Josh and Mak International can offer a range of legal services related to industrial design protection and intellectual property rights in Pakistan. Some of the services they can provide to companies and individuals in Pakistan and Abroad include:
Industrial Design Registration: Josh and Mak International can assist companies and individuals in the process of registering their industrial designs in Pakistan. They can guide clients through the application process, prepare the necessary documents, and file the application with the appropriate authorities.
Intellectual Property Rights Consultation: The firm can provide expert advice and consultation on various intellectual property matters, including industrial design protection, trademark registration, copyright, and patent issues. They can help clients understand their rights, assess the eligibility of their designs for protection, and develop a strategic plan for safeguarding their intellectual property.
Infringement Detection and Enforcement: Josh and Mak International can help clients identify potential instances of design infringement and take appropriate enforcement actions. They can assist in initiating civil suits against infringers, seeking injunctions, and recovering damages for losses caused by infringement. Additionally, they can guide clients in pursuing criminal actions against infringers.
Intellectual Property Dispute Resolution: The firm can represent clients in resolving intellectual property disputes, including those related to design rights, through negotiation, mediation, or litigation. They can provide strong legal representation in the High Court for cancellation actions, rectifications, or any other dispute resolution mechanisms available under the law.
Custom Enforcement: Josh and Mak International can advise clients on utilizing customs provisions to prevent the import or export of infringing goods. They can assist in obtaining customs protection for registered designs, leading to the seizure, detention, and potential confiscation of counterfeit products.
Intellectual Property Due Diligence: For businesses engaged in mergers, acquisitions, or licensing agreements, the firm can conduct thorough due diligence on intellectual property assets, including industrial designs. They can assess the validity and enforceability of design registrations and ensure clients are well-informed about their intellectual property portfolio.
Compliance and Regulatory Support: Josh and Mak International can guide companies and individuals in complying with intellectual property laws and regulations in Pakistan. They can help with the preparation of licenses, agreements, and contracts related to design rights and intellectual property matters.
Josh and Mak International are well-equipped to offer comprehensive legal services related to industrial design protection and intellectual property rights in Pakistan. Further legal services that Josh and Mak International can offer to companies and individuals in this area of expertise are as follows:
Intellectual Property Portfolio Management: The firm can help clients develop and manage their intellectual property portfolio, including industrial design rights. They can advise on the strategic registration of designs, renewal processes, and portfolio optimization to ensure comprehensive protection and maximum value for the clients’ intellectual assets.
Licensing and Technology Transfer: Josh and Mak International can assist clients in negotiating and drafting licensing agreements and technology transfer arrangements related to industrial designs. They can ensure that the terms of the agreements are favorable and protect the rights of their clients while facilitating the commercialization of their designs.
Design Clearance Searches: Before clients proceed with the registration of their industrial designs, the firm can conduct comprehensive clearance searches to check for prior registrations or conflicting designs. This helps clients assess the viability of their design and minimize the risk of potential infringement claims.
Design Renewal and Maintenance: As industrial design rights are valid for a specific duration, the firm can help clients with the timely renewal of their design registrations. They can manage the administrative processes and ensure that the designs remain protected for the maximum permissible period.
Intellectual Property Training and Workshops: Josh and Mak International can conduct workshops and training sessions for companies and individuals to raise awareness about intellectual property rights, design protection, and best practices for safeguarding their creative works.
Cross-Border Intellectual Property Services: For clients seeking to protect their industrial designs in multiple countries, the firm can provide guidance on international intellectual property strategies. They can assist with filing applications through WIPO or directly with relevant national authorities in other countries where clients seek protection.
Due Diligence and Intellectual Property Audits: In addition to design-related due diligence, the firm can perform comprehensive intellectual property audits for businesses. They can assess the strength and potential risks associated with the clients’ entire intellectual property portfolio, including patents, trademarks, and copyrights.
Josh and Mak International offer a wide range of legal services related to industrial design protection and intellectual property rights in Pakistan. With their expertise in the Registered Design Ordinance and their understanding of international treaties, they can provide effective counsel and representation to clients seeking to safeguard their innovative designs, enforce their rights against infringement, and navigate the complex landscape of intellectual property in Pakistan and beyond.
An Overview of Industrial Design Law in Pakistan
This article provides an overview of industrial design law in Pakistan, focusing on the definition of industrial design, its scope, and the legal framework governing its protection. Industrial design is a crucial aspect of various industries, encompassing the features of shape, configuration, pattern, and ornament applied to articles through industrial processes. The protection of industrial designs is essential to encourage innovation and creativity in Pakistan’s diverse manufacturing sectors.
Definition of Industrial Design
In Pakistan, an industrial design refers to the features applied to an article through an industrial process, where the appeal and judgment of the finished article are based solely on visual characteristics. These design features may include the shape, configuration, pattern, and ornamentation of the article, contributing to its aesthetic appeal.
Exclusion from Design Protection
It is important to note that certain elements are excluded from design protection under Pakistani law. Specifically, methods or principles of construction and features dictated solely by technical and functional considerations are not eligible for design protection. The focus of industrial design protection is primarily on the article’s visual aspects rather than its technical features.
Nature of Industrial Design
An industrial design in Pakistan can be three-dimensional, involving the shape or surface of an article, or two-dimensional, encompassing patterns, lines, or colors. The wide range of industries benefiting from industrial design protection includes handicrafts, medical instruments, watches, jewelry, housewares, electrical appliances, vehicles, and architectural structures.
Scope of Protection
It is essential to understand that industrial design protection in Pakistan is limited to the aesthetic aspects of the article. This means that technical features or functional aspects of the article are not safeguarded under industrial design law. Instead, other forms of intellectual property protection, such as patents, may be sought to safeguard technical innovations.
Ineligibility of Trademarks and Copyrights
It is worth noting that a trademark or copyright in an artistic, literary, dramatic, or musical work cannot be registered as an industrial design. Each form of intellectual property protection has distinct requirements and serves different purposes. Therefore, creators must carefully assess the nature of their work to determine the appropriate form of protection.
Evolution of Industrial Design Legislation in Pakistan
The legal protection of industrial designs in Pakistan has a historical backdrop. The Patents and Designs Act of 1911 was the first legislation to address design-related matters. Over time, this Act underwent various amendments. Finally, the Registered Design Ordinance of 2000 replaced the original Act, reflecting the evolving needs and dynamics of the industrial sector.
Industrial design law in Pakistan plays a crucial role in promoting innovation and creativity across diverse industries. By providing protection to the aesthetic features of articles, the law encourages designers and manufacturers to invest in new and appealing designs. It is important for creators and businesses to understand the scope and limitations of industrial design protection, as well as the distinctions between different forms of intellectual property rights. For those seeking to secure design protection, compliance with the relevant legal framework ensures the proper safeguarding of their creative endeavors.
Title: Introduction to Industrial Design Registration in Pakistan
Industrial designs play a pivotal role in enhancing the appeal and commercial value of products, making them distinct and visually appealing in the market. In Pakistan, the registration of industrial designs provides exclusive rights to the registered proprietor, enabling them to prevent unauthorized copying and imitation by others. This article provides an overview of industrial design registration in Pakistan, emphasizing its benefits and the importance of timely application.
Exclusive Rights and Protection
Registering an industrial design in Pakistan grants the right holder exclusive rights to the design. These rights empower them to prohibit others from copying or imitating their design without permission. By safeguarding their creative efforts, designers and manufacturers can enjoy the fruits of their investment and creativity while fostering fair competition in the market.
Commercial Value and Aesthetics
Industrial designs significantly contribute to the commercial value and marketability of products. A well-designed product can attract more customers and create a distinct identity in a competitive market. Protecting the industrial design ensures that the right holder reaps the benefits of their efforts and investments, encouraging further innovation and creativity.
Design rights are territorial, meaning that a Pakistani design registration provides protection only within Pakistan’s borders. If the right holder desires to protect their design in other countries, they must seek separate protection in each country under the relevant law. Pakistan is yet to accede to the Hague System for the International Registration of Industrial Designs, which would simplify the process of securing protection in multiple countries through a single application with the World Intellectual Property Organization (WIPO).
Market Entry Planning
In Pakistan, the principle of “first-to-file” is followed, necessitating creators to apply for design registration as soon as possible. This approach ensures that the right holder establishes priority over others and prevents conflicting claims to the design. Filing for design registration before the design is published is crucial to maintain its novelty and uniqueness, as public disclosure may undermine its eligibility for protection.
Industrial design registration in Pakistan offers essential benefits to creators and businesses, providing exclusive rights and protection for their unique designs. By securing design rights, right holders can confidently promote their products, prevent unauthorized copying, and gain a competitive edge in the market. Timely application is of paramount importance to ensure the novelty and distinctiveness of the design. While Pakistan currently follows a country-by-country registration system, creators can still benefit from protecting their designs within the country’s borders. As the industrial sector continues to thrive in Pakistan, understanding and utilizing design registration becomes even more crucial for fostering innovation and driving economic growth.
Protecting industrial design rights requires a comprehensive strategy, and creators should consider the following steps:
- Engage a Competent Law Firm like Josh and Mak International for your IPR Matters:
- Creators should seek legal advice and assistance from a law firm experienced in intellectual property rights (IPR) matters like Josh and Mak International in Pakistan. The competent legal team can guide them through the registration process and ensure proper protection of their industrial design.
- Conduct a Clearance Search:
- Before proceeding with the design registration, it is advisable to conduct a clearance search at the Patent Office. This search helps determine whether the design is available for registration and whether there are any conflicting designs that could pose obstacles during the registration process.
- Timely Application for Design Registration:
- Once the clearance search confirms the design’s availability, creators should promptly apply for the registration of their industrial design. Timely application is essential to establish priority and prevent others from claiming rights to a similar design.
- Enforce Design Rights Proactively:
- If creators discover that their registered design is being infringed upon, they should take immediate action to enforce their rights. This may involve filing cancellations against infringing designs, conducting investigations to gather evidence, sending cease and desist notices to the infringers, or initiating appropriate legal actions to protect their design rights.
Eligibility for Design Registration:
Any person, partnership firm, or body corporate claiming to be the proprietor of a design can apply for its registration in Pakistan. However, to be eligible for registration, the design must meet certain criteria:
- New or Original: The design should be novel or original, meaning it has not been published or publicly disclosed before the date of application. A design that has been previously disclosed to the public is not eligible for registration.
- Not Previously Published in Any Country: To qualify for registration, the design must not have been previously published in any country. If the design has been imitated from abroad, it may not be considered new or original and would not be eligible for registration.
- Not Contrary to Public Order or Morality: Designs that are contrary to public order or morality are not eligible for registration. This ensures that offensive or inappropriate designs are not granted protection under industrial design law.
Securing industrial design rights in Pakistan involves careful planning and execution. By hiring a competent law firm, conducting clearance searches, timely applying for registration, and proactively enforcing their rights, creators can protect their innovative designs from unauthorized copying and imitation. It is essential to ensure that the design meets the eligibility criteria for registration, such as being new, unpublished, and compliant with public order and morality standards. With a well-rounded strategy, creators can fully leverage the benefits of industrial design registration and safeguard their creative endeavors.
Registration Procedure for Industrial Design in Pakistan:
- To ensure a smooth and efficient registration process, it is advisable for the right holder to engage a reputable law firm in Pakistan like Josh and Mak International specializing in intellectual property rights. The chosen law firm should have a good understanding of the country’s protection and enforcement systems.
- Conduct a Design Search:
- Before proceeding with the registration, it is prudent to conduct a design search at the relevant authorities to ascertain the availability of the design. This search helps determine if the design is already registered by someone else or if there are similar designs that may affect the registration process.
- Prepare the Required Documents:
- Once the design’s availability is confirmed, the right holder or their authorized agent should prepare the necessary documents for the application. The application should be filed in the prescribed form and include the following information:
a. Name, address, and nationality of the right holder (applicant).
b. The class under which the design falls (designs are categorized into 14 separate classes for systematic registration).
c. A representation of the design, such as drawings, photographs, or graphical representations.
d. Name of the articles to which the design will be applied.
e. Address for service in Pakistan.
f. Priority details, if the right holder is claiming priority from a Paris Convention application.
- Filing the Application:The application for industrial design registration can be filed directly by the right holder, their assignee, or an authorized agent. It should be submitted to the relevant authority along with the required documents and the prescribed fee. The application must be signed by the right holder or their authorized representative.
- Application Examination and Registration:Once the application is submitted, it will undergo examination by the designated authority. The examination process assesses the design’s compliance with legal requirements and ensures its novelty and originality. If the application meets the criteria, the industrial design will be registered, and the right holder will be granted exclusive rights.
Registering an industrial design in Pakistan involves a systematic and well-structured procedure. Engaging a specialized IPR law firm, conducting a design search, and filing the application with the necessary documents are essential steps in the registration process. By following these steps, creators and businesses can secure exclusive rights to their innovative designs and protect their interests in the market.
Registration Procedure for Industrial Design in Pakistan:
- File the Application at the Patent Offices in Karachi or Lahore:
- The first step in the registration process is to file the application for industrial design registration at either the Patent Office in Karachi or Lahore. The applicant can choose the appropriate office based on their location or convenience.
- Review by the Patent Office:
- Once the application is filed, the Patent Office reviews it to ensure that all required information and documents are provided. The application is assigned a unique number for identification and tracking purposes.
- Examination of the Application:
- During the examination process, the Patent Office assesses the eligibility of the design for registration. The design’s novelty and compliance with the legal requirements are evaluated. If any issues or objections arise during the examination, the Patent Office may issue a statement of objections.
- Responding to Objections:
- Upon receiving the statement of objections, the applicant has one month to respond to the objections raised by the Patent Office. It is essential to address these objections adequately within the specified timeframe. Failure to respond within the given time may lead to the application being deemed withdrawn.
- Decision by the Registrar of Designs:
- Based on the applicant’s response to the objections, the Registrar of Designs determines whether the application should be refused, accepted, or scheduled for a hearing. If the application is rejected, the applicant has the option to file an appeal in the High Court to challenge the decision.
- Registration of the Design:
- If the design application is accepted and all requirements are met, the Controller of Designs directs the registration of the design. Once registered, the details of the application, along with any figures representing the articles to which the design has been applied, are published in the Official Gazette.
The registration of an industrial design in Pakistan involves several stages, starting with the filing of the application at the Patent Offices in Karachi or Lahore. After review and examination, the Registrar of Designs determines the eligibility of the design for registration. If accepted, the design is registered, and its details are published in the Official Gazette. Throughout the process, it is essential for applicants to promptly address any objections raised by the Patent Office to ensure a smooth and successful registration.
After successful registration of the design, the details are recorded in the Register of Designs, which serves as an official record of all registered designs in Pakistan.
Term of Registration:
The registration of an industrial design in Pakistan is valid for a period of 10 years from the date of registration. Upon expiry of this initial 10-year term, the right holder has the option to renew the registration for two further terms of 10 years each. This allows the design’s protection to be extended for a total of 30 years, providing the right holder with long-term exclusivity.
Cancellation of Registration:
In certain situations, any party who feels aggrieved by the registration of a particular design may file an application for its cancellation. This application can be submitted to either the High Court or the Registrar of Designs within two years of the design’s registration. The application for cancellation must adhere to the prescribed format.
Grounds for Cancellation:
The grounds for seeking cancellation of an industrial design registration include:
- Failure to Fulfill Substantive Requirements: The design may not have met the specific requirements outlined in the relevant legislation.
- Contrary to Public Order or Morality: If the design is found to be against public order or morality, it can be subject to cancellation.
- No Right to the Design: The application for cancellation can be based on the claim that the person registered as the proprietor of the design has no rightful claim to it.
Cancellation Proceedings and Appeals:
The Registrar of Designs holds authority over the cancellation proceedings and may refer the matter to the High Court for a decision. The decision of the Registrar can be appealed before the High Court, which will have the final say in the matter.
Petition for Rectification:
In addition to cancellation, any aggrieved person can also file a petition for rectification with the High Court. This allows for the correction of any entry made in the Register of Designs. The High Court may order the Register of Designs to be rectified by making, varying, or deleting any entry as required.
The registration of an industrial design in Pakistan provides the right holder with exclusive protection for a period of 10 years, with the option to renew for two additional terms of 10 years each. However, the registration is subject to possible cancellation if it fails to meet certain requirements or is found to be contrary to public order or morality. Parties aggrieved by the registration have the right to initiate cancellation proceedings or seek rectification through the High Court. By understanding these processes, right holders can better protect their industrial designs and enforce their rights if necessary.
Infringement and Enforcement Remedies for Industrial Design Rights in Pakistan:
Infringement of Industrial Design:
Any unauthorized act of making, selling, or working articles that bear or embody a design identical or substantially similar to a registered industrial design, for commercial purposes, constitutes infringement. Such actions are deemed unlawful and require the consent of the rights holder.
The Lahore High Court in the case of Select Sports A.S. Company v. Tempo Enterprises ruled in favor of Select Sports, stating that the registered design of Select Sports is protected, making it unlawful for any other person to apply or use the design on any product without the rights holder’s consent.
Rights holders have the following enforcement remedies against infringers:
- Civil Suit: The rights holder can initiate a civil suit against the infringer seeking an injunction to stop the infringement and recovery of damages for the losses suffered due to the infringement.
- Criminal Action: A rights holder also has the option to initiate a criminal action against the infringer. If found guilty, the infringer may face imprisonment, a fine, or both.
Apart from civil and criminal remedies, the Customs Act, 1959, contains provisions that prohibit the import or export of goods infringing industrial design rights. Customs authorities can seize and detain infringing goods, leading to confiscation and penalties as per the Customs Act, 1969.
As of the current state, regulations under the Registered Designs Ordinance, 2000 have not been formulated. However, it is anticipated that the government of Pakistan will soon draft and promulgate these rules, which will provide more clarity and procedural guidelines regarding industrial design registration and enforcement.
Industrial design rights in Pakistan are protected against infringement, and rights holders have recourse to both civil and criminal remedies to enforce their rights. Additionally, provisions under the Customs Act allow for the seizure and confiscation of infringing goods at customs. As Pakistan progresses towards formulating regulations under the Registered Designs Ordinance, 2000, it is expected that the intellectual property protection framework will be further strengthened, providing better protection and enforcement mechanisms for industrial design rights in the country.
Design Legislation in Pakistan:
The main legislation governing industrial design rights in Pakistan is the Registered Design Ordinance, No. XLV of 2000. This ordinance provides the legal framework for the registration, protection, and enforcement of industrial designs in the country. It outlines the requirements for design registration, the term of protection, and the remedies available in case of infringement.
International Industrial Design Treaties:
Pakistan is a signatory to two key international treaties related to industrial design protection:
- Paris Convention for the Protection of Industrial Property:
- The Paris Convention is an international treaty aimed at promoting and protecting intellectual property rights, including industrial designs. It provides reciprocal rights and obligations for member countries, allowing applicants to claim priority for their industrial design applications based on an earlier application filed in another member country.
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS):
- TRIPS is a global agreement under the World Trade Organization (WTO) that sets out minimum standards for the protection and enforcement of intellectual property rights, including industrial designs. As a member of the WTO, Pakistan is bound by TRIPS provisions, ensuring that industrial design rights are safeguarded in line with international standards.
The Registered Design Ordinance, No. XLV of 2000, forms the basis of industrial design protection in Pakistan. Additionally, Pakistan’s membership in the Paris Convention and its adherence to TRIPS demonstrate its commitment to international standards of intellectual property protection, providing a robust legal framework for industrial design rights in the country and facilitating international cooperation and recognition for creators and businesses.
FAQs on Industrial Design Registration in Pakistan:
What is the duration of protection for a registered design? Can it be extended?
The duration of protection for a registered design is initially ten years from the date of registration. If a priority claim has been allowed, the duration is ten years from the priority date. The registration can be extended for two terms of ten years each by timely filing an extension application.
Is it necessary to produce an article by an industrial process prior to applying for design registration?
No, it is not necessary for an article to have been made by an industrial process before filing an application for design registration. The design can be registered based on its representation, such as drawings or graphical representations.
Are the registered designs open for public inspection?
Yes, registered designs are open for public inspection once they have been published in the Official Gazette.
Can the rights in a design be transferred to another party?
Yes, the rights in a design can be transferred to another party through various means, such as assignment or transmission. It is possible to transfer design rights through voluntary arrangements or by operation of law, such as court orders in bankruptcy proceedings.
Can I write “Registered” on the product without it being registered?
No, it is an offense to falsely represent that a design applied to a product is registered when it is not. It is also illegal to stamp, engrave, or impress the word “Registered” or any similar word on an article’s design when it is not registered. Using the “Registered” designation when the registration has expired is also an offense.
How can I find out if a particular design is registered in Pakistan?
To determine if a specific design is registered in Pakistan, you can file an application with the Registrar of Designs, attaching a representation of the design and paying the prescribed fee. The Registrar will inform you if the design is registered or not.
Is there a procedure for opposing a design application before it is registered?
No, presently, there is no pre-registration opposition procedure available in Pakistan for designs.