Pakistan has notified the Trade Marks
Ordinance 2001 on 13 April 2001, thereby repealing the
old Trade Mark Act 1940. The new Act
brought into force statutory framework with respect to trademarks in
Pakistan in line with emerging worldwide trends
as well as with
Pakistani’s obligations under the
Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS).
A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.
Almost all jurisdictions
Pakistan employ a classification system
in which goods and services have been grouped into classes
for registration. Most countries follow the same
classification system, namely the International
Classification of Goods and Services, which consists of 34
classes of goods and 11 classes of services. For example,
printed matter, newspaper and periodicals are classified
in Class 16 while services in the field of publication
come under Class 41. Time Incorporated, USA is the
registered proprietor of the trademark “TIME” in about
The registration of a trademark in
Pakistan confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.
Any person can apply for registration of a trademark to the
Pakistan Trademark Registry under whose jurisdiction the principal place of the business of the applicant in
Pakistan falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.
Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
An application for trademark
may be made on Form TM-1 with prescribed fee at Trade Marks Registry
Karachi depending on the place where the
applicant resides or has his principle place of business.
The application is examined to ascertain whether it is
distinctive and does not conflict with existing registered
or pending trademarks and examination report issued Once
the applicant has overcome all objections raised by the
registrar, the application proceeds to publication in the
Pakistan Trade Marks Journal, with an
endorsement stating either that it has been accepted or
that it is being published before acceptance. After
publication in the Trade Marks Journal, anyone has three
months (which may be extended by up to a further month at
the registrar’s discretion) to file a notice of opposition to registration.
The question of acceptance or refusal of the trademark
application will be considered only once the opposition
proceedings have been completed. The onus is on the
applicant to establish that it is entitled to registration
of the trademark as applied for. If an application has
been published as accepted and is not opposed, or if any
oppositions are decided in favour of the applicant, the
mark will proceed to registration. If the application has
been published before acceptance and is not opposed during
the opposition period, the registrar will then consider
afresh whether to accept the application; if he decides in
the affirmative, the mark will be registered. The fact of
registration must be published in the Trade Marks Journal.
Once an application has been accepted for registration and
any opposition have been decided in favour of the
applicant, certificate of registration is issued. If the
applicant's response does not overcome all objections, the
Registrar will issue a final refusal. The applicant may
then appeal to the Intellectual Property Appellate Board,
an administrative tribunal.
A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.
Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.
Two types of remedies are
available in Pakistan to the owner of a trademark for
unauthorized use of his or her mark or its imitation by a
third party. These remedies are: - ‘an action for
infringement' in case of a registered trademark and ‘an
action for passing off' in the case of an unregistered
The basic difference between an
infringement action and an action for passing off is that
the former is a statutory remedy and the latter is a
common law remedy. Accordingly, in order to establish
infringement with regard to a registered trademark, it is
necessary only to establish that the infringing mark is
identical or deceptively similar to the registered mark
and no further proof is required. In the case of a passing
off action, proving that the marks are identical or
deceptively similar alone is not sufficient. The use of
the mark should be likely to deceive or cause confusion.
Further, in a passing off action it is necessary to prove
that the use of the trademark by the defendant is likely
to cause injury or damage to the plaintiff’s goodwill,
whereas in an infringement suit, the use of the mark by
the defendant need not cause any injury to the plaintiff.
However, the registration
cannot upstage a prior consistent user of trademark in
Pakistan, for the rule followed is ‘priority in adoption
prevails over priority in registration`. In many other
jurisdictions like Saudi Arabia, Nepal etc. where the
first party to register a trademark is considered the
party to own the mark, regardless of prior use of the
The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.
The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.
Trademark rights are granted on a country-by-country basis. An
Pakistani registration provides protection only in
Pakistan and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.
There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as
Pakistan, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.
It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register. The European Union consisting of 15 countries has adopted its own trademark system, known as the Community Trademark. The African Organization for Intellectual Property (OAPI), a group of African nations, have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states.
Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other's trademarks.
Trademark Opposition in
Pakistan - An Overview
Trademark Classification system