Trademark means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertaking. A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Trademark enables consumers to identify a product of a particular company so as to distinguish it from other identical or similar products provided by other companies and also trade mark enables companies to differentiate their products from their competitors products.
In Pakistan, registration of trade mark and their protection is governed by the provisions of the Trade Mark Ordinance, 2001 and the Trade Mark Rules, 2004 set out the registration procedure.
Trademark law does not require mandatory registration of trade mark for its protection. Trade mark protection is obtained through its bona fide use but registration provides certain rights and is highly recommended. Registration of trade mark will provide strong protection, particularly in case of conflict with an identical or confusingly similar trademark.
Requirements for Trademark Registration in Pakistan
Any person claiming to be the proprietor of a trademark used or proposed to be used by him may make an application for its registration. Jointly owned trademarks may be registered by the joint proprietors of trademarks. If the applicant is a sole proprietor of a mark the application shall be in his name and signed by him. In the case of a partnership, the application shall be in the names of all partners and it shall be signed by one of the partners. In case an application is made in the name of body corporate, it shall be singed by the director or other principle officer and the capacity in which he has signed should be stated below the signature. Application may be made either by the owners of the marks, by a legal practitioner or registered trademark agent who has been authorized by the applicant to act on his behalf.
According to the Trademark Law in Pakistan, a trademark shall not be registered unless it is distinctive, and a mark will be registered only when it contains one or more of the following essential particulars namely:
- The name of a company, individual or firm, represented in a special or particular manner.
- The signature of the applicant or some predecessor in business.
- One or more invented words
- One or more words having no direct reference to the character or quality of the goods and not being in its ordinary signification a geographical name or surname or the name of a caste sector tribe in Pakistan. Having regard to the extent of the mark being inherently adapted to distinguish and by reason of user the mark is in fact adapted to distinguish.
- Any other distinctive mark, provided that a name, signature or any word, other than such as fall within the descriptions of the above clauses, shall not be registrable except on evidence of distinctiveness, which means adapted to distinguish.
Every application for the registration of trademark shall be in respect of goods or services in one class only of the Fourth Schedule and for textile trademark Fifth Schedule of the Trade Mark Rules, 2004. For purpose of registration of trademarks, goods and services have been divided into 42 classes as set out in the Fourth Schedule and for textile trademark classes have been divided into 94 classes as set out in the Fifth Schedule of the Trade Mark Rules, 2004. An application for the registration of the same trade mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods or services in more than one class, the registration in respect of goods or services included in each separate class shall be deemed to be a separate registration for all the purposes of the Trade Mark Ordinance, 2001.
Application for Registration of Trademark in Pakistan
Before making an application it is recommended that you request the registrar to cause a search of your proposed trade mark to ascertain that there is no other registered trade mark or among pending applications for registration that are duplicating or conflicting in any way from your proposed trade mark. To make such request you have to submit a Form TM-55 to the registrar along with fee of Rs. 1000/ and two sample of your proposed trade mark on sheets of strong paper approximately 13 inches by 8 inches in size. On receiving confirmation from the registrar that there are no other trademarks that duplicate yours, you may proceed with your application.
An application for registration of trademark is required to be made in d u p l i c a t e i n F o r m T M – 1 t o the registrar of trademark along with the prescribed fee i.e. Rs.2000/-. The application shall be written, printed or type written in English upon strong paper size 13”X8” with a margin of not less than 1-1/2”.
For registration of textile trade mark, consisting exclusively of numerals or letters or any combination thereof, an application shall be made in Form TM-53.
Documents Required for Trademark Registration in Pakistan
The application for trademark registration shall comply with the requirements as follows:
- Application should be accompanied with six additional representation of the trade mark (besides two affixed to the application in duplicate) upon strong sheets of paper size 13”X8”.
- Application for registration of a trade mark shall contain a statement of user in application of the period during which, and the person by whom, mark has been used in respect of the goods or services mentioned in the application. In this regard, the Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
- Serial number and specification of the class of goods or services, for which trade mark to be registered as indicated in Schedule IV or V to the Trade Marks Rules, 2004, should be stated on the registration application.
- Full name, address and contact details of the agent of applicant if applied by agent on behalf of applicant. Authorization should be made in Form TM-48 which has to be stamped by Rs. 500/-.
- Applicant who do not reside or carry on business in Pakistan are required to furnish an address in Form TM-50 for service in Pakistan, to which all correspondence will be sent by the office of the registrar.
Procedure of Getting a Trademark in Pakistan
On receiving the application, the registrar shall carry out an internal search for earlier trade marks registered. The registrar may refuse to entertain the application if the same trade mark is registered earlier by some one else or it does not satisfy the requirements of the Trade Mark Ordinance, 2001.
Where an application for registration of trade mark has been accepted the registrar shall cause the application accepted to be advertised in trade mark journal and for all legal purposes constitute a sufficient done notice.
As soon as may be after the expiration of two months from the date of the advertisement in the Journal, if no objection is filed and if no extension has been obtained by a third party to file opposition, the Registrar shall on payment of the registration fee of Rs. 6000/- and submission of Form TM-11 enter trade mark in the register and issue a certificate of registration to the applicant.
Opposition of Trademark in Pakistan
The advertisement of the application in the TradeMark Journal may trigger of a series of opposition proceedings by any person who opposes the registration of the trademark.
- The opponent shall send in duplicate a notice of opposition to the Registrar within 2 months of the advertisement.
- The Registrar shall then forward a copy of the notice to the applicant.
- Within 2 months of receiving such a copy, the applicant shall file a counter statement with the Registrar.
- The Registrar shall then forward a copy of the counter statement to the opponent.
- Within 2 months of the receipt of the copy of the counter statement, the opponent may file a rejoinder and evidence.
- The Registrar will then forward a copy of the rejoinder to the applicant.
- The applicant will then file counter evidence within 2 months of the receipt of such copy.
- The Registrar will then forward a copy of the counter evidence to the opponent.
- The opponent shall then file evidence strictly in reply to the applicant’s evidence within one month of the receipt of the copy.
- The Registrar will then forward a copy of the evidence to the applicant. Upon completion of evidence, the Registrar shall serve a notice to the parties and fix a date for the hearing of arguments.
- Any party wishing to appear in front of the Registrar shall within 14 days notify the Registrar in the form of TM-7.
- The Registrar shall notify in writing to the applicant and the opponent of his decision.
- The Registrar shall enter the trademark in the Registrar upon the completion of the opposition proceedings.
- In case of no opposition proceedings, he shall enter the trademark within 2 months from the date of advertisement in the Trademark Journal.
- Following the entry of the trade mark, the Registrar shall then publish the registration in the prescribed manner and issue to the applicant a Certificate Of Registration sealed with the seal of the Trademarks Registry
Registration of a Defensive Trademark
A well-known invented word trademark registered in respect of certain goods may be registered by the proprietor as a Defensive Trademark for other goods on which he does not use or propose to use the mark subject to certain conditions. An application for registration of a defensive trademark is to be made which should be accompanied by a statement of case giving full particulars of the facts on which the applicant relies in support of this application and verified by an affidavit.
Refusal of Trademark Registration
The registrar may refuse to register the trademark on the following grounds:
- If it is a false trade description.
- Trademark, which are devoid of any distinctive character.
- It is identical with an earlier registered trademark and its goods and services are also similar.
- It is similar with an earlier registered trademark and its goods and services are also similar.
- A trademark which is identical or similar with an earlier registered trademark and its goods and services are not similar shall not be registered if the earlier has a good reputation in Pakistan and later would take unfair advantages.
- A trademark shall not be registered if its use is liable to be prevented by virtue of law.
Geographical names of countries like Pakistan, Great Britain and Egypt can never be registered as trademarks as their registration would embarrass other traders Geographical names of places which are associated with the manufacturer of particular goods cannot also be registered as trade marks in respect of those goods. Sialkot and Karachi, for example, will not be accepted for registration in respect of sports goods and textile piece goods respectively as those places are well-known for the manufacturer of these goods. Also geographical names which have lost their geographical significance and denote certain kinds of goods are not registrable in respect of those goods. A few such words are Portland in respect of cement, Virginia in respect of tobacco, Kashmir in respect of shawls and Scotch in respect of whisky.
A registered Trademark is a personal property of the applicant. The person having a registered Trademark has exclusive rights which are infringed by use of mark in Pakistan without his consent. The rights are vested to the applicant right form the date of registration. An infringement of a registered trademark shall be actionable by the proprietor of the trademark. The proprietor of the trade mark has the following relief available against the infringement of the trademark:
The registration of trade mark shall be valid for a period of ten years from the date of registration which may be renewed for further 10 years from the date of expiration or date of the last renewal. Application for renewal shall be made in form TM-12 within 6 months of the expiration of the current registration.