PAKISTAN GROUP REPORT

By

M. Yawar Irfan Khan

Submitted before the 50th APAA Council Meeting.

It is my distinct pleasure and honour to present the Group report for Pakistan following the directions of the head quarters of the APAA I have tried to make the presentation according to the parameters and the guidelines given by the worthy President of APAA.

PAKISTAN: REGISTRATION OF SERVICE MARKS STARTS

Further to the Pakistan Group report of 2003, it is reported that Trade Marks Rules, 2004 have been notified and the Trade Marks Ordinance, 2001 is now in force in Pakistan. The new law includes provisions for registration of Service Marks and the Registrar of Trade Marks has started accepting service mark applications.

The new law also provides for “domain names” to be registered as trademarks for goods and services in those cases where the “domain name” is used for offering goods and services via the internet and is not merely a directional reference.

In addition, the new law allows filing of priority applications under the Paris Convention within six months from the date of the first corresponding filing in a Paris Convention member country. The accession to Paris Convention by Pakistan was formally made effective from July 22, 2004.

Changes in practice before the Intellectual Property Offices or Courts:

There has been number of procedural changes adopted by the intellectual property offices in Pakistan:

a)Patent Office:

The Patent Office has as usual been working very hard under the able and dynamic leadership of the Controller of Patents and ably supported by the professional staff at the Patent Office. However, matter of great concern to the patent owners is the examination of the Black Box applications which are expected to be opened for examination when the WTO regime starts whereas the Patent Office is still in dire need of more examiners so that the examinations and other registration procedures are quickly completed so as to clear the work load. However, all other procedures at the Patent Office are being followed and observed in the routine manner.

PAKISTAN’S ACCESSION TO THE PARIS CONVENTION:

Pakistan acceded to the Paris Convention and officially became a member of the Treaty as from July 22, 2004. Thus, Pakistan is now eligible to sign the Patent Cooperation Treat (PCT), however, as yet there is no news regarding Pakistani’s signing/ratification of PCT.

With regard to Pakistan’s obligations under Paris Convention to extend the “national treatment”, “right of priority” etc. to other member countries, we wish to advise you that since Pakistan is a member of the WTO and signatory to the TRIPS Agreement, claiming priority from WTO member countries is already possible for patent filing in Pakistan.

We confirm that as soon as there are any developments with regard to the signing of PCT by Pakistan, we shall intimate the Headquarter.

b)Trade Marks Registry:

The backlog existing in the publication of the Trade marks Journal has to a greater extent been solved due to the timely interaction and professional approach of the present Registrar Trademarks Mr. Muhammad Mohsin and only a couple of months backlognow remains the last publication being for the month of August, 2004.

c)Copyright Office:

The Copyright Office is also slightly going behind the schedule because of shortage of staff therefore procedure of the copyright registration as compared to the previous year has been further elongated by 8 to 10 months. Also now the legal procedure of publication of the copyright noticesin the newspapers is being followed by the owners of the copyright before the acceptance of the application. This is a great lacuna because any Applicant of any copyright publishes the notice in any of the newspapers in Pakistan whereas the proper approach and legal requirement should be that the notice should be published in a specified publication so as to give an opportunity to the legitimate, real and original owner against possible illegal adoption or attempt to illegally register the said copyright or trademark.

d)Reported Cases:

There have been several reported cases this year in Pakistan from the list and summary of which shall be sent to Headquarter for publishing in APAA News.

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