Trademark Registration Procedure in Pakistan

Trademark Registration Procedure in Pakistan

Introduction

Trademarks marks are registered, maintained, protected and governed in Pakistan under the following statutory laws:

Trade Marks Ordinance, 2001 (the “Ordinance”)

Trade Marks Rules, 2003 (the “Rules”)

Merchandise Marks Act, 1889

Pakistan Names and Emblems (Prevention of Unauthorized Use) Act, 1957

High Court Rules & Orders, Volume V, Chapter 7, Part (e)

Pakistan Penal Code, 1860, Ss. 478-489

Under the Trade Marks Ordinance, 2001, prior use of the mark in Pakistan is not a pre-requisite for obtaining registration. It is permissible to file an application on the basis that a mark is proposed to be used. Similarly, for foreign applicants, registration in the ‘home country’ is not necessary for obtaining registration in Pakistan.

New Ordinance

The Trade Marks Ordinance, 2001 repeals and replaces the Trade Marks Act, 1940. Salient features of the new Ordinance include three significant amendments:

Extension of the trade mark law to cover both goods and services. Under the previous law, trademarks covered only goods, not services

Protection of well-known marks [S. 86]

Recognition of “earlier trademark” and priority claiming [S. 18]

Definition

A Trade Mark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors and is defined as

i)A word, phrase, logo or other graphic symbol used by a manufacturer or seller to distinguish his product or products from those of other.

(Black’s Law Dictionary: 7th Edition)

ii)‘Trade Mark’ means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

(Section 2 (xlviii) of Trade Marks Ordinance, 2001)

iii)A Trade Mark is undoubtedly a visual device; but it is well established law that that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole of the mark, it is impossible to exclude consideration of the sound or significance of those words. Thus, it has long been accepted that, if a word forming part of the mark has come in trade to be used to identify the goods of the owner to the mark, is an infringement of the mark its self to use that word as the mark or part of the mark of another trader.

(PLD 1951 P.C. 108)

What can be registered?

Under S. 12 of the Ordinance, trademarks can be registered with respect to the following:

(a)goods;

(b)services; or

(c)both goods and services,

in accordance with international classification of goods and services.

S. 13 requires the Registrar to maintain an index containing the classification of goods and services in respect of which trade marks may be registered.

Who May Apply

The Ordinance allows any person claiming to be the proprietor of a trademark used or proposed to be used by him to make an application for its registration.

It also permits jointly owned trademarks to be registered in the name of joint proprietors.

The Ordinance permits registration of a mark in the name of a company, which is about to be formed in Pakistan. Registration may also be obtained in the name of a person whose sole intention is to assign the mark to a company, which is about to be formed.

Trademarks are registered in Pakistan in accordance with the International Classification of Goods.

Protection of Well-Known International Trademarks

The Ordinance recognizes the Paris Convention for the Protection of Industrial Property, 1883.

By virtue of S. 86(3) of the Ordinance, the owner of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade mark which, or the essential part of which, is identical or deceptively similar to the well-known trade mark—

(a)in relation to identical or similar goods or services, where the use is likely to cause confusion; or

(b)where such use causes dilution of the distinctive quality of the well-known trade-mark.

Procedure for Registration

Step 1

Trademark registration in Pakistan is done by only one authority – the Registrar of Trade Marks, The Trade Marks Registry (Government of Pakistan) at Karachi.

An Application for the registration of a trade mark must be made in writing to the Registrar of Trade Marks, the Trade Marks, Registry, Karachi [S. 22(1)]

The Application, as laid down by S. 22(2), must contain the following:

(i)a request for registration of a trade mark;

(ii)the full name, nationality and address of the applicant;

(iii)a statement of goods and services in relation to which protection is required, one application cannot cover goods and services falling in more than one class;

(iv)nature of the applicant’s business;

(v)international classification of the goods or services;

(vi)a representation/specimen of the trade mark; and

(vii)the full name, address and contact details of the agent, in case the application, on behalf of the applicant is being made by his agent.

The application must also state that the trade mark is being used by the applicant, or with his consent, in relation to the goods or services, or that he has a bona fide intention that it should be used. [S. 22(3)]

The Registrar may refuse to admit any application that does not contain the aforementioned particulars. [S. 22(4)]

The application is subject to the payment of the prescribed fees. [S. 22(5)]

The Application, in Form TM-1, must be accompanied by the following documents:

Form TM-54, duly filled out by the applicant, which requests the Registrar to conduct a search to ascertain whether or not the trade mark being applied for resembles any trade mark already registered.

Power of Attorney in Form TM-48 on Rs. 500 Stamp Paper, authorizing an Advocate of the High Court to act on the client’s behalf. The Power of Attorney must be duly signed by the applicant. In case of a corporate entity or any other artificial legal person, the Power of Attorney must be executed by a duly authorized person. The Power of Attorney may be filed subsequent to the filing of the Application. A General Power of Attorney is also permissible. A Special Power of Attorney would be valid in respect on one application while a General Power of Attorney would be valid for all trade mark matters of the client. The Power of Attorney, if executed abroad, must either be notarized by any local notary public of that country or attested by a Pakistani diplomatic mission in that country.

7 samples/representations of the trade mark proposed to be registered (one fixed on the application, six others sent separately). If the mark is in colour, then either a photograph positive or electronic version must also be supplied, which can be prepared locally at the time of advertisement.

10 photocopies of the ID card of the company’s managing partner/director

5 originals of entity’s letterhead with the proposed trademark/monogram

Once the confirmation is received from the Registrar of Trademarks – Karachi that there are no other similar trademarks, the application is proceeded with.

All foreign applicants are required by the Ordinance to furnish an address for service in Pakistan.

Step 2

The Registrar is required, under S. 27, to examine the application and to ascertain whether or not the application satisfies the requirements of S. 22. This should be done “as soon as practicable”.

If the Registrar finds that the application does not meet the requirements of S. 22, he shall inform the applicant and give him an opportunity to amend the same. [S. 27(3)]

If the applicant still fails to satisfy the Registrar, the Registrar shall refuse to accept the application. [S. 27(4)]

In case of refusal or conditional acceptance, the Register must state in writing the grounds for his decision.

Step 3

If the application is accepted, the Registrar shall advertize the application in the Trade Marks Journal (an official publication). [S. 28(1)]

Advertisement in the Trade Marks Journal shall constitute acceptance of the trade mark. [S. 28(1).] However, this shall be the discretion of the Registrar and he may advertize it before acceptance. [S. 28(1), Proviso]

Step 4

The Registrar shall wait for two months after the publication of the application to allow for anyone to file an objection in writing. [Ss. 28(2) and 28(3)]

If an objection has been filed, the Registrar shall provide the applicant with a copy thereof to enable the applicant to file a counter-statement within 2 months of the notice. If the applicant does not file a counter-statement, he will be deemed to have abandoned his application. [S. 28(4)]

Upon receiving the counter-statement from the applicant, the Registrar shall provide a copy to the objector who may. Within 2 months of receiving the counter-statement, file a rejoinder, which shall also be provided to the applicant. [S. 28(5)]

The Registrar shall then give both parties an opportunity to be heard, if they so desire. [S. 28(7)]

The Registrar shall then make a determination whether or not to proceed with the registration. [S. 28(8)]

S. 29 lists the various grounds on which an application may be opposed.

Step 5

If there are no objections or if the objections have been overruled, the Registrar shall proceed to register the trademark. [S. 33(1)]

A trade mark, when registered, shall be deemed to have been registered as of the date of filing of the application for registration and that date shall be deemed to be the date of registration. [S. 33(3)]

Registration shall take effect by way of the publication of the registration in the Trade Marks Journal in a manner prescribed by the Rules, and through a Certificate of Registration issued by the Registrar and sealed with the seal of the Trade Marks Registry. [S. 33(4)]

Duration and Renewal of the Registration

A trade mark registration is valid for a period of 10 years from the date of registration. [S. 34(1)]

A trade mark may be renewed for a further period of 10 years after the expiry of the registration period. [S. 34(2)] Renewal takes effect from

There is no limit prescribed to the number of times a registration may be renewed.

The Registrar is required to notify the proprietor that the mark is renewable on payment of renewal fees. If these fees are not paid, the mark is advertized in the Trade Marks Journal and may afterwards be removed from the Register. Any mark such removed from the Register can be restored, if it is just to do so, on payment of the prescribed fees.

Marks in Colour

The Ordinance provides that a mark registered without limitation of colours is registered for all colours. However, a trademark may be limited to one or more specified colours and such limitation will be taken into consideration by any tribunal having to decide on the distinctive character of the trademark.

Effect of Registration

Registration is evidence of ownership of a trademark. A registered trade mark is to be treated as personal property. [S. 39]

It also ensures that in all legal proceedings, the registered proprietor is not required to establish his title to the mark. The purpose of the Ordinance is to give the proprietor the exclusive right to use the mark in respect of any goods or services for which the mark is registered. This exclusive right is, however, limited whereby a mark identical or closely similar to a mark already on the Register in the name of one person can also be registered in the name of another person in case of honest concurrent user or other special circumstances.

Registration entitles the registered proprietor to an action for infringement by way of permanent injunction against those unauthorizedly using a mark identical with or closely resembling the registered mark. An action for passing off may also be instituted in such cases. Registration of a mark gives power to the registered holder to assign the mark either with or without goodwill of the business. Registered marks can also be licensed under the provisions of the Ordinance by the registration of registered users of the mark.

Registered Users

Registered trade mark holders are entitled to use the mark for themselves or to license its use to some other person as a Registered User. Application in such case is required to be made jointly by both the parties and should be accompanied by an affidavit.

Infringement of Trade Marks Rights

Remedies

Civil and criminal remedies are available in case of infringement of trademark rights. Criminal remedies are prescribed in the Pakistan Penal Code, 1860 and the Merchandise Marks Act, 1889. Civil remedy is either for passing off under common law or for infringement under the Ordinance.

Infringement

A registered trademark is infringed in the following events:

(a)When the offending mark is used by a person who is not the registered proprietor or user of the mark;

(b)When the offending mark is same as the registered mark or its essential features so nearly resemble the registered mark that there is a likelihood of deception or confusion.

(c)When the offending mark is used in the course of trade and in respect of goods for which the mark is registered; and

(d)When the offending mark imports a reference to the registered proprietor or registered user or to his goods and services in the course of trade.

When a plaintiff is successful in an infringement suit, the Courts, may issue an injunction restraining the defendant from using the offending mark. A suit for infringement is required to be filed in a court not inferior to a District Court having jurisdiction to try the suit. [S. 117]

Respectfully Submitted By

MUHAMMAD NOUMAN SHAMS

ADVOCATE

QAZI LAW ASSOCIATES,

Suite No.22, Taj Arcade, 3rd Floor,

73-Jail Road, Lahore, Pakistan

E-Mail:

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