROCEEDINGS FOR
- Registrable designs.-
- (1) A design may, upon application made by the person claiming to be the proprietor, be registered under this Ordinance in respect of any article or the set of articles specified in the application.
- (2) Subject to the provisions of this Ordinance, a design shall not be. registered unless it is new or original and, in particular, shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered in Pakistan or published anywhere in the world in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in The trade.
- Explanation – Designs are not new or original if they do not significantly differ from known designs or combination of design features.
- (3) For the purposes of novelty, any disclosure to the public of the industrial design shall not be taken into consideration if it occurred within twelve months preceding the filing date or, where applicable, the priority date, of the application and if it was-by-reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.
- (4) The Federal Government may make rules to provide for excluding from registration under this Ordinance designs that are contrary to public order or morality
- Establishment of Patent Office.-
There shall be established an office to be called the Patent Office and, until a Patent Office is established under this section, the Patent Office functioning under the Patents and Designs Act, 1911(11 of 1911), shall continue to function and shall be deemed to have been established under this Ordinance
- Proceedings for registration.-
- (1) An application for the registration of a design shall be in the prescribed form and shall be filed at the Paten Office in the prescribed manner.
- (2) For the purpose of deciding whether a design is new or original the Registrar may make such inquiries, if any, as he thinks fit.
- (3) The Registrar may refuse any application for the registration of design or may register the design in pursuance of the application subject to such modifications, if any, as he thinks.
- (4) An application which, owing to any default or neglect on the part the applicant, has not been completed so as to enable registration to be effected With the prescribed time shall be deemed to be abandoned.
- (5) Except as otherwise expressly provided in this Ordinance, design when registered shall be registered as of the date on which the application registration was made, or such other date, whether earlier or later than that date, as the Registrar may in any particular direct:
- Provided that no proceedings shall be taken in respect- of any infringement committed before the date on which the certificate of registration of the design under this Ordinance is issued.
- (6) An appeal shall lie to the High Court from any decision of the Registrar under sub section (3).
- Registration of same design in respect of other articles, etc.-
(1) Where the registered proprietor of a design registered in respect of any article makes an application
- (a) for registration in respect of one or more other articles of the registered design; or
- (b) for registration in respect of the same or one or more other articles of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,
the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design:
Provided that the period of registration of a design registered by virtue of this section shall not extend beyond the expiration of the original and arty extended period of registration in the original registered design
(2) Where any person makes an application for the registration of a design in respect of any article and either-
- (a) that design has been previously registered by another person in respect of some other article; or
- (b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identify thereof,
then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.
CHAPTER III –
EFFECT OF REGISTRATION, ETC.
- Registration of designs:-
- (1) The registration of a design under this Ordinance shall give to the registered proprietor the registration in the registered design for a period often years from the date of registration.
- (2) The owner of a registered design shall have the right to exclude third parties, not having his consent, from making, selling or working articles bearing or embodying a design which is a copy of the-registered design when such acts are undertaken for commercial purposes.
- (3) The Registrar shall extend the period of registration for a second period of ten years from the expiration of the original period and for a third period of ten years from the expiration of the second period if an application for extension of the period of registration for the second or third period is made in the prescribed form before the expiration of the original period-or the second period, as the case may be, and if the prescribed fee is paid before the expiration of the relevant period or if such application is made and the said fee is paid within such further period, not exceeding six months, as may be, specified in a request made to the Registrar and accompanied by the prescribed additional fee.
- (4) The owner of a registered industrial design may surrender it by written declaration to the Registrar who shall record the surrender in the Register and publish it. The surrender shall have effect on the date it is thus recorded.
- (1) If any person infringes a registered proprietor’s right, the registered proprietor may bring a suit against him for the recovery of damages and for an injunction against the continuation of the infringement:
- Provided that, for the purposes of grant of a temporary injunction, the registered proprietor must show that he has a prima facie case and that his design is valid and that it has been infringed by the defendant.
- (2) When the Court makes a decree in a suit under this Ordinance, it shall send a copy of the decree to the Registrar who shall cause an entry thereof to be made in the register.
- Exemption of innocent infringer from liability for damages.-
In proceedings for the infringement of right in a registered design, damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the marking of an article with word “registered” or any abbreviation thereof, or any word or words expressing or implying :that the design applied to the article has been registered, unless the number of the design accompanied the word or words or the abbreviation in question.
Provided that nothing in this section shall affect the power of the Court to grant injunction in any proceedings for infringement of copyright in a registered design.
- Cancellation of registration.-
- (1) Any person interested may by a petition made at any time after the registration of a design, to the High Court or within two years of the registration of a design to the Registrar, seek cancellation of the registration of a design on the following grounds, namely:-
- (a) the industrial design should not have been registered because the specific substantive requirements prescribed in this Ordinance have not been fulfilled;
- (b) the industrial design is contrary to public order or morality; or
- (c) person is whose name the industrial design is registered has no right to it.
- (2) An appeal shall lie to the High Court from any order of the Registrar under sub section (1), and the Registrar may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.