Legal Advice on Trademark Law in Pakistan by Josh and Mak InternationalLegal Advice on Trademark Law in Pakistan by Josh and Mak International

Update June 2023: Filing for Trademark Registration in Pakistan is Now Online!

Introduction to filing online trademarks in Pakistan : In a groundbreaking development for Intellectual Property (IP) applicants and stakeholders, the Intellectual Property Organization of Pakistan (IPO-Pakistan) and the Punjab Information Technology Board (PITB) have collaborated to launch an online trademark filing system. The e-filing system, designed by the PITB, was officially inaugurated on June 14, 2023, and is expected to streamline the trademark registration process, offering convenience, cost savings, and efficiency for applicants.

Online Trademark Filing in Pakistan: A Major Milestone IPO-Pakistan took a significant step towards modernization and enhancing service delivery by introducing the online trademark filing system. This innovative platform allows IP applicants to submit trademark applications electronically, replacing the traditional paper-based filing method. The online system will not only simplify the process but also bring added benefits, making trademark registration more accessible and user-friendly.

Online Trademark Filing Revolutionizes Our Law Firm’s Legal Services

As a leading law firm providing specialized legal services for trademark filing, the recent introduction of the online trademark filing system by the Intellectual Property Organization of Pakistan (IPO-Pakistan) and the Punjab Information Technology Board (PITB) represents a revolutionary turning point for our practice. This transformative development is set to reshape our firm’s approach to trademark services, enabling us to offer enhanced, efficient, and client-focused solutions to our valued clientele.

Seamless and Efficient Filing Process: With the adoption of the online trademark filing system, our law firm can now offer our clients a seamless and efficient filing process like never before. Gone are the days of cumbersome paperwork, long queues, and time-consuming administrative tasks. Through the digital platform, our clients can submit trademark applications from the comfort of their homes or offices, eliminating the need for physical visits and reducing turnaround time significantly.

Cost-Effective Solutions for Our Clients: The digitalization of trademark filing not only streamlines the process but also brings cost savings for our clients. By eliminating the need for physical documentation, printing, and delivery, our firm can pass on these cost efficiencies to our clients, ensuring that they receive top-notch legal services without an unnecessary financial burden.

Enhanced Data Security and Record Keeping: Our clients’ confidential information and trademark filings are now securely stored in digital formats. This enhanced data security ensures that sensitive information remains protected, minimizing the risks associated with physical document handling. The availability of digital records also allows for easy retrieval and access to historical filings, simplifying future trademark-related processes for our clients.

Real-Time Monitoring and Updates: The online filing system empowers our law firm and our clients with real-time monitoring capabilities. We can track the progress of trademark applications, receive updates on important milestones, and promptly address any issues that may arise during the filing process. Our clients can stay informed and engaged throughout the trademark registration journey, fostering greater transparency and trust in our legal services.

Expanded Services and Streamlined Communication: The online platform opens up new opportunities for our law firm to offer expanded services and enhanced communication channels. We can now cater to a broader range of clients, including those from remote locations, without compromising on the quality of our services. With digital communication tools, we can maintain direct and prompt contact with our clients, addressing their queries and providing updates more efficiently.

Commitment to Client Satisfaction and Success: At the heart of this transformative change is our unwavering commitment to our clients’ satisfaction and success. The online trademark filing system aligns with our core values of providing reliable, innovative, and client-centric legal services. By embracing digitalization, we ensure that our clients receive the best-in-class solutions, empowering them to protect their intellectual property rights effectively.

 The advent of the online trademark filing system has opened a new chapter in our law firm’s journey to excellence in trademark services. Embracing this technology-driven approach allows us to better serve our clients, simplifying the filing process, reducing costs, and enhancing communication. With the power of digitalization at our disposal, our law firm is poised to lead the way in providing cutting-edge legal solutions for trademark filing, solidifying our position as a trusted partner in safeguarding our clients’ intellectual property rights.

Future Digitalization Initiatives of IP services: The successful implementation of the online trademark filing system sets the stage for future digitalization initiatives by IPO-Pakistan. The organization is committed to expanding this efficient approach to other areas of IP, including copyright, patent, designs, and geographical indications. Once these systems are digitized, applicants in various IP fields can expect similar benefits, revolutionizing the overall IP registration landscape in Pakistan.

Looking Ahead: More to Come IPO-Pakistan and PITB’s unwavering efforts have borne fruit with the successful launch of the online trademark filing system. The collaborative commitment to digitalization will continue, with IPO-Pakistan planning to introduce online regimes for conducting IP searches through digitalized records. This forthcoming feature will enhance access to vital information and contribute to a more transparent and accessible IP ecosystem in the country.

 The introduction of the online trademark filing system marks a significant milestone in Pakistan’s IP landscape, reflecting the commitment of IPO-Pakistan and PITB to modernizing and enhancing service delivery. As applicants embrace the benefits of this user-friendly and efficient platform, the stage is set for further digitalization of IP processes. The Pakistani nation can look forward to a more accessible, transparent, and cost-effective system that will support innovation and creativity in various industries.

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Josh and Mak International offers a comprehensive range of legal services to both individuals and companies in Pakistan and abroad. Their expertise spans various legal areas where IP rights intermingle with other areas of law, including but not limited to:

Legal Services in the Area of Trademark Law Offered by Josh and Mak International in Pakistan

Josh and Mak International provides comprehensive legal services in the field of trademark law in Pakistan. Our team of experienced trademark lawyers is well-versed in all aspects of trademark registration, protection, enforcement, and dispute resolution. We offer the following services to our clients:

1. Trademark Registration: We assist clients in navigating the trademark registration process in Pakistan. Our services include preparing and filing trademark applications with the relevant authorities, conducting comprehensive trademark searches to identify potential conflicts, and advising on the selection and classification of trademarks.

2. International Trademark Agreements: We advise clients on the international trademark agreements ratified by Pakistan and their implications for trademark protection and enforcement.

3. Regulatory Bodies and Eligibility: We provide information on the governmental bodies responsible for regulating trademark law in Pakistan and guide clients on who is eligible to apply for trademark registration.

4. Scope of Trademark Protection: Our team advises on what can and cannot be protected and registered as a trademark in Pakistan, ensuring that clients’ trademarks receive adequate protection.

5. Trademark Rights and Registration: We explain the significance of trademark registration in establishing and enforcing trademark rights. We also clarify whether trademark rights can be established without registration in Pakistan.

6. Protection of Foreign Trademarks: We guide clients on the protection of famous foreign trademarks in Pakistan, even if not used locally, and the evidence required for such protection.

7. Benefits of Trademark Registration: We elaborate on the benefits of trademark registration in Pakistan, including enhanced legal protection and exclusive rights over the trademark.

8. Trademark Application Filing: We provide assistance with the preparation of trademark application documents and explain the rules governing the representation of a mark in a trademark application in Pakistan. We inform clients about electronic filing options and the availability and importance of trademark searches prior to filing.

9. Timeframe and Costs of Registration: Our team outlines the typical timeframe and costs associated with obtaining a trademark registration in Pakistan. We explain factors that can affect the estimated time and cost of the filing process.

10. Classification System and Multi-Class Applications: We guide clients on the classification system used for trademarks in Pakistan and the possibility of filing multi-class applications to achieve cost savings.

11. Examination and Opposition Proceedings: We explain the procedure followed by the trademark office in Pakistan for determining whether to grant registration and if applications are examined for potential conflicts with existing trademarks. We provide guidance on responding to rejections and the acceptance of letters of consent.

12. Use and Proof of Use: We clarify the requirements for use of a trademark before registration is granted in Pakistan and the submission of proof of use.

13. Priority Rights and Non-Use Challenges: We advise on priority rights for foreign trademark registrations in Pakistan and the time period for use to maintain registration. We explain the procedure for opposing bad-faith applications.

14. Trademark Validity and Maintenance: We inform clients about the validity period of trademark registration in Pakistan and the requirements for maintaining it, including use of the trademark.

15. Enforcement and Infringement Proceedings: Our team explains the legal and administrative proceedings available to enforce trademark rights against infringers, including specialized courts and tribunals for trademark infringement cases in Pakistan. We also inform clients about criminal law provisions for trademark infringement.

16. Trademark Infringement Defences: We provide information on the available defences against charges of trademark infringement in Pakistan.

17. Remedies and ADR for Trademark Disputes: We explain the remedies available to successful parties in trademark infringement or dilution actions, both civil and criminal. We also inform clients about the use and enforceability of alternative dispute resolution (ADR) techniques for trademark disputes.

 Josh and Mak International is committed to offering comprehensive and specialized legal services in trademark law in Pakistan. Our experienced team provides expert guidance and assistance throughout the trademark registration process, protection, enforcement, and resolution of trademark disputes, ensuring that our clients’ intellectual property rights are safeguarded effectively.

Furthermore Josh and Mak International can also offer a range of specialized legal services where intellectual property (IP) rights in Pakistan intersect with other areas of law. Our team of experienced lawyers can provide comprehensive advice and representation in the following areas:

1. Corporate Law and IP Rights: We can assist businesses in understanding the implications of IP rights on their corporate structure and transactions. This includes advising on IP due diligence during mergers and acquisitions, drafting IP clauses in commercial agreements, and handling IP-related issues in corporate restructuring.

2. Commercial Law and Licensing: Our team can draft and negotiate licensing agreements for the use of trademarks, patents, copyrights, and other IP rights in various commercial ventures. We ensure that these agreements comply with relevant laws and safeguard our clients’ interests.

3. Technology Law and IP: We provide legal guidance on the protection and commercialization of technology-related IP assets. This includes drafting technology transfer agreements, software licensing agreements, and advising on data protection and privacy laws.

4. Media and Entertainment Law: We offer services to protect the IP rights of clients in the media and entertainment industries. This includes advising on copyright protection for creative works, negotiating licensing deals, and handling infringement disputes.

5. Internet and E-Commerce Law: We provide legal counsel on IP issues related to e-commerce businesses, including domain name disputes, online copyright infringement, and liability of internet service providers.

6. Competition Law and IP Rights: We advise clients on the interface between competition law and IP rights, ensuring that IP-related agreements comply with competition regulations and addressing issues of anti-competitive behavior related to IP.

7. Data Protection and IP: We assist clients in understanding the interplay between data protection laws and IP rights, especially in cases involving databases, customer lists, and other data-driven assets.

8. Health and Pharmaceutical Law: Our team provides legal advice on IP rights in the pharmaceutical and healthcare industries, including patent protection for drugs, regulatory compliance, and handling IP-related disputes.

9. Consumer Protection and IP: We advise clients on issues of false advertising, misleading branding, and product imitations that may infringe on IP rights while also implicating consumer protection laws.

10. Dispute Resolution and IP Enforcement: We have a strong focus on enforcing IP rights and handling infringement disputes through litigation or alternative dispute resolution methods.

11. Employment and IP Rights: We counsel clients on IP rights in employment contracts, confidentiality agreements, and non-compete clauses to protect their valuable IP assets.

12. International Trade and IP: Our team assists clients in navigating IP issues in the context of international trade, including cross-border licensing agreements and IP enforcement in foreign jurisdictions.

In summary, Josh and Mak International offers a comprehensive range of legal services that address the intersection of IP rights with various other areas of law in Pakistan. Our aim is to provide clients with practical and effective solutions that safeguard their IP assets while complying with relevant legal frameworks.

Legal Updates on Trademark Law in Pakistan by Josh and Mak International:

(1) LEGAL ALERT – Ref: WIPO INFORMATION NOTICE NO. 14/2023

Re: Madrid Protocol Concerning the International Registration of Marks – Change in Individual Fee Amounts for Pakistan

We hope this message finds you well. As part of Josh and Mak International’s commitment to keeping you informed about important developments in intellectual property regulations, we wish to bring your attention to the recent changes in the individual fee amounts for Pakistan under the Madrid Protocol concerning the International Registration of Marks.

Effective from July 1, 2023, the World Intellectual Property Organization (WIPO) has established new amounts, in Swiss francs, for the individual fee payable when Pakistan is designated in an international application, subsequent designation, or the renewal of an international registration.

The updated individual fee amounts are as follows:

  • Application or Subsequent Designation:
    • Until June 30, 2023: 75 Swiss francs for each class of goods or services.
    • As from July 1, 2023: 54 Swiss francs for each class of goods or services.
  • Renewal:
    • Until June 30, 2023: 66 Swiss francs for each class of goods or services.
    • As from July 1, 2023: 48 Swiss francs for each class of goods or services.

Please take note that these revised fee amounts are applicable in the following scenarios:

(a) When Pakistan is designated in an international application received by the Office of origin on or after July 1, 2023.

(b) When Pakistan is subject to a subsequent designation received by the Office of the Contracting Party of the holder or filed directly with the International Bureau of WIPO on or after July 1, 2023.

(c) When Pakistan has been designated in an international registration renewed on or after July 1, 2023.

It is essential to stay updated with these changes to ensure compliance with the latest fee requirements for international trademark registration in Pakistan.

For any further assistance or clarification on this matter, please do not hesitate to contact our expert team at Josh and Mak International. We are here to provide you with professional guidance and support in all matters related to intellectual property.

Context: The Madrid System, also known as the Madrid System for the International Registration of Marks, is an international trademark registration system administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. It offers a convenient and cost-effective solution for registering and managing trademarks worldwide, allowing trademark holders to protect their marks in multiple contracting countries by filing a single application at WIPO and paying a single set of fees.

Pakistan deposited its instrument of accession to the Madrid Protocol on February 24, 2021, becoming the 108th member of the Madrid System, which currently covers 124 countries. The Madrid Protocol will come into force in Pakistan on May 24, 2021, which will have significant implications for various stakeholders in the country.

For the lawmakers in Pakistan, the primary legislation governing trademarks is the Trade Marks Ordinance 2001 supplemented by the Trade Marks Rules 2004, which do not currently provide for filing or dealing with applications under the Madrid Protocol. To facilitate filings under the Madrid Protocol, the lawmakers in Pakistan will need to urgently update or amend the law and make necessary provisions in the rules.

Once the Madrid Protocol is in force, the Pakistan Trade Marks Registry’s role will be to certify international applications and forward them to WIPO for further processing. However, the Registry may face challenges in dealing with the pending backlog of applications, which should be addressed before the enforcement date of the Madrid System. Hiring more personnel and providing training to the staff will be essential to manage the increased workload effectively.

The Madrid Protocol’s implementation will also involve changes in the fee structure for trademark applications in Pakistan. While the international registration process offers advantages for trademark owners seeking protection in multiple countries, the associated costs should be considered. Although international registration can be more expensive initially, it offers long-term cost benefits when compared to filing separately in each jurisdiction.

Trademark owners who have interests in multiple countries, especially those contracting countries under the Madrid System, will find the Madrid Protocol advantageous due to its simplified and cost-effective application procedure. However, they will need to ensure that a basic registration or application has been made in Pakistan before availing the benefits of the international registration system.

Overall, Pakistan’s accession to the Madrid System is seen as a significant move for the country’s economy. Small and medium-sized enterprises and entrepreneurs in Pakistan stand to benefit from the Madrid System. Additionally, it will attract companies interested in protecting and bringing their brands to Pakistan, thereby positively impacting the nation’s economy.

Pakistan’s adoption of the Madrid Protocol marks a substantial development for the country’s trademark registration system, offering both opportunities and challenges for various stakeholders. It will be crucial for the lawmakers, the Trade Marks Registry, and trademark owners to prepare for the implementation and make necessary adjustments to fully utilize the benefits of the Madrid System.

Learn more about the Madrid Protocol and Trademarks in Pakistan below:

The Madrid Protocol: A Global Gateway to Trademark Registration

In the fast-paced global economy, securing trademark registration in multiple countries can be a daunting and expensive process. However, the Madrid Protocol, an international treaty in force since April 1, 1996, has revolutionized trademark registration by offering a convenient and cost-effective solution for businesses seeking protection in multiple member countries.

Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), the Madrid Protocol is an effective system of international registration of marks. Recently, Pakistan joined the Madrid Protocol on 24th February, 2021, and ratified it on 24th May, 2021, which means that trademark applications under the Madrid Protocol are now being accepted by Pakistan from 24th May, 2021.

Part of the Madrid System, the Madrid Protocol brings together a group of countries forming the Madrid Union. This streamlined system utilizes three official languages – English, French, and Spanish – for the application process, and the submission of fees is done in Swiss Francs. Instead of filing separate applications in different trademark offices, with different languages and currencies, the applicant can now file a single application in one language and pay the fees in a single currency, making the process much more efficient.

To be a part of the Madrid Protocol, a country must already be a member of the Paris Convention for the Protection of Industrial Property, and Pakistan became a member of the Paris Convention back in 2004, making it eligible for accession to the Madrid Protocol.

The procedure for obtaining trademark protection under the Madrid Protocol involves the applicant forwarding an international application to the International Bureau (IB) of WIPO through the Trademarks Registry in Karachi, acting as the Office of Origin (OO). The IB then formally examines the application and publishes it in the international gazette of WIPO. Substantive examination of the mark is then conducted by the designated countries, according to their national laws, within 12 or 18 months. If accepted, the mark is registered in those countries.

It’s important to note that the protection of an international registration remains dependent on the registered or applied mark in the Office of Origin for the first five years from the date of its registration. If the basic registration in the Office of Origin ceases to have effect within this period, the international registration loses its protection.

An international registration is valid for 10 years from the date of its registration, and it can be renewed further by paying the prescribed renewal fee before each 10-year period expires.

The Madrid Protocol also offers flexibility in managing trademark registrations. Changes such as a change in name or address of the applicant/holder, a change in ownership, or a limitation of goods and services can be recorded and have effect through a single procedure with the International Bureau (IB) upon payment of the prescribed fee.

With Pakistan’s accession to the Madrid Protocol, the Trade Marks Registry (TMR) in Karachi will now have dual roles – as the Office of Origin (OO) for international applications originating from Pakistan and as an office of the designated Contracting Party (CP) where applicants seek trademark protection in Pakistan. This is a significant step towards facilitating and simplifying the process of securing trademark rights for businesses in Pakistan.

In conclusion, the Madrid Protocol stands as a powerful tool for businesses seeking international trademark protection, providing a unified and cost-effective approach to secure trademark registration in multiple member countries, including Pakistan.”

Pakistan’s Involvement in the Madrid System as Office of Origin (OO)

As a member of the Madrid Protocol, Pakistan plays a significant role as the Office of Origin (OO) for international trademark applications. The Trade Mark Registry (TMR) of IPO-Pakistan is responsible for receiving these International Applications.

Upon receiving international applications, the TMR diligently verifies them to ensure they comply with the provisions of the Madrid Protocol. If the applications meet all the necessary requirements, the TMR certifies and transmits them to the International Bureau of the World Intellectual Property Organization (WIPO).

In some cases, the International Bureau of WIPO may identify irregularities in the international applications transmitted by the TMR. When such irregularities are found, the International Bureau notifies both the applicant (or their representative) and the TMR about the issues that need correction. The applicant is then required to address and correct these irregularities. The TMR takes prompt action to respond to the notification of irregularities from the International Bureau.

In the event that the basic registration or basic application, on which the international registration is based, ceases to be in existence within the first five years from the date of international registration, the TMR dutifully communicates this information to the International Bureau of WIPO.

As the Office of Origin, Pakistan’s Trade Mark Registry (TMR) plays a crucial role in the efficient processing and verification of international trademark applications under the Madrid System. By ensuring that applications meet the necessary standards and promptly addressing any irregularities, Pakistan contributes to the smooth functioning of the Madrid Protocol and supports businesses seeking international trademark protection.

Pakistan’s Role as Office of Designated Contracting Party (CP)

In its capacity as an Office of Designated Contracting Party (CP) under the Madrid System, the Trade Mark Registry (TMR) of Pakistan plays a crucial role in handling international registrations in which Pakistan has been designated.

Upon notification from the International Bureau (IB) of WIPO, the TMR records the relevant particulars of the international registrations. These registrations are then examined in accordance with the provisions of the Trade Marks Ordinance and Rules. During the examination process, if any objections arise or if there is opposition received from a third party after the publication of the mark in the Trademarks Journal, the TMR communicates a provisional refusal to the International Bureau, citing the basis of the refusal (whether due to examination findings or opposition).

The TMR continues its procedures under the Trademarks Ordinance and Rules to address the provisional refusal. After completion of all the necessary processes, the TMR will either withdraw the provisional refusal or confirm it, either fully or partially. Based on the outcome, the TMR grants protection to the international registration in Pakistan accordingly. Subsequently, the TMR notifies the International Bureau of WIPO regarding the status of the protection granted.

In addition to handling initial registration matters, the TMR also takes care of post-registration updates such as renewals and any changes made to the registration. Whenever notified by the International Bureau of WIPO about these post-registration matters, the TMR ensures that the necessary updates are accurately recorded and maintained.

Through its diligent examination and registration procedures, Pakistan’s Trade Mark Registry (TMR) contributes to the effective functioning of the Madrid System and ensures that international trademark registrations designated to Pakistan receive appropriate protection and maintenance.

Requirements for Filing International Application through Office of Origin (OO)

Applicants seeking to file an international registration of trademark under the Madrid Protocol in Pakistan must meet one of the following three standards:

  • Nationality: The applicant must be a national of Pakistan.
  • Domicile: The applicant must be domiciled in Pakistan.
  • Business Establishment: The applicant must have a real and effective business or commercial establishment in Pakistan.

Additionally, the applicant must possess a national trademark application filing number or registration number issued by the Trade Marks Registry, Karachi. This national mark will serve as the basis for the international application. The trade mark used in the international application should be the same as the one mentioned in the national trade mark application or registration. Moreover, the list of goods and services in the international application must correspond with those specified in the basic mark. It is worth noting that the applicant can designate multiple other member countries of the Madrid Protocol where they intend to protect their mark.

The International Application can be submitted using form MM 2, following the instructions attached to it. This form can be submitted in either paper form, through email, or via Madrid E-filing. A gateway for submitting form MM2 is available on the office website www.ipo.gov.pk or on WIPO’s website [insert WIPO website link]. To complete the filing process, the applicant is required to pay a handling fee of Rs 5000/- through the designated payment gateway.

By adhering to these requirements, applicants can proceed with the international registration of their trademark through the Office of Origin in Pakistan and avail the benefits of the Madrid Protocol for protecting their mark in multiple member countries.

Receiving International Registrations Designating Pakistan

Upon receiving an International Application, the International Bureau (IB) conducts an examination to ensure its compliance with the Madrid Protocol and the Common Regulations. This examination focuses on formalities, including the classification and list of goods and/or services. If the application is found to be in order without any irregularities, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies each designated Contracting Party, including Pakistan, of the registration.

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For international registrations designating Pakistan, the Trade Marks Registry (TMR) in Karachi examines them under the provisions of the Trade Marks Ordinance & Rules. If there are any objections, a provisional refusal is communicated to the International Bureau of WIPO within 18 months from the date the international registration was notified to Pakistan. The International Bureau records this provisional refusal and communicates it to the applicant of the international registration. The holder of the registration has the opportunity to respond to the provisional refusal. The TMR then considers the applicant’s response or may confirm the refusal, leading to the publication of the international registration in the Trade Marks Journal, allowing for opposition.

International designations face opposition in the same manner as national marks, through the filing of Form TM-5, along with a statement of grounds of opposition and the prescribed fee. If opposition is received within the prescribed period after publication of an international registration in the trademark journal, the TMR immediately communicates the provisional refusal based on opposition to WIPO. The opposition is handled in accordance with the relevant provisions of the Trade Marks Ordinance & Rules, and the final decision is subsequently notified to the IB of WIPO.

The notice of opposition may be filed by the opponent (having an address in Pakistan) or through a registered trademark agent or lawyer/advocate with an address in Pakistan, representing and working on behalf of the opponent before the Registrar of the Trade Marks Registry.

If the holder of the international registration intends to defend their registration in Pakistan, they must file a counter statement using form TM-6. To do so, the applicant must engage a trademark agent/attorney with an address in Pakistan, executing a Power of Attorney in favor of the agent/attorney using form TM-48.

Upon completion of all examination and opposition processes without any grounds for refusal, a notification of the grant of protection will be sent to the International Bureau of WIPO through the system.

All international registrations that have been granted protection in Pakistan will be published in the trademark journal. This publication will consist of a list of International Registration Numbers or any corresponding numbers in Pakistan, if applicable. Note that no separate registration certificate will be issued for international designations.

As an IP firm in Pakistan, Josh and Mak International can offer a comprehensive range of services to assist clients with trademark registration in the context of the Madrid Protocol and the Common Regulations. These services include:

  • International Application Filing: Josh and Mak International can help clients prepare and file international trademark applications through the Office of Origin (OO) in Pakistan. They will ensure that the application meets all the necessary requirements of the Madrid Protocol and the Common Regulations.
  • Examination and Compliance: The firm will carefully examine the international applications received from the International Bureau (IB) to ensure compliance with the local laws and regulations of Pakistan. They will verify the classification and list of goods and/or services to avoid any irregularities.
  • Handling Irregularities: In case any irregularities are found in the international application, Josh and Mak International will work with the applicant to rectify and correct those irregularities as per the guidelines of the Madrid Protocol.
  • Provisional Refusals: If Pakistan is designated in an international registration and the Trade Marks Registry (TMR) issues a provisional refusal, the firm will assist clients in responding to the refusal and presenting their case effectively.
  • Opposition Proceedings: Josh and Mak International will represent clients in opposition proceedings, where relevant, by filing Form TM-5 and preparing a statement of grounds of opposition to protect their rights and interests.
  • Counter Statements: If clients’ international registrations face opposition, the firm will prepare and file counter statements on their behalf (Form TM-6) to defend their registrations in Pakistan.
  • Post-Registration Matters: The firm will keep track of post-registration matters, such as renewals and changes, and promptly update the TMR as notified by the International Bureau of WIPO.
  • Legal Advice and Consultation: Clients will receive expert legal advice and consultation on all aspects of the Madrid Protocol and the Common Regulations. The firm will guide them through the entire process, from filing to registration.
  • Recordal of Changes: Josh and Mak International can assist clients in recording subsequent changes to their international registrations, such as changes in name, address, ownership, or a limitation of goods and services.
  • Monitoring and Enforcement: The firm will help clients monitor their trademark rights and enforce them against any potential infringements or violations in Pakistan.
  • Renewals and Maintenance: Josh and Mak International will keep track of renewal deadlines and assist clients in maintaining their international registrations in Pakistan.
  • Coordination with WIPO: The firm will handle all communications with the International Bureau of WIPO and ensure that all necessary documents are submitted correctly and promptly.

Overall, Josh and Mak International will provide a streamlined and efficient service to facilitate the trademark registration process for their clients in Pakistan within the framework of the Madrid Protocol and the Common Regulations. They will work diligently to protect their clients’ trademark rights and help them navigate the complexities of international trademark registration.

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Josh and Mak International offer a wide range of legal services to cater to the diverse needs of individuals and companies in Pakistan and abroad. With their experienced legal team, clients can rely on them for expert guidance and support across various legal domains, ensuring effective and efficient resolution of legal matters.

Trademark law plays a crucial role in protecting brands and fostering a competitive business environment. In Pakistan, trademark rights are governed by specific legislation and international agreements. Understanding the legal framework, registration process, enforcement mechanisms, and available remedies is essential for businesses seeking to establish and protect their trademarks in the Pakistani market. In this article, we provide a comprehensive guide to trademark law in Pakistan, with an emphasis on the legal landscape, registration requirements, enforcement procedures, and available remedies.

Primary Legislation and International Agreements:

Trademark law in Pakistan is primarily governed by the Trade Marks Ordinance, 2001. This legislation outlines the legal provisions for trademark registration, enforcement, and protection. Furthermore, Pakistan has ratified international agreements such as the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which provide additional protections for trademarks.

Government Bodies Responsible for Trademark Regulation:

The Intellectual Property Organization of Pakistan (IPO-Pakistan) is the primary governmental body responsible for administering trademark registration and enforcement. IPO-Pakistan plays a vital role in processing trademark applications, conducting examinations, and maintaining the trademark register.

Eligibility and Registration:

Any individual or entity, including domestic and foreign applicants, can apply for trademark registration in Pakistan. The applicant must meet specific requirements, including providing a clear representation of the mark, specifying the goods or services associated with the mark, and paying the prescribed fees. The registration process involves examination, publication, and issuance of the registration certificate.

Protection and Enforcement:

Trademark rights can be established through registration; however, common law rights may also be recognized based on prior use and reputation. Trademark owners in Pakistan have several enforcement options, including civil and criminal remedies. Civil remedies include seeking preliminary or permanent injunctions, damages, and account of profits. Criminal actions can be initiated for offenses such as false representation of a registered trademark.

Benefits of Trademark Registration:

Registering a trademark in Pakistan offers numerous benefits, including exclusive rights to use the mark, legal presumption of ownership, protection against infringement, and the ability to enforce trademark rights in court. Additionally, registered trademarks can serve as valuable business assets and can be licensed or assigned to other parties.

Registration Process and Costs:

The timeline and costs associated with trademark registration in Pakistan can vary depending on various factors, including the complexity of the mark and any potential objections or oppositions. On average, the registration process takes several months to complete, and costs depend on the number of classes and legal fees incurred.

Classification System and Examination:

Pakistan follows the International Classification System for trademarks. Multi-class applications are available, allowing applicants to cover multiple goods or services under a single application. The trademark office examines applications for potential conflicts with existing trademarks and may request additional information or clarification. Applicants have the opportunity to respond to rejections or objections raised during the examination process.

Use and Proof of Use:

While the use of a trademark before registration is not mandatory in Pakistan, it is necessary to maintain the registration and defend against non-use challenges. Proof of use may be required in certain instances, and evidence such as invoices, packaging, advertising materials, and promotional material can establish bona fide use of the mark.

Opposition and Cancellation Proceedings:

Trademark applications are published for opposition in Pakistan, allowing third parties to oppose the registration if they believe it infringes upon their existing rights. Post-registration, cancellation proceedings can be initiated based on specific grounds, including non-use or bad faith registration.

Remedies and Enforcement:

Successful parties in infringement or dilution actions can seek remedies such as preliminary or permanent injunctions, damages, and account of profits. Criminal remedies are also available for offenses related to trademark infringement. Enforcement procedures may involve specialized courts or tribunals, with the possibility of appeals to higher courts.

Trademark registration and protection are essential elements for businesses operating in Pakistan. Familiarizing oneself with the legal framework, registration process, enforcement mechanisms, and available remedies is crucial for establishing and safeguarding trademark rights. By understanding the trademark landscape in Pakistan, businesses can effectively protect their brands and ensure a competitive edge in the marketplace.

Trademark Filing and Prosecution in Pakistan: Protecting Your Intellectual Property

Welcome to the Josh and Mak International legal services blog! In this article, we will delve into the important topic of trademarks in Pakistan, their significance, and how you can protect your intellectual property rights through trademark filing and prosecution.

Understanding Trademarks

A trademark, trademark, or trademark is a distinctive sign or indicator used by individuals, businesses, or legal entities to identify their products or services to consumers, indicating that these goods or services originate from a unique source. It serves to distinguish their offerings from those of other entities in the market. Trademarks can take various forms, including names, words, phrases, logos, symbols, designs, images, or combinations of these elements.

Trademark Symbols in Pakistan

In Pakistan, trademarks can be designated by the following symbols:

  • TM: This symbol represents an unregistered trademark used to promote or brand goods.
  • SM: This symbol is used for an unregistered service mark, indicating promotion or branding of services.
  • ®: The “R” symbol denotes a registered trademark. Registering a trademark provides stronger legal protection and benefits for the trademark owner.

Non-Conventional Trademarks

Apart from the standard trademark categories mentioned earlier, there are non-conventional trademarks as well. These trademarks do not fall into the typical categories and can include marks based on color, smell, sound, or other unique characteristics.

The Importance of Trademark Registration

While trademark registration is not mandatory in Pakistan, it offers significant advantages to the trademark owner. Having a registered trademark allows the owner to initiate legal proceedings against any unauthorized use or infringement of their trademark. This legal protection empowers them to safeguard their brand identity and reputation.

Common Law Trademarks

Even without registration, a common law trademark can still be protected to some extent. However, the protection is limited to the geographic area where the mark has been used or where its expansion can be reasonably expected.

Enforcing Trademark Rights

If your registered trademark faces infringement issues, you have the legal right to initiate legal proceedings against the infringing party. This helps prevent further unauthorized use of your trademark and protects your business interests.

Service Marks

In certain cases, trademarks are used in connection with services rather than products. In such instances, they may be referred to as service marks, particularly in the United States.

In conclusion, trademarks play a crucial role in distinguishing your products or services in the market. Whether you opt for registration or rely on common law protection, safeguarding your trademark is essential to maintain your brand’s reputation and uniqueness. If you encounter trademark infringement, taking appropriate legal action will help you protect your intellectual property rights effectively.

If you need assistance with trademark filing, prosecution, or any other legal matters related to intellectual property in Pakistan, do not hesitate to reach out to Josh and Mak International. Our experienced legal team is here to guide you through the process and protect your valuable assets.

Trademark Searches in Pakistan: Ensuring a Smooth Trademark Filing Process

Though not mandatory, conducting a preliminary search is a prudent step to safeguard your trademark rights.

Types of Trademark Searches in Pakistan

  • Word Mark Search: This type of search focuses on trademarks consisting of words or text. In Pakistan, trademark searches follow the Nice Classification system, which allows trademarks to be filed for goods in classes 1-34 and services in classes 35-45. The search can be conducted for the desired class and associated classes to ensure comprehensive coverage.
  • Device Mark Search: Device marks include trademarks with specific designs, logos, labels, or symbols. To search for device marks, the Vienna code is utilized in Pakistan.

The Importance of Comprehensive Trademark Clearance Search

A comprehensive trademark clearance search is highly advisable in Pakistan. This search provides a detailed analysis of the proposed trademark’s availability and potential conflicts with existing marks. By conducting this search, you can:

  • Identify identical or similar trademarks that may hinder your registration process.
  • Understand the potential risks of infringement and opposition from existing trademark owners.
  • Make informed decisions on whether to proceed with the trademark filing or consider modifications to avoid conflicts.

Company and Domain Search

In addition to the trademark search, it is also prudent to conduct a comprehensive search for the proposed trademark’s availability as a company name and domain name in Pakistan. This step ensures that the chosen mark is not already in use in these capacities, minimizing the risk of future legal complications.

Benefits of Conducting Trademark Searches

By performing trademark searches before filing an application, you can:

  • Save Time and Money: A comprehensive search helps avoid investing time and money in a trademark that may not be available for registration.
  • Strengthen Your Trademark Application: By choosing a unique and available mark, your chances of successful registration are significantly enhanced.
  • Prevent Legal Disputes: Conducting a search reduces the risk of infringing on someone else’s trademark rights, which could lead to costly legal disputes.

In conclusion, conducting trademark searches in Pakistan, whether for word marks or device marks, is a crucial step in the trademark filing process. It enables you to identify potential conflicts and make informed decisions about your chosen trademark. A comprehensive trademark clearance search, along with company and domain searches, can help you secure exclusive rights to your brand and avoid future objections and oppositions.

For professional assistance with trademark searches, filing, and prosecution in Pakistan, you can rely on Josh and Mak International. Our expert legal team is well-versed in trademark law and can guide you through the process to protect your valuable intellectual property effectively.

July (2023)

Update (1): Although the online system has been launched, no clarification has been given on the portal about expected timelines for the processing and registration of the trademark.This means that for the time being it is fair to assume the old timelines will apply (Personal Search Facility Personal Search Facility for quick information is available at Trade Marks Registry, Karachi, IPO-HQs, Islamabad and IPO-Regional Office, Lahore on receipt of bank draft amounting to Rs. 300/- for 15 minutes per client.For now this process will stay Manual until IPO notifies otherwise.We will keep this article updated)

Update (2) There is no mention of a Personal Online Trademark Search in the online system. The form 55 (Search Application Form) is available online however so you will get to know whether your trademark is already taken or not or in conflict with another owner’s trademark.

In the absence of information contrariwise, we are assuming that for the time being the personal search facility will be manual.

Update (3) TM 01 , Search Application Form TM-55 , TM 16 , TM 46 , TM 57  and Form II are available in the online portal.

Device Mark Search in Pakistan: Ensuring Protection for Unique Trademarks

When it comes to figuration trademarks, conducting a comprehensive device mark search is strongly recommended. Device marks include individual marks with distinctive stylized letters, numerals, shapes, plants, celestial bodies, living creatures, or combinations of such elements. In Pakistan, a device mark search is conducted based on the Vienna Code Classification system, which categorizes trademarks according to their visual representation.

Filing online trademark in Pakistan: Trademark Applications in Pakistan

Trademark applications in Pakistan fall into two categories:

  • Ordinary Applications: These are applications filed without claiming any priority from a previous application. In Pakistan, trademark applications can typically be filed for a single class only using form TM-1. Multi-class trademark applications are not accepted in Pakistan.
  • Priority Trademark Applications / Convention Trademark Applications: Priority applications involve claiming priority from a convention country where the applicant previously filed the trademark application. If you have filed a trademark application in a convention country, you can file a priority trademark application in Pakistan within six months of the date of the original application.

Filing a Priority Trademark Application in Pakistan

To claim priority in Pakistan from a convention application, you must submit a certified copy of the priority documents within three months from the date of filing the priority application in Pakistan.

The Paris Convention and National Treatment

The Paris Convention for the Protection of Industrial Property, established in 1883, aims to provide national treatment to applicants residing in member countries of the union. National treatment ensures that applicants from member countries are treated equally in any other member country regarding the grant and protection of industrial property rights. This principle is crucial to achieving the fundamental goals of the Paris Convention.

When filing a priority trademark application in Pakistan within six months of the convention application’s date, the trademark, if registered under the ordinance, will be considered as registered as of the date of the original application in the convention country. This date is deemed the date of registration for the purposes of the ordinance.Conducting a device mark search and understanding the different types of trademark applications available in Pakistan is essential for protecting your unique trademarks effectively. Whether you choose to file an ordinary application or claim priority from a convention country, adhering to the relevant procedures and timelines is crucial for a successful trademark registration process.

For expert guidance and professional assistance with trademark searches, filing, and prosecution in Pakistan, you can rely on Josh and Mak International. Our experienced legal team can navigate the complexities of trademark law to help you secure and protect your valuable intellectual property rights in Pakistan and beyond.

Filing online trademark in Pakistan: Trademark Classes for Goods and Services in Pakistan

In Pakistan, trademark applications are filed under 45 classes, which are categorized as follows:

  • Classes 1 to 34: These classes cover goods for which the trademark is intended to be used.
  • Classes 35 to 45: These classes are for service marks, which apply to services rather than physical goods.

The Trade Mark Rules, 2004, were introduced under the powers conferred by Sub-Section (1) of Section 132 of the Ordinance, 2001, and they became effective from April 02, 2004. An amendment was later made to Schedule IV of the Trade Mark Rules, 2004, which extended the classification of goods and services from 1 to 45. As a result, service mark applications are now filed and processed in addition to service classes 43 to 45.

Filing an Online Trademark Application in Pakistan

To initiate the process of trademark registration in Pakistan, the application is now  submitted to the Online Portal of the Intellectual Property Office at the IPO Website, using the prescribed form along with the required fees. Detailed information about the filing procedure can be accessed on the Pakistan Trademark Registry’s website.

Requirements and Eligibility for Filing online trademark in Pakistan:

Any individual or entity claiming to be the owner of a trademark can file an application for its registration concerning specific goods or services. The application must be filed at the trademark portal online.You must use your own CNIC and a mobile number connected to your CNIC.You may be asked to furnish proof of your connection to a company or entity unless you are filing as a sole proprietor.

Trademark Examination and Registration Process

After submitting the trademark application, the Trademarks Registry in Pakistan examines it for its inherent registrability and checks for any similarities with existing marks. If any objections are raised, an official examination report will be issued, requiring the applicant to respond and provide supporting documents showing how the mark is being used.

If the trademark application passes examination and is deemed allowable, an acceptance order is issued, and the trademark is published in the Trademarks Journal. If no oppositions are filed within two months (or within a further period not exceeding two months) from the date of publication, the trademark registration certificate is granted.

Duration of Trademark Registration when Filing online trademark in Pakistan:

Once a trademark is registered in Pakistan, it remains valid for ten years from the date of the application. After the initial ten-year period, the registration can be renewed for subsequent ten-year periods, starting from the expiration date of the current registration or the last renewal.

Trademark Registration Timeline (see above).As of July (2023) the IPO online procedure has not specified timelines as becoming shorter after the introduction of this service.

Trademark registration in Pakistan is a process that takes time. If no opposition is raised by third parties, it usually takes around 18 to 24 months to obtain registration from the filing date.

It’s essential to understand the trademark registration process in Pakistan and adhere to the necessary requirements to secure exclusive rights to your brand and protect your intellectual property effectively. If you have any questions or need assistance with trademark registration, Josh and Mak International are here to help you navigate the process and safeguard your valuable assets.

Trademark Filing Procedure in Pakistan

If you are planning to file a trademark in Pakistan, it’s essential to understand the step-by-step procedure involved. Below is the process for filing a trademark in Pakistan:

1. Filing the Trademark Application Online

  • Trademark applications in Pakistan are filed for a single class only. Multi-class trademark applications are not permitted.
  • You can also file a priority trademark application, claiming priority from a convention country, within six months from the priority date of the earlier application.

2. Official Examination and Office Action:

  • Once the application is filed, it undergoes an examination by the Registrar to assess its distinctiveness, potential for deception, and any conflicts with existing trademarks.
  • The Registrar will issue an official examination report within 3 months to 1 year, depending on the backlog at the registry.

3. Grounds for Refusal of Trademark:

The Registrar may accept or refuse the trademark application based on relative or absolute grounds of refusal:

a) Relative Grounds for Refusal:

  • A trademark may be refused if it is similar or identical to an earlier trademark for the same or similar goods/services.
  • It may also be refused if it is similar or identical to an earlier trademark but intended for different goods/services.

However, there are situations in which such marks can still be registered. This includes cases where the proprietor of the earlier trademark consents to the registration, or there has been an honest concurrent use of the later mark.

4. Overcoming Objections:

If the Registrar raises an objection to the registration of the trademark, the applicant must respond to the examination report with appropriate evidence and arguments to overcome the objections raised.

5. Acceptance and Publication:

If the trademark application is deemed acceptable after overcoming the objections, an acceptance order is issued. Subsequently, the trademark will be published in the Trademarks Journal, allowing a two-month period for any interested party to file an opposition.

6. Trademark Registration:

If no oppositions are filed within the stipulated time, the trademark registration certificate is issued, and the trademark is officially registered.

The trademark filing process in Pakistan involves several crucial steps, including examination, addressing objections, and publication. It’s essential to comply with the regulations and requirements to ensure a smooth and successful trademark registration. If you need expert guidance and support in filing a trademark in Pakistan, Josh and Mak International can provide you with professional assistance throughout the entire process. Our legal team can help protect your valuable intellectual property and secure your rights in the competitive market.

Absolute Grounds of Refusal of Trademark in Pakistan

When evaluating a trademark application, the Registrar in Pakistan may refuse registration based on absolute grounds. These grounds are related to the inherent characteristics of the trademark itself and include the following:

1. Lack of Distinctive Character:

If the trademark is devoid of any distinctive character, meaning it is not capable of distinguishing the goods or services of one person from those of others, it may be refused.

2. Descriptive Marks:

If the trademark consists exclusively of marks or indications that merely describe the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods, or characteristics of the services, it may be refused.

3. Customary Marks:

If the trademark consists exclusively of marks or indications that have become customary in the current language or established trade practices, it may also face refusal.

Exceptions to Absolute Grounds of Refusal:

There are situations in which a trademark initially refused based on absolute grounds can still be registered:

  • If the trademark acquires distinctive character through extensive and continuous use, becoming associated with the trademark owner alone.

Reply to Official Objections:

When objections are raised by the Registrar regarding a trademark application, the applicant is notified, and they have to respond to the objections with an appropriate reply supported by relevant documents within one month.

Acceptance and Publication:

If the Registrar accepts the application based on the reply and documents provided, the trademark is advertised in the official Trademarks Journal, which is published and made available on the Registry’s website.

See also  PPRA Rules Query

Understanding absolute grounds of refusal is crucial when filing a trademark application in Pakistan. It’s important to create a distinctive and unique trademark that sets your goods or services apart from others. If your trademark faces objections based on absolute grounds, providing compelling evidence of its distinctiveness through extensive use can increase the likelihood of successful registration.

For professional assistance and guidance in navigating the trademark registration process in Pakistan, you can rely on Josh and Mak International. Our experienced legal team can help you overcome objections and protect your intellectual property rights effectively.

Publication and Opposition of a Trademark in Pakistan

After the Registrar examines the trademark application and accepts the response provided by the applicant, the application is ordered for publication in the Trademarks Journal. The purpose of this publication is to invite the public to file any opposition against the registration of the mark.

Opposition Period:

Upon publication of the trademark in the Trademarks Journal, any person has the right to oppose the registration of the trademark by filing a notice of opposition within the prescribed period. In Pakistan, the opposition period is two months from the date the Trademarks Journal becomes available to the public.

Extension of Opposition Period:

If necessary, the opposition period can be extended for a maximum of two months by submitting a request for an extension of time along with the prescribed fee. The request for extension must be made before the expiry of the original two-month statutory period.

Trademark Registration and Renewal:

The trademark application will proceed to registration if there are no oppositions or if the opposition filed was decided in favor of the applicant. Once registered, the trademark is protected for a period of 10 years from the date of filing the application, and a registration certificate is issued to the trademark owner.

Trademark Renewal:

To maintain the trademark’s registration and protection, it must be renewed from time to time. The trademark can be renewed for an unlimited number of periods, each lasting 10 years. Failure to renew the trademark by paying the required renewal fees may result in the mark being removed from the registry due to non-renewal.

The publication of a trademark in the Trademarks Journal in Pakistan marks a critical stage in the trademark registration process. During the opposition period, any interested party has the opportunity to oppose the registration of the mark. If there are no oppositions or if the opposition is unsuccessful, the trademark proceeds to registration, providing the owner with exclusive rights to the mark for a period of 10 years. Regular renewal is essential to maintain the trademark’s protection indefinitely.

For expert assistance in the trademark registration, opposition, and renewal processes in Pakistan, you can rely on Josh and Mak International. Our experienced legal team can guide you through the complex procedures and help you protect your valuable intellectual property rights effectively.

This article will try to answer the following questions about TradeMark law in Pakistan:

  • What is the primary legislation governing trademarks in Pakistan?
  • Which international trademark agreements has Pakistan ratified?
  • Which governmental bodies are responsible for regulating trademark law in Pakistan?
  • Who is eligible to apply for trademark registration in Pakistan?
  • What can and cannot be protected and registered as a trademark in Pakistan?
  • Can trademark rights be established without trademark registration in Pakistan?
  • Does a famous foreign trademark receive protection in Pakistan even if not used locally?
  • If so, must the foreign trademark be locally famous in Pakistan? What evidence is required for protection of a foreign trademark in Pakistan?
  • What are the benefits of trademark registration in Pakistan?
  • What documents are required for filing a trademark application in Pakistan?
  • What rules govern the representation of a mark in a trademark application in Pakistan? Is electronic filing available for trademarks in Pakistan? Are trademark searches available or mandatory prior to filing in Pakistan? If so, what are the procedures?
  • How long does it typically take and what are the costs associated with obtaining a trademark registration in Pakistan? When does registration officially take effect? What factors can affect the estimated time and cost of filing a trademark application and obtaining registration in Pakistan?
  • What classification system is used for trademarks in Pakistan, and how does it differ from the International Classification System for goods and services? Can multi-class applications be filed, and what cost savings can be expected?
  • What is the procedure followed by the trademark office in Pakistan for determining whether to grant registration? Are applications examined for potential conflicts with existing trademarks? Are letters of consent accepted to overcome objections based on third-party marks in Pakistan? Can applicants respond to rejections by the trademark office in Pakistan?
  • Is use of a trademark required before registration is granted in Pakistan? Must proof of use be submitted?
  • Are foreign trademark registrations given any priority rights in Pakistan?
  • If registration is granted without use, is there a time period by which use must commence to maintain the registration or to defend against a non-use challenge by a third party in Pakistan?
  • Can symbols be used to indicate trademark use or registration in Pakistan? Is marking mandatory? What are the benefits and risks of using or not using such symbols or words for trademark registration in Pakistan?
  • Is there an appeal process available if a trademark application is denied in Pakistan?
  • Are trademark applications published for opposition in Pakistan?
  • Can a third party oppose an application prior to registration or seek cancellation of a trademark after registration in Pakistan?
  • What are the primary grounds for such challenges, and what are the procedures involved in Pakistan? Can a brand owner oppose a bad-faith application for its mark in Pakistan, even if it does not have protection in that jurisdiction?
  • How long does a trademark registration remain valid in Pakistan and what is required to maintain it? Is use of the trademark in Pakistan necessary for its maintenance? If so, what evidence of use is required?
  • What is the procedure for surrendering a trademark registration in Pakistan?
  • Can trademarks be protected under other intellectual property rights (e.g., copyright, designs) in Pakistan?
  • What rules govern the protection of trademarks online and domain names in Pakistan?
  • Can a license be recorded against a trademark in Pakistan? What are the benefits of recording a license, and are there any detriments to not doing so? What provisions are typically included in a licensing agreement for trademarks in Pakistan (e.g., quality control clauses)?
  • Can a trademark be assigned in Pakistan?
  • What documents are required for the assignment of a trademark under Pakistani law?
  • Is recording the assignment necessary for its validity in Pakistan?
  • Are security interests in trademarks recognized in Pakistan, and what form must they take?
  • What legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark in Pakistan?
  • Are there specialized courts or tribunals in Pakistan for trademark infringement cases?
  • Does the criminal law in Pakistan include provisions for trademark infringement or equivalent offenses?
  • What is the format of trademark infringement proceedings in Pakistan?
  • What is the burden of proof to establish trademark infringement or dilution in Pakistan?
  • Who has the right to seek a remedy for an alleged trademark violation in Pakistan, and under what conditions? Who can bring a criminal complaint for trademark infringement in Pakistan?
  • What border enforcement measures are available in Pakistan to stop the import and export of infringing goods?
  • Can activities taking place outside Pakistan support a charge of trademark infringement or dilution in Pakistan?
  • What discovery or disclosure methods are permitted for obtaining evidence from an adverse party, third parties, or parties outside Pakistan?
  • What is the typical timeframe for infringement or dilution actions, including preliminary injunctions, trials, and appeals in Pakistan?
  • What is the limitation period for filing a trademark infringement action in Pakistan?
  • What avenues of appeal are available for trademark infringement cases in Pakistan?
  • What defences are available against charges of trademark infringement or dilution in Pakistan?
  • What remedies, both civil and criminal, are available to a successful party in a trademark infringement or dilution action in Pakistan?
  • Are alternative dispute resolution (ADR) techniques available and commonly used for trademark disputes in Pakistan? Are they enforceable?

A Detailed Review of Pakistan’s Trademark Laws

The trademark laws in Pakistan can be complex to say the least. Here at Josh and Mak International we have compiled this definitive guide to help you gain the knowledge needed regarding trademarks in Pakistan. Remember, if you need any kind of assistance on trademark laws in Pakistan, please give one of our friendly team a call, we are always happy to help, as Pakistan’s Best Trademark lawyer team.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Ownership of marks and who can apply for them

Any person, irrespective of nationality, may apply to register a trademark in Pakistan. If you are the owner or proprietor of a mark it means that you have been entered onto the Trademarks Registry and have the right to use your mark in anyway that you deem fit.Any person already using the service or trade mark, or intends to use them in the future, can file an application to register them under the Trade Marks Ordinance 2001 as the sole proprietor of that service or trademark.In the event that two or more persons are co-proprietors of a trademark or service mark, the said mark would be jointly applied having an equal, undivided share in the trademark or service mark, subject to an agreement to the contrary.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : What can and can’t be registered and protected as a trademark.

you can register and protect any mark as a trademark as long as it’s capable of being graphically represented and will be used to distinguish either goods or services from others of the same ilk. In this concept, a mark includes devices, brands, labels, tickets, names including a personal one, slogans, signatures, words, letters, numerals, figurative elements and any other combination thereof.

Additionally, non-traditional marks can include sound and color and 3D designs can also be protected with trademark registration. There does, however, exist some ambiguity in regards to the the protection of odors due to the obvious problems of graphically representing them.

A mark may be refused protection and registration if it doesn’t satisfy a trademark’s definition which is set out in Section 2, clause 47 of the Ordinance. Furthermore, sections 14 and 17 in the Ordinance also clearly states the relative and absolute grounds for which a trademark may be refused such as below;

Any mark won’t be protected and registered as a trademark should the mark;

  • Be devoid of distinctive characteristics
  • Consist exclusively of any indications that could serve, in trade terms, to designate the quality, type, quantity, value, intended purpose, time of production, geographical origin, rendering of its services or displaying the characteristics of any other services or goods
  • Exclusively consist of indications which have become standard in a language or in the established practices of that trade

In terms of the right in the pursuance of registration, the registered proprietor has the legal right to initiate any action regarding infringement, unfair competition or passing whereas one who owns an unregistered trademark is only able to initiate action for passing off.

Generally, nobody has the right to pass off their services and goods as the services or good of anyone else and thus the action of passing off can be enforced in regards to both registered and unregistered trademarks. With regards to this, key elements are confusion and deception and therefore any mark, even one that isn’t entitled to be registered, that used in a manner that can cause confusion or deception gives rise to a prior user instituting proceedings under the common law.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Establishing trademark rights without registration

Trademark rights which aren’t registered can still be protected under the ‘passing off’ tort. However, plaintiffs who bring a claim under this tort have to produce evidence that establishes the following 3 part test;

  • The reputation and goodwill that is attached to the services and goods that are associated with the trademark
  • Any misrepresentation on the defendant’s behalf that leads, or could lead, the public to wrongly believe that the services and goods the defendant has supplied to be those belonging to the plaintiff irrespective of whether this misrepresentation was intentional or not
  • The plaintiff is either suffering, or is likely to suffer, from damage as a result of the defendant’s misrepresentation

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Due to the level of evidence that is required to substantiate passing off claims, it can be both a lengthy and expensive process.

Similarly, as stated in the Ordinance’s section 86, well known trademarks don’t need to be registered to be protected. As a signatory on the Paris Convention, Pakistan affords protection to the owner of any well known trademark who is currently domiciled in one of the convention countries or has an effective and real commercial or industrial establishment in one of the convention countries, irrespective of whether that person has any goodwill or carries out their business in Pakistan and any references given to the proprietor of this mark will be construed accordingly.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The cost and time frame of trademark registration

 It usually takes approximately 2 years to obtain your trademark registration if there isn’t any opposition.Should a third party object to the trademark the application could take longer.

The documents required include a power of attorney and a trademark representation such as packaging materials and product labels. The registry also requires evidence of genuine use by the applicant if any prior use has been claimed.

Furthermore, under S25 of the Ordinance, if a person has made a a convention application relating to a trademark and within 6 months from that date he or she, or their successor in title, should apply to the Pakistan registrar to register the same trademark under the rules of the Ordinance for some, or all, of the same services or goods or both under the times of the registration within that convention country. In this case, the person or their successor in title can claim priority when it comes to registering their trademark within Pakistan. The effect of this priority is such that when it comes to establishing the relevant date for the sole purpose of establishing the precedence of right the date used is the one when the initial convention application was made and whether or not the trademark can be registered is not affected by the use of any mark in Pakistan for the period from the date of that initial application and the date on which the application was filed for registration in Pakistan.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The classification system

As Pakistan is one of the convention countries it abides by S212 of the Trade Marks Ordinance 2001 in that both services and good are covered under the prescribed classification of services and goods as laid down in the Nice Classification, There are are a total of 45 classes with 1-34 dealing with goods and 35-45 dedicated to services.

No multi-class applications are available for registration or searches.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Examination procedures

The trademarks proprietor must file the TM-1 file and the registrar will assign you with an application number. The mark will then undergo an examination by the registry in order to determine that it falls within the ambit or definition of a trademark and also whether the register already contains some conflicting marks.

Should the trademark be found to not fulfill the necessary requirements, the registrar will issue an examination report on which he will have stated his objections and the trademarks proprietor is then required to file a statement in writing within one month stating their objections to those of the registrar. The application will then be listed for a hearing and after this the registrar will either accept the mark and advertise it in the Trademarks Journal or totally reject the application. If the latter is the case an appeal can be filed in the High Court which possesses competent and territorial jurisdiction.

Once this mark has appeared in the Trademarks Journal, any persons who could potentially be affected by this trademark being registered are effectively invited to file any objections they may have and the proprietor of the trademark can file a response to these.

The opponent must file evidence, the proprietor responds to this and when the registrar finally hears the case they then make the decision whether to grant the registration or not. Any decision the registrar makes during the opposition proceedings can be appealed against in the High Court.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The use of a trademark and the registration

The use of a service mark or trademark can be claimed before the registration is issued or granted. Proof of genuine use may, on the registrars request, be submitted. However, should the proprietor also express an intention to use that mark at some time in the future they will state that they propose to use it.

With Pakistan being one of the signatories on the Paris Convention, priority can be claimed providing that an application is filed within 6 months of the initial application being made in a convention country.

Should the registration be granted without use, the trademark’s proprietor has to use to mark within 5 years from the initial date of the registration in order to either maintain that registration or to defeat a non-usage challenge from a third party. No genuine use completed within 5 years of the date of registration can attract a claim of ‘trafficking in trademarks’ as this can be highly prejudicial to the relevant trademark.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : How to appeal against an application that has been denied

Whatever his decision, the registrar must communicate with the applicant in writing. Should this be a refusal, and the applicant wants to appeal against the decision, they must do so within a time frame of 1 month from the date stated in the TM-15 form on which the registrar is obliged to state his reason for the denial and which materials was used in order for this decision to reached. Any appeal that is made to the high court relating a registrar’s decision under either the Trademark Rules 2004 or the Trademarks Ordinance 2001 has to be made within 2 months of that decision or within a longer time frame which the High Court could allow. The High Court appeals procedure is the same as a civil case would be.

 

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Dealing with third party opposition/s

Accepted applications are then advertised in Trademark Journal which is any opposing parties invitation to officially lodge their opposition. Under S28(2) of the Trademarks Ordinance, any person can, via an application sent to the registrar in the required manner and accompanies by the prescribed fee, give notice of their opposition.

Any third party can raise opposition to a trademarks registration after the mark has been accepted and then advertised in the Trademark Journal.

The main reasons for such oppositions or challenges are listed in the S29 of the Ordinance and upon receiving the third parties notice of opposition the applicant has to file their counter statement within 2 months as if they fail to do this it will result in that application becoming null and void.

Should an applicant file a counter statement, the matter is then taken up, evidence is requested and a subsequent hearing will take place. Once this hearing is completed, the registrar will pass the order for either granting, denying or refusing the registration.

Furthermore, as the Trademarks Rules 2004, S80(5), any request for an extension to the statutory time frame for filing an opposition should be made to the registrar who will then, at his discretion, extend the time period if satisfied with the reason given for the delay and is also satisfied that this extension wouldn’t prove to be a disadvantage to any person or any party who would be affected by it.

As stated in Section 73(4), any application for cancellation or revocation can be made by any interested party, that includes the brand owner, who doesn’t have protection, can be made to either the registrar of the High Court as long as it’s a bad faith application.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Maintenance and duration of registration

From the date of the registration a trademark is deemed to be registered for 10 year and can then be renewed for another 10 years at the proprietor’s request subject to the payment of the prescribed renewal fee and as covered under S35 of the Ordinance.

The proprietor, in order to maintain his or her registration, must show genuine use of that trademark in Pakistan. Bone fide or genuine use of a trademark is also required for its maintenance and the evidence for this is usually in the form promotional and advertising materials, packaging and invoices.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The main benefits of registration

The registration of a trademark provides the prima facie ownership certificate that allows the registered proprietor to bring forth action for any infringement for unauthorized usage. The defendant has the burden of proof and they who are accused of the infringement must prove that they haven’t infringed about any kind of registered trademark. Infringement can only be claimed if that trademark is registered. Measures from border enforcement are also available with the Customs Act protecting owners of registered trademarks by the prohibiting of importing or exporting products that bear infringed trademarks. Complaints can be filed with the relevant customs authorities relating to this.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Trademark Licenses

Any license pertaining to a trademark can be recorded with the Trademarks Registry but this isn’t a legal requirement. Registered licenses establish the rights of the licensee and thus make it easier for them to protect their trademark against any misuse. As stated in S77 of the Trademark Ordinance 2001, licensees are entitled to launch infringement proceeding relating to any matter that will affect his or her interest if the proprietor of that registered trademark should refuse or fail to act within 2 months of being called to do so by the licensee.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : A brief explanation of assignment

Any registered trademark, irrespective of whether it’s a personal or movable property is allowed to be transmitted via assignment. Any kind of mark can be assigned, whether it has goodwill or not and this assignment can be for only some or all of the services and goods. The assignment can also be limited when it related to the use of a trademark in particular locality or manner. There are no requirements to include any other assets relating to the business.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Documentation

In order to establish its validity an assignment of a trademark is required to be recorded by the registrar. Once satisfied that all the correct documents have indeed been submitted, and that there are no third party interests that will be affected by the assignment, the trademarks registrar will issue the certificate of assignment that will validate the trademarks assignment and be in the name of the assigner.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Trademark security interests

A trademark is classed as an intangible property and thus the The Financial Institutions (Recovery of Finances) Ordinance 2001 is in charge of regulating and enforcing the security interests for all financial institutions and also recognizes both tangible and intangible properties for the purpose of creating security interests. Intangible properties such as patents, trademarks and assets are all subject to change but it is still seen as beneficial that the security interest be recorded in order to determine both its validity and how enforceable it is.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Marks that represent a trademark

Both ™ or SM are used when there is a pending application with the trademark registry and once the mark is registered the symbol ® is used. Whilst markings aren’t mandatory, it is considered beneficial to use then as this reduces the risk of anyone accused of infringement claiming innocence in terms of being unaware of either the status or the marks proprietary rights. Furthermore, the marking is a declaration of the proprietors rights over the pending or registered marks.

See also  Data Protection and the Employee's Digital Footprint (Pakistan)

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark Laws in Pakistan : Proceedings for infringement of a trademark

Any suit filed for trademark infringement is, by nature, a civil suit and thus follows the format stated in the Code of Civil Procedure 1908, whilst criminal complaints can filed under the procedure laid down in the Criminal Procedure Code 1898.

The complaint has to be filed in whichever court possesses the legal and territorial jurisdiction. It can be, and usually is, accompanied by further applications that seek urgent hearings and/or interlocutory relief. After the plaint has been instituted, the court will conduct a preliminary hearing to ascertain the suits maintainability.

Should the court find that the plaint does consist of issues that would be viable to take to trial it will order that the defendant be summoned on a set date and also state the mode and the manner by with the notices or summons will be served on the defendant.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

When they appear in court, the defendant will be present either in person or represented by counsel, and they will usually be granted a set time, possibly extended to one month or longer, in order to file their defence in writing along with their defence to any applications that have been filed for interlocutory injunctions. The time frame allowed for filing a defence application for an interlocutory injunction is generally shorted. Once that defence has been filed with the court they will set a date for hearing the arguments and make a decision on the granting of the interlocutory injunction or the orders. Alongside this, the court will conduct its proceedings for the main suit ensuring that the defendant files their main defence.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Once this main defence has indeed been filed, usually following any decision on an application for interlocutory injunction, the court will set a date for the framing of the issues. Once framed, the plaintiff must first produce evidence through any witnesses and then the defendant as both parties must submit this evidence. Discovery is permissible and, as a rule, testimony is live. Expert witnesses are permitted although their evidence is limited to whatever matters they have their expertise in. Upon the completion of both the examination and the cross-examination of the witnesses from all parties the case is then set down for all final arguments and the judgment will be made on the main case.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Criminal proceedings pertaining to trademarks

The Criminal Procedure Code 1898 governs trademark criminal enforcement mechanisms. The complainant has the choice of filing a private complaint with the judicial magistrate or going to the police with a formal complaint.

Private complaints that come before the judicial magistrate are examined and once they are satisfied with its admissibility the magistrate will issue a summons to the person accused of the infringement to appear before them.

Any complaint lodge with the police will result in a first information report being drawn up and the police will them institute the action and remand the accused into custody and, when summoned, present him or her in front of the judicial magistrate. The police will then prepare their final report, file it with the judicial magistrate and the trial will then commence.

Conclusions of criminal cases can’t be speculated as they depend on the outcome of the various procedure compliances.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The burden of proof

The registration certificate is the main proof of title in any action for trademark infringement or reputation dilution and the proprietor of that registered trademark can rely on their registration certificate to establish his or her case. However, it’s worth noting that the defendants unauthorized use of the trademark constitutes the infringement that is laid down in the Trademarks Ordinance 2001, Section 40.

Proceedings regarding passing off lays the burden of proof on the claimant and they have to illustrate there’s an equitable interest or right, that such interests are being violated and that this violation causes deception, confusion or both for consumers.

Trademark laws in Pakistan : Who can seek remedy for alleged trademark violation?

The registered trademarks proprietor, licensee, registered user or even an unregistered trademarks proprietor can see remedy for alleged violations of a trademark by way of passing off or infringement.

A licensee mightn’t be able to lodge an action suing for trademark violation unless the trademarks licensor is refusing to or doesn’t do it within 2 months of receiving the infringement notification as stated in S75 of the Ordinance. He or she could also do this if the license specifically grants the licensee the right to bring infringement proceedings.

By way of the registered user agreement, both the registered trademarks proprietor and user can bring a criminal complaints but an unregistered trademarks proprietor can only bring a passing off action, which carries a common law remedy.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark Law in Pakistan: Trademark foreign activities

Any activities taking place outside of the country the mark was registered in can also support a charge of dilution or infringement. Should the infringement have taken place outside of Pakistan other factors come into play such as where these goods were manufactured, advertised or sold. In short, the cause of the action must first be established before the case can be brought in Pakistan. If no evidence is produced the trademarks proprietor can bring about action within the country the alleged infringement takes place as long as that country is both a signatory on the Paris Convention and the TRIPs agreement.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Pakistan is also able to implement border enforcement which allows the trademarks proprietor to inform the customs authorities of the trademark infringement thus suspending the clearance of the infringed or counterfeit goods.

Pakistani customs officers are empowered by the customs act and can take action against both the importation and exportation of counterfeit goods and confiscate or seize those goods.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The trademark law of discovery

There are 2 main types of discovery covered by Pakistani law; discovery of fact and discovery of documents. The law pertaining to discoveries in regards to questioning facts allows the defendant or the plaintiff to deliver, with permission from the court, their interrogatories, in written form, to the other side and can specify that the recipient must respond. Either party can also seek documents for the reason of inspection from the other side that currently are, or were previously, in that party’s possession. The court has the discretion to grant a request for these documents to be produced and their decision will be based on how relevant to the case that document will be.

The law also restricts the actual scope of the interrogatories to such an extent that they must relate to one of the main matters that are being thrashed out by the parties in the official proceedings thus there is no place for any interrogatories that are deemed irrelevant. Every interrogatory must be answered via an affidavit and the court possesses the authority to direct any of the parties under interrogation to respond in detail to any questions which have been answered insufficiently or where no answer has been registered.

Before the court can order a document to be produced in order for the applicant to inspect it, the law demands that this document must either have been previously referred to during the party’s pleading or that party has relied on it.

In certain circumstances the court can, at its discretion, order that a copy, as long as it has been duly verified, of that document be produced rather than the original.

Should any party fail to answer the interrogation in whatever manner the court has directed, or fails to produce the required document, the court could, due to non-compliance of its orders and if the plaintiff is the defaulting party, dismiss the suit. Or, should the defendant be the defaulting party, the rights of defending the suit could be close

Furthermore, if the party who defaults when it comes to complying with the courts order to produce the document they won’t be entitled to either rely on this document in the future or derive any benefits from the document during the suits proceedings.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Costs of Litigation

The costs which are associated with any kind of dilution or infringement action, including preparation of trial, the actual trial and any ensuing appeals, very much depend on both the nature of that case and any legal costs

Technically, successful plaintiffs could recover any reasonable costs depending on how the court assesses the matter and also any losses suffered by that plaintiff. However, the courts in Pakistani are very reticent when it comes to granting pecuniary relief or costs in matters relating to IP, and in the rare cases when costs or damages were granted they have been limited to a very small fraction of the actual cost.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : The avenues of appeal

As stated in the Trademark Ordinance 2001, any suit relating to the infringement of a trademark will be instituted in the district court which exercises the original jurisdiction. Any decree, order or judgment that is passed by a district court can be appealed against in the High Court.

If the appeal has been filed against a court order it will be heard by a sole judge but should the appeal challenge a decree or judgment made by district court it will be heard by the High Courts division bench.

Subject to those provisions laid down by the Pakistani constitution any decree, order or judgment that the High Court passes can be appealed against in front of the Pakistan Supreme Court, provided that the SC has granted a special leave of appeal and any decision made on that appeal is final.

One important exception to the rule above is that unique jurisdiction enjoyed by the Sindh High Court at Karachi due to the city enjoying the status as the commercial hub of Pakistan. Civil suits over a certain value including the cost of the proceeding for trademark infringement, are permitted to be directly filed before any single judge at the High Court that exercises the original jurisdiction. Any judgment, decree or order that a single judge passed can be appealed against before the High Court  division bench that comprises 2 judges. Any judgment, decree or order that is passed by the High Courts division bench can be appealed against in front of any Pakistan High Court in the same way as previously mentioned.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Defence mechanisms

The plaintiff can, at any time within the designated limitation period, make a challenge on either the defendants title of the registered mark or the marks registration validity and therefore make an accusation against the defendant for engaging in such illegal activities of dilution, infringement or any other related actions.

In relations to a charge or dilution, infringement or any related action, the Trademark Ordinance 2001 offers several avenues of defence for the person who has been accused of such activities to to which the defendant can claim prior and honest use and that their use of the mark isn’t an infringement as this use doesn’t fall under those provisions stated in S40 of the Trademarks Ordinance 2001 or because the plaintiff isn’t entitled to any relief due to such estoppels as abandonment or acquiescence of the mark that is being disputed. The defendant could also claim that the mark which is under challenge contains either a personal name, the name of the place of the business or any descriptive words that without the use of the defendant would face difficulty when describing their services or goods.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Remedies available to successful parties

In any action for dilution or infringement, successful parties may seek preliminary or permanent injunctions, damages and any account for profit. The damages could be apportioned using a basis of actual losses, the lost of a business opportunity, any future profits and the loss of reputation. Also available is injunctive relief, both preliminary and permanent, once 3 conditions have been fulfilled;

The applicant has a prima facie case in their favor

  • Irreparable losses, injuries or damages which could happen to the applicant should an injunction not be granted
  • A balance of convenience that is in the applicants favor

Criminal action could also be taken in terms of applying false trade descriptions and falsely claiming that the trademark is registered, both of which can result in a fine, being imprisoned or both.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Available ADR techniques

Such ADR techniques as arbitration and mediation are available within Pakistan. Although it still isn’t commonly used, in some cases it’s a cheaper and quicker way to reach resolution rather than going through a court proceedings and is generally encouraged by legal counsel.

Settlement decisions are legal and binding depending on the parties and can’t be challenged. Settlement enforcement can, however, be problematic on certain occasions if, for example, one party refuses to accept the mediator or arbitrators decision on the settlement. The court then has to be approached in order to enforce that decision, and this can prove to be a lengthy process.

There’s no compulsion for either party to enter the mediation process. However, should there be a prior agreement in place between the parties which stipulated the matter must be referred to arbitration the courts are expected to adhere tot this and refer the matter to arbitration instead of allowing any civil proceedings to appear before the court.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

Trademark laws in Pakistan : Protection for well known foreign trademarks

Well known, and often famous, trademarks are all given statutory protection under the laws of Pakistan even when that trademark is neither used nor registered in Pakistan. Being a signatory country on the Paris Convention, Pakistan offers protection to the owner of well known trademarks which are domiciled in either convention countries or have an effective and real commercial or industrial establishment in one of the convention countries. This is irrespective of whether the person conducts business, or possesses any goodwill, within Pakistan and any references to the proprietor of this trademark will be construed accordingly.

In regards to S86 of the Trademarks Ordinance, the trademarks owner is entitled to protection as per the Paris Convention as a famous trademark and therefore entitled to any restraint by injunction the use of any trademark in Pakistan which is either deceptively similar or identical to that well known mark. This falls onto 2 main areas;

  • Where similar or identical services or goods can cause confusion due to its usage
  • Where such usage causes the dilution of the quality synonymous with a well known trademark

When it comes to determining that any trademark is well known, and therefore not having to register or be actually used in the form of the sale of service or goods under that trademark within Pakistan, these factors will be considered as the relevant criteria when it comes to establish the trademarks status as ‘well known’;

(1) The level of the trademark’s recognition either in Pakistan or worldwide

(2) The degree of acquired or inherent distinctiveness of that trademark

(3)The duration of advertising and use of the trademark in Pakistan and on a worldwide scale

(4) The commercial value attributed to that trademark either in Pakistan or worldwide

(5) The geographical scope of the advertising for, and use of, the trademark in Pakistan or worldwide

(6) The image and quality enjoyed by that trademark that is recognized in Pakistan or on a global scale

The worldwide or Pakistani exclusivity of registration and use that has been attained by that trademark as well as the presence or the absence of deceptively similar or identical 3rd party trademarks which are validly used or registered in relation to any similar or identical services or goods.

Additionally, it should be noted that Pakistani law/ Trademark laws in Pakistan also offers a wide range of rights against any unfair competition and under the provision of common law which could be used by the owners of well known foreign trademarks in order to protect their own interests.

The Josh and Mak Team is available 24/7 to assist you with your trademark filing in Pakistan and any connected Legal Matters.

More FAQs

Trademark Legal Services in Pakistan: Your Ultimate Guide by Josh and Mak International

Are you a business owner or an entrepreneur in Pakistan seeking to protect your brand and intellectual property? Do you have questions about trademarks, their registration, classes, opposition, and more? Look no further! Josh and Mak International are here to provide expert trademark legal services in Pakistan, ensuring your brand is safeguarded and thriving. Let’s explore some frequently asked questions and learn how our team can assist you!

1. How long does it take to get a trademark registered in Pakistan?

Our experienced team at Josh and Mak International understands the importance of a swift and efficient registration process. On average, trademark registration in Pakistan takes approximately 18-24 months which should hopefully change after the introduction of the new online filing system.

2. Can a trademark be removed from the Pakistan trademark register due to non-use after registration?

Yes, a trademark can be removed from the register if it remains unused after registration. However, with our expert guidance, you can maintain the active status of your trademark and keep it protected.You can file an application online now for its revival.

3. Does the Pakistan Trade Mark Ordinance bestow protection to unregistered trademarks?

Unfortunately, the Pakistan Trade Mark Ordinance does not provide protection to unregistered trademarks. However, our legal team will guide you on the best strategies to safeguard your brand even without registration.

4. What is the procedure for registering a trademark in Pakistan?

The process of trademark registration in Pakistan can be complex, but with Josh and Mak International, it becomes seamless. Our professionals will walk you through each step, ensuring a successful trademark registration which is now online in Pakistan (July 2023).

5. Which trademarks cannot be registered in Pakistan?

Certain trademarks may not be eligible for registration, such as those that are deceptive, offensive, or against public morality. Our team will help you determine if your trademark meets the registration criteria.

6. Can similar marks have already been registered for the same type of goods in Pakistan?

To avoid conflicts, it’s crucial to conduct a thorough trademark search before registration. Our trademark search services will help you ascertain if similar marks are already registered in Pakistan.

7. Is a statement of use required when filing a trademark application? Is proof of use necessary for filing a trademark in Pakistan?

In Pakistan, a statement of use is not required during the filing process. However, having evidence of use can be beneficial in certain situations. Our team will provide expert advice on this matter.

8. Can foreign proprietors file trademark applications in Pakistan?

Absolutely! Foreign proprietors can file trademark applications in Pakistan through our office, and our team will guide you through the process to ensure your brand enjoys the same protection as domestic trademarks.

9. What are Collective marks and Service marks in Pakistan?

Collective marks are used to distinguish the goods or services of members of an association, while Service marks identify services rather than products. Our team will help you determine the appropriate type for your brand.

10. Is it possible to have a descriptive trademark registered in Pakistan?

Descriptive trademarks are generally difficult to register, but it’s not impossible. Our experienced team can assist in finding creative solutions to register a descriptive trademark.

11. Can Sound, Smell, or Three-dimensional trademarks be registered in Pakistan?

The law allows sound to be registered as a trademark but not smell. As per the Pakistan Trademark Ordinance , Three Dimensional Marks cannot be registered as Trademarks.

12. Are registered trademarks mandatory in Pakistan?

While registration is not mandatory, having a registered trademark offers numerous benefits, including enhanced legal protection and exclusive rights to use the mark.

13. What are the qualities of a good trademark in Pakistan?

A good trademark should be distinctive, unique, and not descriptive of the goods or services it represents. Our team can help you create a strong trademark for your brand.

14. How do I protect my trademark in Pakistan?

Trademark protection involves registration, enforcement, and regular monitoring. Josh and Mak International will be your dedicated partners in safeguarding your brand’s identity.

Trademark Protection and International Registration: A Comprehensive Guide by Josh and Mak International

In the realm of business, a trademark serves as a symbol that distinguishes the goods or services of one enterprise from those of others. Understanding the importance of trademark protection is vital for companies seeking to establish and safeguard their brand identity. In Pakistan, both registered and unregistered marks can seek protection. This article, presented by Josh and Mak International, provides an in-depth overview of the trademark registration process in Pakistan, as well as international registration under the Madrid Protocol.

Trademark Protection in Pakistan: In Pakistan, the Trade Marks Ordinance, 2001, grants protection to registered marks, while unregistered marks can seek protection under the common law principle of “Passing Off.” The “Passing Off” law prohibits businesses from presenting their products in a manner that deceives consumers into believing they belong to another business. Although a registration certificate provides proof of exclusive use, seeking protection for an unregistered mark requires the establishment of specific facts.

Applicable Laws: The trademark registration process in Pakistan is governed by the Trademark Ordinance, 2001, and Trade Mark Rules, 2004.

Step-by-Step Guide to Registering a Trademark (Filing online trademark in Pakistan)

  1. The Applicant: The first step is to request a trademark search when filing online trademark in Pakistan by submitting the TM-55 form to the Trade Marks Registry along with the required fee. Once the search confirms the mark’s availability, the applicant must complete form TM-1, including company contact details, a graphic representation of the mark, a description of goods or services, and the desired class for registration. The necessary fees can be paid through a bank draft or pay order favoring DG, IPO Pakistan.
  2. The Trademark Registry: The online registration process at the Trademark Registry involves several stages:

a) Formal Examination: Within 15 to 20 days after filing, an application number and acknowledgment slip are assigned to the applicant.

b) Substantive Examination: The trademark office examines the application for compliance with substantive requirements. If objections arise, an examination report (Show Cause Notice) is sent to the applicant.

c) Reply: The applicant responds to the objections raised in the examination report.

d) Hearing: If necessary, a hearing is held to address any remaining issues.

e) Publication and Opposition: After the hearing, if the Registrar is satisfied, the trademark is published in the official Trade Marks Journal, allowing a two-month period for third parties to oppose the registration.

f) Registration: If there are no oppositions or grounds for refusal, the trademark is registered, and a certificate is issued, valid for 10 years.

g) Renewal: The trademark can be renewed every ten years.

Duration of Registration: Typically, the registration process takes 1 to 2 years.

International Trademark Registration: Trademark rights are typically limited to the territory in which they are registered. A valid registration in Pakistan grants rights only within the country. To secure international registration, three methods can be employed:

  1. Applying in a specific country where registration is desired.
  2. Opting for the regional route.
  3. Utilizing the Madrid System.

The Madrid Protocol, administered by the International Bureau of WIPO, facilitates international registration of marks in member countries. Pakistan became a member of the Madrid Protocol on 24th February 2021 and ratified it on 24th May 2021, enabling trademark applications under this system.

Advantages of Registering a Trademark: Trademark registration offers several advantages for businesses:

  1. Exclusive Rights: Owners of registered trademarks enjoy exclusive rights over their marks.
  2. Builds Trust and Goodwill: Trademarks establish trust and goodwill among customers.
  3. Differentiates Products: A unique logo communicates a company’s vision and characteristics.
  4. Recognition of Product Quality: Trademarks lend recognition to product quality in the market.
  5. Creation of an Asset: Trademark registration generates intangible intellectual property for organizations.
  6. Use of ® Symbol: Registered trademarks can display the ® symbol.
  7. Protection Against Infringement: Registered trademarks receive protection against unauthorized use.
  8. Low Renewal Cost: Trademark protection is valid for 10 years and renewable at a reasonable cost.
  9. Global Trademark Registration: A trademark registered in Pakistan can serve as the basis for registration in other countries.

Protecting trademarks is crucial for businesses seeking to establish and safeguard their brand identity. Understanding the trademark registration process in Pakistan and the international options available under the Madrid Protocol empowers companies to secure their intellectual property rights and build a strong and recognizable brand presence both locally and globally.

By The Josh and Mak Team

Josh and Mak International is a distinguished law firm with a rich legacy that sets us apart in the legal profession. With years of experience and expertise, we have earned a reputation as a trusted and reputable name in the field. Our firm is built on the pillars of professionalism, integrity, and an unwavering commitment to providing excellent legal services. We have a profound understanding of the law and its complexities, enabling us to deliver tailored legal solutions to meet the unique needs of each client. As a virtual law firm, we offer affordable, high-quality legal advice delivered with the same dedication and work ethic as traditional firms. Choose Josh and Mak International as your legal partner and gain an unfair strategic advantage over your competitors.

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