In 1947, British India separated into the Muslim state of Pakistan and the predominantly Hindu India.
Who May Apply?
Any person or entity can file an application for registration. However, to be entitled to registration, the application relied upon must be the first in a convention country for the same mark and for the same goods or services.
What Can Be Registered?
To be eligible for registration, a mark must be represented graphically and should be capable of distinguishing goods or services of one from the others.
What Cannot Be Registered?
Marks may not be registered if any of the following apply: (1) Descriptive Marks. The following marks may not be registered:
(a) marks which are incapable of distinguishing goods or services of one undertaking from those of other undertakings;
(b) trademarks which are devoid of any distinctive character;
(c) trademarks which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
(d) trademarks which consist exclusively of marks or indications which have become customary in the language or in the bona fide and established practices of the trade.
However, a trademark will not be refused registration by virtue of (b), (c), or (d) above if, before the date of the application for registration, the mark has in fact acquired a distinctive character as a result of the use made of it or it is a well-known trademark.
(2) Shapes or Designs. Marks may also not be registered if they consist exclusively of:
(a) a shape which results from the nature of the goods themselves;
(b) a shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(3) Scandalous Marks. Marks may also not be registered if they consist of or contain any scandalous design, or any matter the use of which would:
(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a High Court or District Court,
(b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, per se or because of the goods or services for which it is intended to be registered; or
(c) be contrary to any law in force or morality.
(4) Bad Faith. Marks may also not be registered if the application was made in bad faith.
Marks are entitled to heightened protection as a well-known mark if they qualify under the Paris Convention and are well-known in Pakistan as being the mark of a person or entity who:
(a) is a national of a Convention country; or (b) is domiciled in, or has a real and effective industrial or commercial
establishment in, a Convention country.
It makes no difference whether or not that person carries on business or has any goodwill in Pakistan and references to the proprietor of such a mark shall be construed accordingly.
When determining whether a trademark is well-known under this Ordinance, the tribunal, without requiring registration or actual use in the form of sales of goods or services under the trademark in Pakistan, considers the following factors:
(1) the amount of Pakistan or worldwide recognition of the trademark;
(2) the degree of inherent or acquired distinctiveness of the trademark;
(3) the Pakistan or worldwide duration of the use and advertising of the trademark;
(4) the Pakistan or worldwide commercial value attributed to the trademark;
(5) the Pakistan or worldwide geographical scope of the use and advertising of the trademark;
(6) the Pakistan or worldwide quality and image that the trademark has acquired; and
(7) the Pakistan or worldwide exclusivity of use and registration attained by the trademark and the presence or absence of identical or deceptively similar third- party trademarks validly registered or used in relation to identical or similar goods and services.
The owner of a trademark which is entitled to protection under the Paris Convention as a well-known trademark is entitled to restrain by injunction the use in Pakistan of a trademark or essential part of a mark that is identical or deceptively similar to the well-known trademark:
(a) in relation to similar goods or services, where the use is likely to cause confusion; or
(b) where such use causes dilution of the distinctive quality of the well-known trademark.
Rights conferred on a well-known mark are subject to the provisions of Section 81 of the Trademark and nothing in this section effects the continuation of any bona fide use of a trademark begun before the effective date of this Ordinance. Relative grounds for refusal of registration
Trademarks will not be registered if the following apply:
(1) Likelihood of Confusion-Identical marks and identical goods or services.
(a) If the mark is identical to a prior registered mark and the goods or services to which the application applies are identical to the goods or services for which the earlier trademark is registered.
(b) If the mark is identical to a prior registered mark and is to be registered for goods or services similar to those for which the earlier trademark is registered; or similar to a prior registered mark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is registered and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trademark.
(2) Dilution of a Well-Known Mark. A trademark which (a) is identical with or similar to a prior registered mark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trademark is registered, will not be registered if the earlier mark has a reputation in Pakistan and
the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
(3) Common Law. A trademark shall not be registered if its use in akistan is liable to be prevented: (a) by virtue of any law protecting an unregistered trademark or other mark used in the course of trade, particularly the law of passing off; or (b) by virtue of an earlier right other than those referred to in the
Trademark Ordinance, in particular by virtue of the law of copyright,
(4) Registration by Consent. Nothing in this section prevents the registration of a trademark if the proprietor of the earlier trademark consents to the registration.
(5) Discretion of Registrar. Where separate applications are made by different persons to be registered as proprietor respectively of marks which are identical or nearly resemble each other for the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been
determined by the High Court or a District Court.
A person does not infringe a registered trademark when he or she uses in good faith a person's name or the name of the person's place of business, so long as such use does not result in a likelihood of confusion or otherwise interfere with an existing trademark or other property right, or the name of the predecessor in business of the person or the name of the predecessor's place of business. A person also does not infringe a registered trademark when he or she uses a mark in
good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of goods or services, or the time of production of goods or of the rendering of services.
Infringement also does not occur where the person uses the trademark in good faith to indicate the intended purpose of goods-for example, as accessories or spare parts, or services-or uses the trademark for comparative advertising. The right to the use of a trademark given under Section 39 by registration is subject to any conditions or limitations entered on the Register. Such right is not deemed to be infringed by the use of any such trademark in any mode, for goods to be sold or otherwise traded in or in relation to services provided by, in any place, or for goods or services to be exported to any market, or in any other circumstances,
to which the registration does not extend by virtue of such limitations.
Where the registration of a trademark is subject to a disclaimer, a person does not infringe the trademark by using the disclaimed part of the trademark.
The following documents and information are required for filing a trademark application in Pakistan:
(1) an application for registration containing:
(a) a request for registration of a trademark;
(b) the full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the trademark;
(d) an international classification of goods or services;
(e) a representation of the mark; and
(0 the full name, address, and contact details of an agent, if the application is made by an agent on behalf of the applicant;
(2) a statement that the trademark is being used by the applicant or by another party with his or her consent, in relation to goods or services, or that he or she has a bona fide intention to use the mark; and
(3) an application fee.
An electrotype is not required; only prints or copies of the mark are required. The Registrar may refuse to admit an application if it does not contain all the particulars required.
Evaluation & Review
Applications are examined for their registrability according to Trademark Ordinance 2001 and for any possible conflict with prior registrations or applications in Pakistan. It normally takes 12 to 18 months from filing to the issuance of the results of examination. After the examination process, it normally takes 12 to 18 additional months for publication in the Official Gazette. If no opposition is filed within two months (or with extension four months in the aggregate), it takes four to six months for the issuance of a registration certificate after the payment of the registration fee.
Registrations last for 10 years from the filing date. Registrations must be renewed. At any time not earlier than six months nor later than one month before the expiration of the last registration of a trademark, the Registrar will (except where renewal has already been effected under rule 51) send to the registered proprietor a notice in the form as set out in Form 0-3 of the approaching expiration and inform him or her at the same time that the registration may be renewed in the manner described in rule 51.
The following are required for renewal:
(I) the registration number;
(2) the date; .
(3) the applicant's name and address or a copy of the last renewal certificate.
Renewals last for 10 years form the last renewal date. If when the registration expires the renewal fee has not been paid, the Registrar advertises this fact in the Journal and, if within six months of that advertisement the renewal fee along with a request for renewal in the form as set out in Form TM-12 together with the prescribed additional fee is received, the Registrar will renew the registration without removing it from the Register. If no request for renewal is filed as provided in sub-rule 1, the Registrar will, subject to Rule 53, remove the mark from the Register.
The renewal date is determined by the date of the application for registration. Registrations may be renewed at any time within six months before the date on which the renewal is due by payment of the renewal fee. Registrations may also be renewed for six months after the renewal date by payment of the renewal fee plus an additional renewal fee.
If the fees are not paid within the period specified in that clause the Registrar will, subject to Rule 53, remove the mark from the Register and publish a notice of the removal.
For purposes of a trademark registration, use of a mark includes the selling, importing, exporting, and manufacturing of goods. Use on a different product or service does not count as use. However, use in a slightly different form may count as use. A mark is deemed abandoned after a period of five years has elapsed without use as described above.
A domain name may be registered as a trademark for relevant goods or services if used as a source identifier. The applicant for registration of a domain name must show that he or she offers goods or services via the Internet using the domain name. Such evidence may be in the form of specimens showing use of the domain name as a source identifier. A domain name will be considered a source identifier if it is used on the Internet to distinguish goods or services of one undertaking from others. Conversely, use of the domain name as a mere directional reference, similar to the use of a telephone number or business address, will not be considered use of the domain name as a source identifier.
Notwithstanding the provisions of clause (c) of subsection (1) of section 14 limiting the registration of certain geographical terms, a domain name which consists of marks or indications which serve to distinguish in trade the geographical origin of the goods or services may be registered.
What provisions of the law aid me in protecting my trademarks against infringement?
Under Section 53 of Trademark Ordinance 2001, the owner of a registered trademark may give notice in writing to the Collector of Customs that he or she is the proprietor of a registered trademark. Such notice may inform the Collector of Customs of the expected time and place of arrival in Pakistan of goods, materials, or articles that are infringing or which bear false indications as to their source or the identity of their manufacture. Such notice should further state that such goods, materials, or articles are subject to the control of the Customs authorities under the Customs Act (IV of 1969) and that a request is made for the Collector to treat such items as prohibited goods.
Based on such notice, the Collector of Customs may seize goods bearing an infringing trademark, or bearing a mark which, in the opinion of the Collector of Customs, is identical with, or deceptively similar to the registered mark, and are goods for which the trademark is registered.
The Collector of Customs will effect such a seizure unless in his or her judgment there are no reasonable grounds to believe that the trademark will be infringed by the importation of the goods. Upon seizure, the goods are required to be kept in a secure place as directed by the Collector of Customs.