IP Laws

TRADE MARK REGISTRATION IN PAKISTAN

Before understanding Trademark registration process in Pakistan, it is important to understand what a trademark actually is and what rights it bestow? A trade mark or trade name is a distinctive sign or indicator used by an individual =, business organization or other legal entity to identify that the products or services to consumers with which the trade mark appears originate from a unique source and to distinguish its products or services from those of other entities.

As per the rest of the world in Pakistan, trade mark is a type of intellectual property and thus registrable and typically a name, word, phrase, logo, symbol, design, image or a combination of these elements. The owner of a registered trademark commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Therefore trademark registration is an important step towards safeguarding the brand name.

The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is sued in relation to services rather than products, it may sometimes be called a service mark, service trademark are also registerable in Pakistan.

The essential function of trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off.

It should be noted that trademark rights generally arise out of  the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.

CLASSIFICATION OF TRADEMARKS IN THE WORLD AND PAKISTAN

Different goods and services have been classified by the International Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services) also known as the Geneva Convention, Pakistan follow this system of Trademark Classification and it is also a signatory   to Geneva Accord. The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify Classification systems around the world. Registration of Trade mark in any member state of Geneva Convention also gives priority registration rights to the trademark applicant.

TRADEMARK LAW AND LEGISLATION REGULATING PAKISTAN TRADEMARK REGISTRY AN DPROTECTION  

Trademark Registry is working under the administrative control of Intellectual Property Organisation of Pakistan. The main function of registry is to grant protection of trademarks relating to both goods and services through registration under the Trade Mark Ordinance, 2001 and Trade Mark Rules, 2004. The Trademark Registry works like a civil court. The Registrar of Trade Marks hears and decides the cases relating to registrations, post registration,  opposition and rectification matters.

 

PROCESS TO REGISTER TRADEMARK IN PAKISTAN:

  1. Pakistan Search before filing of Trademark Application
  2. Filing of Trademark Application in Pakistan IPO
  3. Preliminary Examination by Register of Trademarks Pakistan
  4. Hearing of Applicant/Lawyer against objects of Registrar
  5. Final order for publication in Trademark Journal of Pakistan
  6. Printing in Trademarks Journal of Pakistan
  7. Opposition Procedure. Request to oppose trademark application in Pakistan
  8. Hearings of opposition and decision by Registrar of Trademarks Pakistan
  9. Issuance of Registration Certificate by Registrar of Trademarks Pakistan

OTHER MATTERS CONCERNING TRADEMARKS

  1. Renewal of Trademark Registration
  2. Post Registration matters which may include Trademark Litigation in Pakistan Courts or possible Trademark Infringements
  3. Pakistan Rectification Procedure in case of error/change in Trademark Logo

TRADEMARK REGISTRATION REQUIREMENTS IN PAKISTAN

  1. Trademark application has to be filed before the Trademark Registry by a local agent. A notarized power of attorney is necessary. Foreign applicants do not need a domestic registration.
  2. Trademark Process Time in Pakistan: The application process includes a formal examination of distinctiveness and a search for prior trademarks. It takes approximately two years from first filing to registration. Before registration the trademark application is published in the monthly “Trademarks Journal”. The opposition period is two months from publication date of the application.
  3. Trademark Duration time is Pakistan: A trademark registration in Pakistan is valid for 10 years and starts with registration date. The registration is renewable for period of 10 years.
  4. Pakistan National Trademark Registration: If you just want to register your Trademark in Pakistan, it is sufficient to apply for a national registration.

Other requirements are:

  1. Trademark Search Pakistan
  2. Pakistan Trademark Application
  3. Representation before trademarks registration in pre and pro examination hearings
  4. Trademark Publication Pakistan in Trademark Journal
  5. Procuring copy of Pakistan Trademark Journal
  6. Trademark Registration and Procuring Trademark Certificate from IPO Pakistan
  7. Trademark Renewal in Pakistan
  8. Trademark Assignment and litigation in Pakistan
  9. Trademark Enforcement and Protection in Pakistan
  10. Complete Trademark Application handling upto Registration and possible Infringement Litigation

TRADEMARK REGISTRATION & ADVICE

  1. Advising on selection and suitability of marks for registration
  2. Advising on paper use of trademark in packaging, labeling, advertising in print and electronic media
  3. Searching prior registrations and prosecution to registration
  4. Conducting opposition proceedings
  5. Making renewal, assignment or modification of registered trademarks
  6. Advising on rights in trade names, passing off, unfair competition, unregistered trademark rights acquired through use
  7. Negotiating and drafting agreements for the purchase, licensing or user agreements
  8. Advising in relation to infringing use
  9. Conducting consultation, investigations, obtaining evidence concerning the infringement of trademark, requesting for, and
  10. Taking deregistration actions against rival marks that have been improperly registered

What is trademark’

The Trademark Ordinance, 2001 defines  a trademark “any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign can include a letter, word, name, device, personal name, signature, figurative element, numeral, brand, heading, label, ticket, aspect of packing, shape, color, sound or any combination of these features.

Why to register a trademark

If  a trademark isn’t registered and infringement is suspected, the owner must establish by extensive evidence that as a result of its use of and reputation in the mark the other person’s use is likely to cause deception or confusion. The dispute would be dealt with under the common law action of passing off.

What is the criteria for registration

In order to get the mark registered, a trademark cannot be one that other traders need to use to promote their own goods or services, such as a directly term, geographic word or common surname. It must also be capable of distinguishing the applicant’s goods or services from those of other traders and cannot mislead the public about the nature of the goods or services.

When the trademark has infringed

In Pakistan, a registered trademark is infringed by the unauthorized use of that mark, or a mark that is substantially identical or deceptively similar to it.

In relation to any goods or services for which the trademark is registered

In relation to goods or services that are similar (unless the alleged infringer establishes the use isn’t likely to deceive or cause confusion), or

Where the relevant mark is well known in Pakistan and use (even on unrelated goods or services) indicates a connection with the owner and thereby adversely affects its interests.

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