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Trademarks in Pakistan

TRADEMARKS FILING AND PROSECUTION 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.

Trademark in Pakistan
Relevant OfficeIntellectual Property Organization of Pakistan
  Law in ForceTrade Marks Ordinance No. XIX of 2001
Nice ClassificationYes (Ninth Edition)
Paris ConventionYes
Madrid ProtocolYes
Multi-Class SystemNO
      Document(s) required for filing a trademark applicationA simply executed and notarized Power of Attorney   (The aforementioned document can be filed at a later stage also)
Prosecution ProcessFilingPublication of mark in the   Trade Marks Journal   Opposition period (two months from the publication date)Registration   Renewal
Registration Term10 years from the date of registration
  Renewal Term10 years from the date of previous registration
            Cancellation ProceedingsIf 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

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

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- Pakistan

In Pakistan Trademark applications can be filed in two categories:

  • Ordinary Applications
  • Convention Application (claiming priority from a convention country)

Ordinary Trademark Applications

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 / Convention Trademark Applications

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.

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 and 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 refusal:

Relative Grounds Refusal of Trademark:

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 Trademark:

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- 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- 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.

Trademark Registration & Renewal- 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

Trademark Prosecution Flowchart in Pakistan

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Trademark in Pakistan FAQs

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 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 PAKISTAN

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

TRADEMARK FLOWCHART PAKISTAN

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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

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 PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

TRADEMARK FLOWCHART PAKISTAN

For   more   information   on   trademark   application   in   Pakistan   please   click   here info@ssrana.com

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 PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

TRADEMARK FLOWCHART PAKISTAN

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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 PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

TRADEMARK FLOWCHART PAKISTAN

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Trademark Filing Procedure in Pakistan

The procedure for filing a Trademark in Pakistan is as follows:

  1. Filling a Trademark in Pakistan – A trademark application in Pakistan can be filed for a single 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.
  2. 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 3 months to 1 year 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:

a.    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.

b. 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 FLOWCHART PAKISTAN

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

For more information on trademark filing procedure in Pakistan, please click here info@ssrana.com

Trademark Prosecution Flowchart in Pakistan

trademark-prosecution-flowchart-in-pakistan

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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Procedure for Trademark Opposition in Pakistan

Once a trademark is published in the Pakistan Trademarks Journal, any person can file an opposition against registration of the said trademark in Pakistan 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 against registration of a trademark in Pakistan can be extended by a maximum period of 2 months upon filling a specified request extension of time along with the prescribed fee, if made before the expiry of the statutory period of 2 months.

A trademark application can be opposed in Pakistan on relative and absolute grounds under Section 17 and 19 of the Trade Marks Ordinance, 2001.

Once an opposition is filed against a trademark in Pakistan, a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counterstatement within 01 month of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.

The decision of the Registrar made in the opposition proceedings can be challenged by the aggrieved person by filing an appeal before the High Court. In the absences of an opposition, a trademark is registered, and the certificate of registration is issued.

TRADEMARK OPPOSITION FLOWCHART PAKISTAN

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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trademark-opposition-flowchart-pakistan

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How to Register a trademark in Pakistan?

To register a trademark in Pakistan, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition  against  the said trademark was  filed  but  was  decided in favor  of  the applicant. The trademark will then be registered for a period of 10 years from the date of filing of the application in Pakistan and the registration certificate is issued.

Once a trademark is registered in Pakistan , then the insignia ® can be used with the mark.

The Pakistan Trade Marks Ordinance also provides that if a registered trademark is not used for a continuous period of five years from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non use.

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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How to Renew a Trademark in Pakistan?

The procedure for filing a renewal for a trademark in Pakistan  is  as  follows: Request to renew a trademark in Pakistan can be filed within six months before the expiry of the registration / renewal term if accompanied by the requisite renewal fees on the prescribed form.

A trademark can be renewed in Pakistan from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.

How to restore a trademark in Pakistan/Restoration of a trademark in Pakistan:

The  procedure  for  filing  for  restoration  of  a  trademark  in  Pakistan  is  as  follows:

If a trademark has been removed from the Register on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark after six months from the expiration of the last registration of the mark.

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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On What Grounds can a Registered Trademark Be Removed in Pakistan?

Procedure for Removal of a Registered Trademark in Pakistan on grounds of non-use:

Section 73 of the Pakistan Trade Marks Ordinance provides for the removal of the trademark from the register of trademarks on the ground of continuous non-use of the mark for a period of 5 years from the date of the issuance of the registration certificate.

On What Grounds Can An Application for Rectification of Trademark Be Filed Pakistan?

Procedure for filing an application for Rectification of a Trademark in Pakistan:

Section 96 of the Pakistan Trade Marks Ordinance provides for the rectification of a trademark in Pakistan in the case of contravention or failure to observe a condition entered in the registry in relation thereto on an application made by an aggrieved person.

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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Details regarding the Trademark forms and Trademark Filings fees can be accessed at the following link:

Pakistan Filing Fee and Forms  

TRADEMARK PROTECTION PAKISTAN

PAKISTAN TRADEMARKS ORDINANCE

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The first statutory law related to trademark in Pakistan was the Trade Marks Act, 1940 which introduced a machinery for the registration and statutory protection of Trade Marks in Pakistan.

This Act of 1940 was replaced by the Trade Marks Ordinance, 2001 was promulgated to amend and consolidate the law relating to trade marks and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use       of       fraudulent       marks,       and       for       matters       ancillary       thereto.

Details regarding the Pakistan Trademarks Ordinance, 2001 and Trade Marks Act, 1940 can be accessed at the following link: Pakistan Trademark Ordinance.

TRADEMARK PROTECTION PAKISTAN

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What marks are well known in Pakistan?

What is the procedure for a mark being recognized as well known in Pakistan?

The  Intellectual  Property  Organization,  Pakistan  recognizes  well  known  trademarks  in Pakistan  on  the  basis  of  their  international,  national  and  cross  border  reputation.

A Well-known trademark in Pakistan is a mark which has become well known to the substantial segment of the public, which uses it’s goods and services, and use of such mark in relation to other goods and services is likely to be taken as connection between the two.

TRADEMARK PROTECTION PAKISTAN

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What marks are not registrable in Pakistan? What is not registrable as a trademark in Pakistan?

The trademarks which are not registrable in Pakistan are the following:

  • Trademark which is likely to cause deception or confusion;
  • Trademark that is likely to hurt religious sentiments of any community;
  • Trademark that comprises any scandalous or obscene matter;
  • Trademark which is contrary to any law, for the time being in force, or morality;
  • Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
  • Name of the chemical compound declared  by World Health Organisation as an International non-proprietary name

TRADEMARK PROTECTION PAKISTAN

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How to protect a trademark in Pakistan?

Remedies available for protection of trademarks in Pakistan are:

Civil Action-

The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.

Criminal  Proceedings-

Criminal complaints can also be filed against persons who have infringed the trademark in Pakistan in addition to a civil action.

Administrative  Remedies-

Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Pakistan. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.

Border Measures-

The Pakistan Customs Act 1969 confers power on the Central Government to prohibit importation or exportation of goods. In exercise of the powers conferred by that section, the Central Government has prohibited the import of the goods that have applied a false trade- mark or a false trade description. The Trade Marks Ordinance provides that the proprietor or a licensee of a registered trademark may give notice in writing to the Collector of Customs to prohibit the importation of any goods if the import of the said goods constitutes infringement under the Ordinance.

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It may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

Yes, if a registered trademark in Pakistan has not been used for a continuous period of five years, it can be removed on an application made in prescribed manner by filing request before trademark Office in Pakistan.

An action for passing off lies for infringement of an unregistered trademark.

Yes, the examination includes whether the application has been filed in time and whether the same has been filed by the proprietor of the mark on record.

10 Years and is renewal every 10years.

3 Years from the date of infringement.

In case of a registered trademark, an action for infringement lies where the aggrieved can sought civil and criminal reliefs.

The procedure for registrating a trademark in Pakistan is as follows:-

Trademark application filing in Pakistan- as per the procedure specified in the Trade Marks Ordinance.

Examination Report by the Pakistan Registry- an examination report is usually issued within three months to one year depending on the back log of the registry.

Reply to examination report- a reply to an examination report has to be filed. If the registry is satisfied with the reply, the application shall proceed for advertisement in the Trademarks Journal.

Advertisement in Pakistan Trademarks Journal- an application is advertised in the Trademarks Journal so as to invite the public for filing an opposition for the mark. Opposition- the time period to file a notice of opposition is two months from the date the Trademarks Journal in which the mark has been advertised, has been made available to the public. This time period is extendible by two month upon filing the request extension of time in the prescribed format. Registration- where no opposition is filed within the specified time, the application shall proceed to registration.

Intellectual Property Office, Pakistan.

A mark shall not be registered as a trademark if-

  1. the mark is likely to deceive the public or cause confusion.
  2. the matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of Pakistan.
  3. it contains or comprises of scandalous or obscene matter.
  4. No work declared by World Health Organization as international non-proprietary name.

A trademark can be refused registration in Pakistan under the relative and absolute grounds:

Relative Grounds of Refusal for Registering a Trademark Pakistan:

A trademark is refused registration under this category if the trademark is: a. Similar or identical to an earlier trademark for the same or similar goods/ services. b. Similar or identical to an earlier trademark in respect of different goods/ services.

Absolute Grounds of Refusal for Registering a Trademark Pakistan: A trademark is refused registration under this category if the trademark is: 1. Devoid of any distinctive character. 2. 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 foods or rendering of the service or other characteristics of the goods or services.

No, multi-class trademark applications cannot be filed in Pakistan.

A trademark search can be conducted Pakistan by filing form tm-55 in with Intellectual Property Office, Pakistan.

Yes, a statement of use including whether the mark has been in use or is proposed to be used is required to be filed at the time of filing a trademark in Pakistan.

No, use of mark prior to registration is not mandatory In Pakistan. Trademarks that are proposed to be used can also be registered Pakistan.

Yes, foreign proprietors can apply for registration of a trademark in Pakistan. The Pakistan Trademark Ordinance is TRIPS obedient and provides for protection of well-known trademarks and recognizes trans-border reputation.

An application for registration of a trademark in Pakistan may be made by any person claiming to be the proprietor/owner of a mark for those goods and services for which he is using or intends to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark.

A collective trademark or collective mark is a trademark owned by an organization (such as an association), whose members use it to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Example-the “CA” device used by the Institute of Chartered Accountants.

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

No, it is not possible to register such a trademark.

Yes, sound be registered as a trademark in Pakistan. However, smell cannot be registered as a trade mark in Pakistan

No as per the Pakistan trademark Ordinance 3-D marks or Three Dimensional marks cannot be registered in Pakistan.

Following marks can be registered as a trademark in Pakistan under the Pakistan Trade Marks Law:-

  • Names
  • Invented / Coined Words
  • Numerals
  • Letters
  • Devices
  • Combination of colors
  • Shape of goods
  • Slogans
  • Signature
  • Sound Marks

Only the proprietor of a registered trademark can use the symbol ® in Pakistan. Using the symbol ® unless the mark has been registered is unlawful in Pakistan. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM in Pakistan

A trademark is designated by the following:

  • ™ (for an unregistered trademark, that is, a mark used to promote or brand goods);
  • ® (for a registered trademark)
  • Identifies the origin of goods & services.
  • Advertises goods & services.
  • Guards the commercial goodwill of a trader.
  • Protects the innocent public from buying goods of second-rate quality.

No, registration of a Trademark is not mandatory in Pakistan but it is advisable to do so.

A good trademark should possess the following qualities-

  • Easy to pronounce, spell, remember.
  • Should be distinctive and should not have deceptive similarity.
  • Should not be descriptive.
  • Laudatory word/words such as best, perfect etc to be avoided.

A trademark is a distinctive sign or indicator used by an individual or an organization and   is applied to the articles of commerce so as to identify the products of one trader from those of another. Simply, a trademark is a warden of a trader.

Remedies available for protection of trademarks in Pakistan are:

Civil Action- The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.

Criminal Proceedings- Criminal complaints can also be filed against persons who have infringed the trademark in Pakistan in addition to a civil action.

Administrative Remedies- Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Pakistan. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.

Border Measures- The Pakistan Customs Act 1969 confers power on the Central Government to prohibit importation or exportation of goods. In exercise of the powers conferred by that section, the Central Government has prohibited the import of the goods that have applied a false trade- mark or a false trade description. The Trade Marks Ordinance provides that the proprietor or a licensee of a registered trademark may give notice in writing to the Collector of Customs to prohibit the importation of any goods if the import of the said goods constitutes infringement under the Ordinance.

The trademarks which are not registrable in Pakistan are the following:

  • Trademark which is likely to cause deception or confusion;
  • Trademark that is likely to hurt religious sentiments of any community;
  • Trademark that comprises any scandalous or obscene matter;
  • Trademark which is contrary to any law, for the time being in force, or morality;
  • Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
  • Name of the chemical compound declared  by World Health Organisation as an International non-proprietary name

The  Intellectual  Property  Organization,  Pakistan  recognizes  well  known  trademarks  in Pakistan  on  the  basis  of  their  international,  national  and  cross  border  reputation.

A Well-known trademark in Pakistan is a mark which has become well known to the substantial segment of the public, which uses it’s goods and services, and use of such mark in relation to other goods and services is likely to be taken as connection between the two.

The first statutory law related to trademark in Pakistan was the Trade Marks Act, 1940 which introduced a machinery for the registration and statutory protection of Trade Marks in Pakistan.

This Act of 1940 was replaced by the Trade Marks Ordinance, 2001 was promulgated to amend and consolidate the law relating to trade marks and unfair competition and to provide for registration and better protection of trade marks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto.

Section 96 of the Pakistan Trade Marks Ordinance provides for the rectification of a trademark in Pakistan in the case of contravention or failure to observe a condition entered in the registry in relation thereto on an application made by an aggrieved person.

Section 73 of the Pakistan Trade Marks Ordinance provides for the removal of the trademark from the register of trademarks on the ground of continuous non-use of the mark for a period of 5years from the date of the issuance of the registration certificate.

The  procedure  for  filing  for  restoration  of  a  trademark  in  Pakistan  is  as  follows:

If a trademark has been removed from the Register on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark after six months from the expiration of the last registration of the mark.

The procedure for filing a renewal for a trademark in Pakistan is as follows: Request to renew a trademark in Pakistan can be filed within six months before the expiry of the registration / renewal term if accompanied by the requisite renewal fees on the prescribed form.

A trademark can be renewed in Pakistan from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.

To register a trademark in Pakistan, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition  against  the said trademark was  filed  but  was  decided in favor  of  the applicant. The trademark will then be registered for a period of 10 years from the date of filing of the application in Pakistan and the registration certificate is issued.

Once a trademark is registered in Pakistan, then the insignia ® can be used with the mark.

The Pakistan Trade Marks Ordinance also provides that if a registered trademark is not used for a continuous period of five years from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non use.

Once a trademark is published in the Pakistan Trademarks Journal, any person can file an opposition against registration of the said trademark in Pakistan 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 against registration of a trademark in Pakistan can be extended by a maximum period of 2 months upon filling a specified request extension of time along with the prescribed fee, if made before the expiry of the statutory period of 2 months.

A trademark application can be opposed in Pakistan on relative and absolute grounds under Section 17 and 19 of the Trade Marks Ordinance, 2001.

Once an opposition is filed against a trademark in Pakistan, a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counterstatement within 01 month of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter. The decision of the Registrar made in the opposition proceedings can be challenged by the aggrieved person by filing an appeal before the High Court. In the absences of an opposition, a trademark is registered, and the certificate of registration is issued.

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.

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.

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.

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 refusal:

Relative Grounds for Refusal 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 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.

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.

A trademark application in Pakistan can be filed for a single 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.

The procedure for filing a Trademark in Pakistan is as follows:

  1. Filling a Trademark in Pakistan
  2. Official Examination of a Trademark in Pakistan / Issuance of Office Action
  3. Acceptance/Refusal of Trademark application
  4. Publication / Advertisement of a Trademark in Pakistan
  5. Opposition of Published Trademark in Pakistan
  6. Registration of a Trademark 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.

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.

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 RegistryÔÇÖs Website, Pakistan at the following link: Pakistan Trademark Registry

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.

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.

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.

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.

In Pakistan Trademark applications can be filed in two categories:

  • Ordinary Applications
  • Convention Application (claiming priority from a convention country)

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 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.

Trademark searches can be classified into following categories:

  1. Word Search
  2. Device Search

Trademark searches in Pakistan can be conducted for word mark, numerals, labels and device mark. Device mark searches can be conducted through Vienna code.

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
Relevant Office Intellectual Property Organization of Pakistan
Law in Force Trade Marks Ordinance No. XIX of 2001
Nice Classification Yes (Ninth Edition)
Paris Convention Yes
Madrid Protocol NO
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.

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.

Trademarks in Pakistan may be designated by the following symbols:

Ôäó (for an unregistered trade mark, that is, a mark used to promote or brand goods)

Ôäá (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.

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.

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