Trademarks in Pakistan
A trademark, trade mark, or trade-mark 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 trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
Trademarks in Pakistan may be designated by the following symbols:
™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
℠ (for an unregistered service mark, that is, a mark used to promote or brand services)
® (for a registered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
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 used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.
|Relevant Office||Intellectual Property Organization of Pakistan|
|Law in Force||Trade Marks Ordinance No. XIX of 2001|
|Nice Classification||Yes (Ninth Edition)|
|Multi – Class System||NO|
|Document(s) required for filing a trade mark application||A simply executed Power of Attorney (The aforementioned document can be filed at a later stage also)|
|Prosecution Process||FilingPublication of mark in the Trade Marks Journal Opposition period (two months from the publication date)Registration Renewal|
|Registration Term||10 years from the date of registration|
|Renewal Term||10 years from the date of previous registration|
|Cancellation Proceedings||If the trademark has not been used within 5 years from the date of issuance of registration certificate, it may be subject to cancellation upon request of any interested party. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.|
Trademark Searches in Pakistan
A trademark search in Pakistan can be for both word and device marks. It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark. Although, search is not mandatory for filing the application, it is advisable to conduct a preliminary search for the proposed trade mark before filing the application in order to avoid any objection and opposition with respect to mark later on.
Trademark searches in Pakistan can be conducted for word mark, numerals, labels and device mark. Device mark searches can be conducted through Vienna code.
Trademark searches can be classified into following categories:
- Word Search
- Device Search
Word mark Search in Pakistan
Trademark word search edition of Pakistan follows the nice classification and trade mark can be filed for goods in class 1-34 and services in class 35-45. Trademark searches in Pakistan can be conducted for the desired class and associated classes.
It is advisable to conduct comprehensive trademark clearance search in Pakistan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Pakistan.
Device Mark Search in Pakistan
It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Pakistan can be conducted amongst the marks filed and registered as per the Vienna code classification.
Trademark Applications in Pakistan
Filing a Trademark application in Pakistan
In Pakistan Trademark applications can be filed in two categories:
- Ordinary Applications
- Convention Application (claiming priority from a convention country)
Ordinary Trademark Applications In Pakistan
Ordinary trademark applications filed in Pakistan are applications without claiming any priority. Ordinarily a trademark in Pakistan can be filed (on form TM-1(single class application) only. It is pertinent to mention that multi class trade mark applications cannot be filed in Pakistan. However, the Trade Marks Ordinance in Pakistan also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority Trademark Applications in Pakistan / Convention Trademark Applications Pakistan
A priority trademark application should be filed in Pakistan within six months after the date on which the trademark application was made in the convention country. For claiming priority in Pakistan from a convention application, a certified copy of the priority documents needs to be filed within 3 months from the date of filing of the priority (convention) application in Pakistan.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Pakistan within six months of after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Ordinance, will be registered as of the date as which the application was made in the Convention Country and that date shall be deemed for the purpose of the Ordinance to be the date of registration.
Trademark Classes for Goods and Services in Pakistan
In Pakistan a trademark application can be filed in 45 classes. Classes 1 to 34 for goods and classes 35 to 45 is for service marks.
The Trade Mark Rules, 2004 were published in exercise of the powers conferred in Sub- Section (1) of Section 132 of the Ordinance, 2001 and the Rules came into effect from April 02, 2004. The Trade Mark Rules, 2004 have been amended and a notification was issued by Cabinet Division, Pakistan whereby Schedule IV was amended and the classification of
goods and services was extended to 1 to 45. Therefore, service mark applications are now being filed and prosecuted in addition service classes i.e. 43 to 45.
Trademark Filing in Pakistan
An application for registration of the trademark is to be filed with the Intellectual Property office, Karachi in the prescribed form with payment of requisite fees.
Further details regarding filing of trademark applications can be accessed on the Trademark Registry’s Website, Pakistan at the following link: Pakistan Trademark Registry
Requirements for Filing a Trademark Application in Pakistan Who Can File a Trademark Application in Pakistan
Any person who claims to be the proprietor of the trademark can file an application for the registration of its mark in respect to goods/services. It should be filed at the trademark office, Karachi.
After filing the trademark application, the same is then examined by the Trademarks Registry, Pakistan as to its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report will be issued by Trademarks Registry. To overcome the objection, it is necessary to file a response to examination report along with the supporting documents showing the marks as used.
If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the trademarks Journal. If there are no oppositions filed within 2 months or within such further period not exceeding 2 months in aggregate, from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.
Trademark registration is a long process and it takes around 18-24 months to obtain registration in case no opposition is filed by a third party.
Period of Trademark Registration in Pakistan
Once a trademark is registered in Pakistan, it is valid for a period of ten years (10 years) from the date of application. The trademark registration can then be renewed for a further period of ten years (10 years) from the date of expiration of registration or of the last renewal of the registration.
Trademark Filing Procedure in Pakistan
The procedure for filing a Trademark in Pakistan is as follows:
Filling a Trademark in Pakistan – A trademark application in Pakistan can be filed for a single class only. Multi class trade mark applications cannot be filed in Pakistan. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Pakistan within six months from the priority date.
Official Examination of a Trademark in Pakistan / Issuance of Office Action – After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report will be issued by the Registrar within 3months to 1year depending on the back log at the registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Pakistan can be refused / objected by the Registrar on relative or absolute grounds of refual:
Relative Grounds of Refusal of a Trademark in Pakistan:
A mark is similar/ identical to an earlier trademark for the same or similar goods/ services. A mark which is similar/identical to an earlier trademark in respect of different goods/services.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.
Absolute Grounds of Refusal of a Trademark in Pakistan:
If the trademark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of others.
If the trademark consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the goods or rendering of the service or other characteristics of the goods or services.
If the trademark consist exclusively of marks or indications which have become customary in current language or in the bona fide and established practices of the trade.
However, a trademark which may be initially refused on absolute grounds can be registered if it acquires a distinctive character as a result of extensive and continuous use by virtue thereof, it being associated with the trademark owner alone. Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within one month. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing. When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal, which is published and available on Registry’s website..
Publication / Advertisement of a Trademark in Pakistan – After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark.
Opposition of Published Trademark in Pakistan – On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 2 months from the date the Trademarks Journal is made available to the public. The time period to file the notice of opposition can be extended by a maximum period of 2 month upon filling a specified request for extension of time along with the prescribed fee, made before the expiry of the statutory period of 2 months.
Registration & Renewal of a Trademark in Pakistan – The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non- renewal. Each renewal term is for a period of 10 years.
Trademark Prosecution Flowchart in Pakistan
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