Trademark law states a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business’ commercial identity or brand by discouraging other businesses from adopting a name or logo that is of similar nature to an existing trademark.
This page is to assist clients in acquiring information about trademark law in Pakistan. We have a diligent and dedicated team of professional lawyers, with expertise in this field, to assist their clients in understanding and protecting their intellectual property rights in Pakistan, at affordable prices. We cater to every budget provided by the client as our main aim is to prevent brand dilution of our esteemed clients.
We routinely interact with patent and trademark examiners in the Pakistan Patent and Trademark Office, and secure and protect intellectual property rights efficiently on a very cost-effective tariff. ZA-LLP’s intellectual property lawyers speak the business and technical languages of our clients. The whole focus of our IP counsel is securing for clients the maximum competitive advantage from effective exploitation and protection of their intellectual assets.
TRADEMARK LAW PRACTICE IN PAKISTAN
Intellectual property issues are critical to the success of any business, regardless of its size. ZA-LLP helps clients in virtually all industries, obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners. We routinely interact with patent and trademark examiners in the Pakistan Patent and Trademark Office, and secure and protect intellectual property rights efficiently on a very cost-effective tariff. ZA-LLP’s intellectual property lawyers speak the business and technical languages of our clients.
PROTECT YOUR BRAND IN PAKISTAN
The purpose of trademark registration is to ensure that your brand is recognised as your personal property allowing its owner to exclusively use their trademark. Resultantly, registration also ensures that third parties are effectively disallowed from riding on the success of the owner by applying or using a trademark that is either identical or deceptively similar to that of the registered trademark of the owner.
Registering a trademark will give its owner the right to exclusively use, license or sell the mark within the categories for which it is registered, blocking others from using a mark that is substantially identical or deceptively similar. In this way, trademarks protect brand identity and secure a company’s rights; to its image. A trademark remains registered indefinitely if it continues to be used.
WHAT IS A TRADEMARK?
A trademark is a word, phrase, symbol and / or design that identifies and distinguishes the source of the goods of one party from those of the others whereas a service mark is a word, phrase, symbol, and / or design that distinguishes the source of a service rather than goods. A trademark can either be a word mark i.e. the brand as text, or a shape mark i.e. the brand as a logo. We would emphasize on the importance of filing a trademark as both a word mark and a shape mark in order to ensure maximum protection under the Trade Marks Ordinance, 2001.
The Trade Marks Ordinance 2001 defines a trademark any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign can include a letter, word, name including personal name, signature, figurative element, numeral, device, brand, heading, label, ticket, aspect of packing, shape, color, sound or any combination of these features.
REGISTERATION OF A TRADEMARK IN PAKISTAN
In Pakistan, trademark registration is preferred to ensure that adequate relief and injunction may be granted with ease if another party maliciously uses a conflicting or impugned mark. A trademark registration provides assured advantages to the proprietor of the registered mark over the unregistered mark.
Following are the key advantages that the client gets when their trademark is registered:
- It provides an exclusive right to the owner of the mark to use the mark and attach its identity with the goods produced or rendered by it;
- It provides prima facie evidence of ownership and validity; and
- It prevents competitors from maliciously and unfairly using the registered mark.
If a trademark isn’t registered and infringement is suspected, the owner must establish by extensive evidence that as a result of its use of and reputation in the mark the other person’s use is likely to cause deception or confusion. The dispute would be dealt with under the common law action of passing off.
WHICH TRADEMARK CAN BE REGISTERED?
It is highly preferred that your trademark is an invented word or a distinctive word as that will be the easiest to register as they are unique. A few examples of inventive words are Khaadi, Mocca, Sana Safinaz, Shezan, Haleeb, Al Fatah, HKB, ECS to name a few.
If not inventive, then the second option would be to have a trademark that is a common word, but applies to identify unrelated goods and services will also be easier to register like using Apple for computers, Shell for Petrol and oil products, and many more.
Thus, in a nutshell, in order to be registered, a trademark cannot be one that other traders need to use to promote their own goods or goods, such as a word that is descriptive of products or services, common surname or geographic location as everyone is and should be entitled to use that description. Trademarks that are deceptively similar to a registered trademark or one already applied for will not be entertained by the Intellectual Property Organization of Pakistan.
WHO MAY APPLY FOR TRADEMARK REGISTRATION?
Any legal person i.e. a national of any country, may apply for the registration of a trademark.
A bona fide proprietor or owner of a trademark means a person who has been entered in the register at the Trade Marks Registry as having the rights to use the mark in any manner so it deems fit.
A person who is already using the trademark or service mark or has the intention to use the trademark or service mark in future may file an application for registration under the Trade Marks Ordinance, 2001 as the sole proprietor of the mark.
In the occurrence of two or more people being co-proprietors of a mark, the said mark would be jointly applied, having an equal, undivided share in the trademark, subject to an existing agreement.
CRITERIA FOR TM REGISTRATION?
In order to be registered, a trademark cannot be one that other traders need to use to promote their own goods or services, such as a directly descriptive term, geographic word or common surname. It must also be capable of distinguishing the applicant’s goods or services from those of other traders and cannot mislead the public about the nature of the goods or services.
USE OR INTENTION TO USE
In order to register a trademark, the proprietor must already be using the trademark or intends to use said trademark (proposed to be used). If the proprietor registers the trademark but does not use the trademark within five years of getting the trademark registered, the proprietor is at risk of getting its trademark registration revoked and cancelled under Section 73 of the Trade Marks Ordinance, 2001.
Pakistan is a Paris Convention country and in accordance with Section 12 of the Trade Marks Ordinance, 2001, both goods and services are included in the prescribed classification of goods and services in accordance with the Nice Classification, with the goods and services being divided in 45 classes, with 1 to 34 being goods and 35 to 45 for services.
INFRINGEMENT OF TRADEMARK IN PAKISTAN
Section 40 of the Trade Marks Ordinance, 2001 very specifically highlights situations where a registered trademark may be infringed, the summary of which is mentioned below:
In Pakistan, a registered trade mark is infringed by the unauthorized use of that mark;
- In relation to identical trademark and identical goods or services to a registered trademark
- In relation to identical trademark and similar goods and/or services
- In relation to deceptively similar trademark with identical goods or services
- In relation to deceptively similar trademark with similar goods or services
- In relation to identical/deceptively similar trademarks using goods of the same description of registered trademark
- In relation to identical/deceptively similar trademark selling services that are closely related to goods in respect of which the trademark is registered
- In relation to identical/deceptively similar trademarks with reference to services of the same description as that of services in respect of which the trademark is registered
- In relation to identical/deceptively similar trademark with reference to goods that are closely related to services in respect of which the trademark is registered
- In relation to identical/deceptively similar trademark used in relation to goods which are not similar to goods of the registered mark.
- Where a trademark is a well-known trademark (under Section 86 of the Trade Marks Ordinance, 2001), or has a reputation in Pakistan, and the use of the mark, without due cause, takes unfair advantage of, or is detrimental, to the distinctive character or the repute of the trade mark
- A person shall infringe a registered trademark if the person uses such registered trademark as his trade name or part of his trade name
- A person shall infringe a registered trade mark if the person uses such registered trademark as his domain name or part of his domain name
THE ROLE OF A TRADEMARK ATTORNEY
A trademark attorney is a person qualified to act in matters involving trademark law and practice and provide legal advice on trademark matters to its clients. A trademark Attorney deals with various responsibilities, which include, but are not limited to:
- Trademark Application Search before the IPO
- Trademark Application Filing
- Track Application Status and update on developments
- Trademark Objection, Trademark Opposition, defending trademark application from third party Opposition
- Acknowledge and future renewal assistance for client
TRADEMARK REGISTRATION PROCESS
FILING TRADEMARK APPLICATION IN PAKISTAN
- Applicant’s Name
- Applicant’s Address
- Trademark as a word mark or image of the logo if it is a shape mark
- Class of Goods in which the trademark falls, under NICE classification
- Specifications of Goods in the class
- Year of use when the trademark was first used in Pakistan or whether it is proposed to be used
- The power of Attorney (TM-48) signed by the Applicant, either on stamp paper of Rs. 500 (for Pakistani Nationals) or notarized from that country’s Notary Public (for international clients)
REGISTRATION & RENEWAL OF TRADEMARK APPLICATION IN PAKISTAN
A trademark shall be registered for a period of 10 years from the date of filing of trademark application and may be renewed after 10 years from the date of filing of application for another 10 years, for an indefinite amount of time, subject to payment of renewal fee as may be prescribed, under the provisions of Section 35 of the Trade Marks Ordinance, 2001. If a registration is not renewed in accordance with the provisions of this section, the Registrar shall remove the trademark from the register.
If a trade mark has not been used in Pakistan, it would be prudent to conduct a search to ascertain whether the trade mark is available for use and registration before filling or using the trade mark, although it is not compulsory to do so.
After the requisite information is provided, the attorney drafts and files TM-1 for filing. The Trademarks Registry then issues a Acknowledgment Receipt on filing application, allotting the trademark an Application Number.
Typically, applications are examined within approximately 2 to 3 months after filing. If the Examiner issues a report objecting to registration, there will be additional work and hence, expenses involved in reviewing, reporting and preparing a response to the Examiner’s report, along with attending a hearing to get the trademark accepted for publication.
After the application is accepted, it will be published in the Official Journal for a period of two months for opposition purposes. Provided no opposition is filed within the statutory period of two months (which is extendible for further two months), it will then be registered upon payment of registration fee. However, if there is a third-party opposition against the trademark application, then we will have to defend the Opposition via counterstatement (TM-6), file evidence and attend hearing(s) to get the trademark accepted. This process may take 12 to 24 months.
After the publication and opposition period is completed, the demand note will be issued. After depositing the Demand Note, the trademark certificate will be issued, the validity of which will be ten years from the date of filing the trademark registration.
The initial term of a trade mark registration is ten years from the date of filing the trademark application which is renewable indefinitely upon payment of renewal fees for the next ten years.
TRADEMARK REGISTRATION & ADVICE
Our network of offices and correspondent firms assists clients in establishing, maintaining, and enforcing trademark rights on a global basis. We provide practical guidance and precision in translation and other services needed during the local registration process. Rather than simply communicating problems and impediments, we create solutions.
Typical projects in the trademark area of our practice include:
- Advising on selection and suitability of marks for registration;
- Advising on proper use of trademarks in packaging, labeling, advertising in print and electronic media;
- Searching prior registrations and applications;
- Advising on prospects for obtaining registration;
- Filing applications and prosecution to registration;
- Conducting opposition proceedings;
- Making renewal, assignment or modification of registered trademarks;
- Advising on rights in trade names, trade dress, passing-off, unfair competition, and unregistered trademark rights acquired through use;
- Negotiating and drafting agreements for the purchase, sale, or licensing of trademark rights;
- Registering license and user agreements;
- Trademark watching service for conflicting marks;
- Advising in relation to infringing use;
- Conducting consultations and investigations obtaining evidence concerning the infringement of trademarks, requesting for; and
- Taking deregistration actions against rival marks that have been improperly registered or not used.
TRADEMARK LAWS IN PROTECTION OF INTELLECTUAL PROPERTY RIGHTS
TRADE MARKS ORDINANCE, 2001
Trade Marks Ordinance 2001 deals with the remedies regarding protection of Intellectual Property Rights in case of violation of any registered trade mark.
INFRINGEMENT OF TRADE MARKS
Section 39 and 40 of the Trade Marks Ordinance 2001 deal with the situations where an infringement of a registered trademark has been occurred. Section 39 says that a registered trademark deems to be a personal property of the proprietor. If any person other than the proprietor uses that mark for the trade which is similar to the goods or services for which that mark has been registered, it shall be deemed to be the infringement of the registered trademark under Section 40. If the words “registered goods” have been displayed on their packaging or on their container, it is a notice to prohibition of certain acts relating to those goods under Section 41.
NO INFRINGEMENT IN CERTAIN CASES
Section 42 of the Trade Marks Ordinance 2001 describes certain conditions in which trade mark has not been infringed:
- Where the person’s name or person’s place of business, so long as such use doesn’t result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right;
- The name of the predecessor in business of the person or the name of the predecessor’s place of business;
- The person uses the mark in a good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristics of goods or service; or
- The person uses the mark for the purposes of comparative advertising.
ACTION FOR INFRINGEMENT
Section 46 says that the action for infringement of the trade mark can be taken by the proprietor of the trade mark.
REMEDIES FOR INFRINGEMENT
- Accounts; or
- Any other remedies which are available to the person having some other property rights.
PLACE WHERE THE SUIT HAS TO BE INSTITUTED
According to Section 117 of the Trade Marks Ordinance 2001, any suit for the infringement of any trade mark shall be instituted before District Court.
The provisions of the Fourth Schedule shall have effect with respect to the transitional matters, including the treatment of trademarks registered under the Trade Marks Act, 1940, and applications for registration and other proceedings pending under that Act, on the commencement of the Trade Marks Ordinance 2001.
GENERAL REMEDIES UNDER THE CODE OF CIVIL PROCEDURE, 1908
TEMPORARY RESTRAINING ORDER AND A PRELIMINARY OR PERMANENT INJUNCTION
If you are being wronged, you may ask the appropriate court to grant a Temporary Restraining Order and a Preliminary or Permanent Injunction to prevent and/or stop further infringement under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure 1908.
Allegedly infringing items or articles can be impounded while the action is pending and may be ordered destroyed or subject to other disposition if there is an infringement. An infringer can be liable for actual damages plus additional profits of the infringer or statutory damages.
LIABLE FOR INJURY TO BUSINESS REPUTATION
Further, an infringer could be held liable for injury to business reputation or the dilution in the value of the copyright, patent, or trademark. Costs and attorneys’ fees sometimes also may be awarded to the prevailing party.
PENALTIES UNDER PAKISTAN PENAL CODE DESIGNED AGAINST THE INFRINGEMENT OF TRADE, PROPERTY AND OTHER MARKS
Trademark has been defined in Section 478 of the Pakistan Penal Code and Property Mark has been explained in Section 779 ibid. Section 480 defines the false trademark and 481 deals with the using of false property mark.
The text of Section 478 to 489 of the Pakistan Penal Code 1860, provide penalties against infringement of Trade, Property and other Marks which is given below:
PUNISHMENT FOR USING A FALSE TRADEMARK OR PROPERTY MARK
Section 482 says that whoever uses any false trademark or any false property mark shall be punished with:
- imprisonment of for a term which may extend to one year; or
- with fine; or
- with both.
PUNISHMENT FOR COUNTERFEITING A TRADEMARK OR PROPERTY MARK
According to Section 483 the punishment for counterfeiting any trademark or property mark is two years with fine or confinement only or fine only.
PUNISHMENT FOR COUNTERFEITING A MARK USED BY A PUBLIC SERVANT
The offence under Section 484 is an aggravated form of the offence described in the preceding one. An enhanced punishment is, therefore, given where a mark used by a public servant is counterfeited. A three years punishment has been described for counterfeiting a property mark or any other mark used by a public servant.
PUNISHMENT FOR MAKING OR POSSESSING ANY INSTRUMENT FOR COUNTERFEITING A TRADEMARK OR PROPERTY MARK
According to Section 485 whoever makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trademark or property mark shall be punished with imprisonment for three years with or without fine or fine only.
MAKING A FALSE MARK UPON ANY RECEPTACLE CONTAINING GOODS
Section 487 furnished the false marking of case, package, or receptacle containing goods in a manner reasonable calculated to deceive a public servant or any other person. It is not required that the mark should be a trade mark or property mark. A person making a false mark upon any receptacle containing goods can escape punishment under this section only if he proves that he acted without intent to defraud.
PUNISHMENT FOR MAKING USE OF ANY SUCH FALSE MARK
According to Section 488 whoever makes use of any such false mark in any manner prohibited by Section 487 be punished as if he has committed an offence against Section 487 unless he proves that he acted in good faith.
PUNISHMENT FOR TEMPERING WITH PROPERTY MARK
Section 489 says whoever removes, destroys, defaces or adds to any property mark with intention to cause injury to any person shall be punished with one year imprisonment with fine or without fine or fine only.
PROTECTION UNDER CUSTOMS ACT, 1969
Section 15 specified certain goods which are not allowed to brought into Pakistan, whether by air, or by sea or by land. It includes:
- goods having applied a counterfeit trade mark;
- goods having applied a false trade description;
- goods made or produced outside Pakistan and having applied any name or trade mark of any proprietor, dealer or trader in Pakistan unless:
- the name or trade mark is as to every application, accompanied by a definite indication of the goods that these are made or produced in a place outside Pakistan;
- the country in which that place is situated is in that indication shown in letters as large and conspicuous as any letter in the name or trade mark.
- goods made or produced outside Pakistan and intended for sale and having applied a design in which copy right exists under the Patents and Designs Act.
PROHIBITION OR RESTRICTION OF IMPORTATION OR EXPORTATION OF GOODS
According to Section 16, the Central Government may, from time to time, by notification in the official gazette, prohibit or restrict the bringing into or taking out of Pakistan of any goods of specified description under Section 15 by air, sea or land.
CONFISCATION OF GOODS
Section 17 of the Customs Act 1969 says that if any goods specified in Section 15 are imported into or attempted to be exported out of Pakistan shall be liable to detention or confiscation.