A Detailed Review of Pakistan’s Trademark Laws
Top Advice from the top Trademark Lawyers in Pakistan.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
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.
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. It costs $10 to file an application in once class but the total cost, which included all expenses and professional legal fees typically ranges between $400-$600, once again subject to objections.
These are only rough estimates as the time, and the cost, of the registration process can increase due to either an office action or any objections from the Trademarks Registry. Should a third party object to the trademark the application could take longer and cost even more.
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.
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.
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.
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.
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.
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 cost is $60 for the filing of a notice of opposition for 1 application but the total cost once expenses and legal fees have been added could well range from $1400=$1700, and sometimes even more.
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.
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.
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.
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.
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.
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.
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.
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.
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 defense in writing along with their defense to any applications that have been filed for interlocutory injunctions. The time frame allowed for filing a defense application for an interlocutory injunction is generally shorted. Once that defense 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 defense.
Once this main defense 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.
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.
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.
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.
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.
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 closed.
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.
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 and could easily range anywhere from $5000 to $25000, or even more.
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.
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 which are valued at more than $150,000, including the cost of the proceeding for trademark infringement, are permitted to be directly filed before any single judge at Sindh 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 of Sindh’s 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 the Pakistan High Court in the same way as previously mentioned.
Trademark laws in Pakistan : Defense 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 defense 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.
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.
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.
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’;
- The amount of the trademarks recognition either in Pakistan or worldwide
- The degree of acquired or inherent distinctiveness of that trademark
- The duration of advertising and use of the trademark in Pakistan and on a worldwide scale
- The commercial value attributed to that trademark either in Pakistan or worldwide
- The geographical scope of the advertising for, and use of, the trademark in Pakistan or worldwide
- 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.