Trademark

Trademark

Trademark means a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. A trademark used to identify services is usually called a service mark. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity,

A trademark may be represented by the following symbols:

  • The trademark symbol TM” is used for anunregistered trademark, a mark used to promote or brand goods
  • The trademark symbol “SM” is used for an unregistered service mark, a mark used to promote or brand services.
  • The trademark symbol the letter “R” surrounded by a circle is used for a registered trademark

Over a period of time, several other forms of trademarks have become popular and such marks are referred to as non-conventional or non-traditional marks. Examples of such marks include colour marks, shape of goods, their packaging, three dimensional marks, sound marks, smell marks, taste marks etc.

Through a registered trade mark, you can protect your brand (or “mark”) by restricting other people from using its name or logo.

Once acquired, a trade mark can last indefinitely as long as you renew it every 10 years. Because a registered trade mark is a form of Intellectual Property, you can license or assign it to others.

Certification Mark 

A certification mark shall be a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics

 Collective Mark

A collective mark shall be a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

  1. Search & Filing of Trademark

An official trademark search is available in Pakistan but it is not mandatory. However, we strongly recommend the official search before filing a trademark to save our client from future hurdles.

Time Period for Search

It usually takes 2 to 4 working days

Filing Requirement of Trade Mark Application in Pakistan

  1. Name, address and nationality of the Applicant;
  2. Representation of the trade mark;
  3. List of goods or services and class or classes according to the International Classification of Goods and Services (Nice Classification 10th Edition).
  4. Date of first use of the mark in Pakistan, if any, or whether it is intended to be used.
  5. Full name, address, nationality and the nature of business of the Applicant.
  6. Priority can be claimed within six month of the application filed in Convention Country Certified copy of priority documents can be filed within 3 months of the date of application filed in Pakistan.
  7. A Notarized  Power of Attorney may be filed at any time before examination of the application without any extra cost.

Trademark Classification for Goods & Services

For the purposes of trade mark registration, all goods and services are divided into 45 classes and the official application fee is payable per mark per class.

Pakistan follows 10th edition of NICE Classification.

Claiming Priority in Pakistan

According to section 25 of the Trade Marks Ordinance, 2001, any person who has duly filed a trade mark application in one of the convention countries, such person or his successor in title, shall enjoy, for the purpose of filing in Pakistan or other member countries, a right of priority for a period of 6 months.

Accordingly, any person may claim priority of a foreign trade mark application within 6 months of the said foreign application date. Similar priority rights are available to a Pakistani national for foreign trade mark applications in convention countries.

Time Frame

Trademark straight application usually takes about 20- 30 months to obtain a trade mark registration in Pakistan.

  1. Examination of Application

Pakistan Trademark Registry usually examines the mark within 6 to 8 months after filing a trademark application in

According to section 27 of the Ordinance, the Registrar shall, as soon as practicable, examine whether an application for registration of a trade mark satisfies the requirements prescribed under the

For the purposes of examination, the Registrar shall carry out a search, to the extent  as he considers necessary, of earlier trademarks.  If it appears to the Registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within two month of the receipt of the show cause, to  make representation or to amend the application.

If the applicant fails to satisfy the Registrar that those requirements are met, or to amend the application so as to met them, or fails to respond before the end of the specified period, the Registrar shall refuse to accept the application.

If it appears to the Registrar that the requirements for registration are met, he shall accept the application absolutely or subject to such conditions or limitations, if any, as he may think fit.

Absolute Grounds for Refusal of Registration.-

According to section 14 of the Ordinance the following shall not be registered, namely:-

1).

(a)        mark which do not capable of being represented graphically which is not capable of distinguishing goods or services of one undertaking from those of other undertakings.

(b)        trade marks which are devoid of any distinctive character;

(c)        trade marks 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)       trade mark 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;

Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if, before the date of application for registration. it has in fact, acquired a distinctive character as a result of the use made of it or is a well know trade mark.

(2)        A mark shall not be registered as a trade mark if it consists exclusively of-

(a)       the shape which results from the nature of the goods themselves;

(b)        the shape of goods which is necessary to obtain a technical result; or

(c)        the shape which gives substantial value to the goods.

(3)        No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-

(a)        by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a High Courts or District Court;

(b)        be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, per se, or in terms of goods or services it is intended to be so registered; or

(c)       be contrary to any law, for the time being in force or morality.

(4)        A trade mark shall not be registered if or to the extent that the application is made in bad faith.

Relative grounds for refusal of registration.-

According to section 17 of the Ordinance.

(1)        A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.

(2)        A trade mark shall not be registered because-

(a)        it is identical with an earlier trade mark and is to be registered for goods- or services similar to those for which the earlier trade mark is registered; or

(b)        it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is registered. and there exists  a likelihood  of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.

(3)        A trade mark which-

(a)     is identical with or similar to an earlier trade mark; and

(b)     is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade 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 trade mark.

(4)        A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented-

(a)        by virtue of any law, in particular, the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade; or

(b)        by virtue of an earlier right other than those referred in sub-section (1), (2) and  (3) or clause (a) of this sub-section, in particular by virtue of the law of copyright design right or registered designs.

Filing a Show Cause Reply & Hearing before the Registry

The Trademark Registry directed the applicant to file a show cause reply  within two months of actual receipt of the show cause notice.

After receiving a show cause response the Registry accept the application for publication or fixed for an ex-parte hearing. The hearing usually take place within 4 to 6 months of filing of the show cause response .

After hearing the arguments of the counsel of the applicant the Registrar accept the application for publication or reject it.

  1. Publication

After the acceptance of the application for publication it is advertised in the Trade Marks Journal of Pakistan for public objection. Any interested party may file its objections within two months from the publication of the mark in Journal. If no opposition is filed within the stipulated period or any extended time (2 extension of one month each), the mark reaps for registration.

  1. Registration & Renewals

After the advertisement of the mark in the Trade Marks Journal, if no opposition is filed within the stipulated time and/or any extendable time or the opposition filed is decided in favour of the applicant as the case may be, the Registry issue a Demand Note requiring the applicant to file the registration fee within one month of the receiving of the same. The Registry issue a Registration Certificate within 6 to 8 months After submitting a registration fee. A trade mark registration in Pakistan is considered from the date of making the application for registration of that trade mark.

Benefit of Registration

Registration is not a compulsory requirement to use a mark in Pakistan. However, registration provides several advantages to the registrant of the mark.

The registration creates the registrant’s ownership of the trademark

  1. Establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration
  2. Allows the registrant to bring an action concerning the trademark in district court/high court.
  3. On the basis of registration of trademark in Pakistan you can obtain registration in foreign countries
  4. The registrant can prevent the importation of infringing foreign goods through custom authorities.
  5. It can be used to protect your market share
  6. You can license it to third parties such as a franchisee, or
  7.  You can sell it outright for a specified value.

Renewal of Trademark

If your trade mark registration application is successful, the trade mark will be valid for 10 years from the initial filing date and may be renewed thereafter from time to time.

  1. Infringement & Oppositions of Trademark

Trademark infringement means violation of the terms of registered trademark by any third party by encroaching on the rights and privileges provided to the person that owns the property.

Circumstances of infringement of Registered Trademark

According to Section 40 of the Trade Marks Ordinance, 2001 a registered trademark may be infringed in the following ways.

(1)        A person shall infringe a registered trade mark if such person uses in the course of trade a mark which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2)        A person shall infringe a registered trade mark if such person uses in the course of trade a mark because-

(a)        the mark is identical with the trade mark and is used in relation to goods or services similar to the goods or services for which the trade mark is registered; or

(b)        the mark is deceptively similar to the trade mark and is used in relation to goods or services identical with or similar to the goods or services for which the trade mark is registered. there exists a likelihood of confusion on the part of public, which includes the likelihood of association with the trade mark.

(3)        A person shall infringe a registered trade mark if the person uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark in relation to-

(a)        goods of the same description as that of goods in respect of which the trade mark is registered;

(b)        services that are closely related to goods in respect of which trade mark is registered;

(c)        services of the same description as that of services in respect of which the trade mark is registered; or

(d)       goods that are closely related to services in respect of which the trade mark is registered.

(4)        A person shall infringe a registered trade mark if the person uses in the course of trade mark which-

(a)        is identical with or deceptively similar to the trade mark; and

(b)        is used in relation to goods or services which are not similar to those for which the trade mark is registered.

Where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(5)        A person shall infringe a registered trade mark if the person uses such registered trade mark as his trade name or part of his trade name.

(6)        A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark.

(7)        A person who applies a registered trade mark to material intended to be used for labeling or packaging goods shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8)        In all legal proceedings, a person who sells or offers or exposes goods for sale, or puts them on the market or has in possession for sale or any purpose of trade or manufacture any goods bearing a mark which infringes a registered trade mark shall be treated  as a party to infringement of a registered trade mark, unless he proves that-

(a)        having taken all reasonable precautions, he had to reasons to suspect  the genuineness of the mark; and

(b)        on demand made by tribunal, he gave all the information in his power with respect to the persons from whom he obtained such goods; or

(c)        he had otherwise acted innocently.

When a Trade Mark is Not Infringed.-

 

According to Section 42, there is no infringement in the following certain cases:-

(1)        A person shall not infringe a registered trade mark when-

(a)        the person uses in good faith-

(i)         the 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 trade mark or other property right; or

(ii)        the name of the predecessor in business of the person or the name of the predecessor’s place of business:

(b)        the person 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;

(c)          the person uses the trade mark in good faith to indicate the intended purpose of  goods, in particular as accessories or spare parts, or services; or

(d)       the person uses the trade mark for the purposes of comparative advertising.

(2)        Where registration of a trade mark is subject to a disclaimer, a person shall not infringe the trade mark by using disclaimed part of the trade mark.

 Action for infringement.-

According to Section 46 of the Ordinance notwithstanding anything contained in the ordinance, an infringement of a registered trade mark shall be actionable only by the proprietor of the trade mark. An infringement suit may be filed in District Court or High Court. A suit of infringement may be filed at a Court within whose territorial jurisdiction the Plaintiff resides or carries on business or works for gain or where the cause of action has risen or the place of residence of defendant.

Relief which may be Claimed/granted in the Suit for Infringement

 

According to Section 46 (2) of the Ordinance in action of infringement following reliefs may be available;

  1. Damages
  2. Injunctions
  3. Accounts
  4. Any other remedies which are available to the person having some other property rights.

Trademark  Opposition

 

A legal proceeding in which a party seeks to prevent a pending application for a mark from being registered is called opposition. A party that believes it will be damaged by the registration of the pending mark may oppose an application for that mark. Under Section 28 (2) of the Ordinance, any person may within two months from the date of publication of advertisement in the Trade Marks Journal and/or within such further extended period not exceeding two months in aggregate, may file Notice of Opposition.

Grounds for Opposition

According to section 29 of the Ordinance, an opponent can raise either absolute or relative grounds in an opposition proceeding. Under absolute grounds, the opponent may oppose on the basis of descriptiveness, genericness, bad faith etc. Alternatively, under relative grounds, the opponent makes a claim of prior rights in the trademark, likelihood of confusion, bad faith, well-known mark, dishonest adoption etc.

Procedure for Opposition

 

According to section 28 of the Trade Marks Ordinance the procedure of filing an opposition in Pakistan is as follows:

Any person may, within two months from the date of the advertisement or re-advertisement of an application for registration  in the Trade Marks Journal or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the registration.

The notice of opposition shall be given in writing and shall include a statement of the grounds of opposition.

The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within one month from the applicant of such copy of the notice of opposition, or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him and on payment of the prescribed fee,  may allow, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and, if he does not do so he shall be deemed to have abandoned his application.

If the applicant sends the counter-statement ,the Registrar shall serve in the prescribed manner a copy of the counter- statement on the opponent. If the opponent deems necessary, he may within one month from the receipt of such copy of the counter-statement, or within such further period not exceeding two months in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, may allow, send to the Registrar in the prescribed manner a rejoinder.

If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of the rejoinder to the applicant.

Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.

After the completion of evidence, the Registrar hears the Opposition and on conclusion of arguments by both the parties, he passes an order accepting or rejecting the Opposition. Any party to the proceeding may file an appeal.

Rectification or Correction of Register

According to section 96 of the Ordinance. any person having a sufficient interest may apply before the Registrar for the rectification of an error or omission in the Register.

  1. Assignment 

 

A Trade Mark is assignable and transmissible, whether with or without the goodwill of the business concerned and in respect of any or all the goods or services in respect of which it is registered.

Documents Required for filing of An Assignment in Pakistan

 

For filing a Trademark Assignment in Pakistan following documents are required:

 

1-         An Assignment deed required to be signed by the authorized signatories of both transacting parties and also required to be notarized.

2-         A notarized Power of Attorney on behalf of the Assignee Company.

3-         Translation of the assignment document is required if the document is not in English. 

Time Frame

 

6 to 8 months