What are the different kinds of mark that can be registered as trademarks under the Trade Marks Ordinance, 2001?
- Word marks, logos, signatures, names, devices, labels, numeral(s) and/or any Combination of these
- Combinations of colours
- Shape of goods
- Sound marks
- Smell marks (None have so far been registered).
Is registration of a trade mark essential?
Registration, though not essential, is advisable as it is prima facie documented proof of validity and ownership of the trade mark.
Who can apply to register a trade mark?
Any person claiming to be the proprietor of a trade mark can seek registration. The application can be filed either on the basis of actual use (prior to the filing of the application) or intention to use.
Are service marks registrable in Pakistan?
Are multi-class permissible in Pakistan?
No. Pakistan only allows application to be filed in single class.
What documents are required when filing a trade mark application in Pakistan?
- Description of the mark i.e. whether it is a word mark or a logo or device. If it is a logo or device mark, a representation of the mark must be provide.
- Class/es in which registration is sought
- Goods/services in respect of which registration is sought.
- Date of first use of the mark in Pakistan. Where a mark has not been used, confirmation that it is ‘proposed to be used’ should be provided.
- Name, address, legal status and trade description of the Applicant.
- Notarized and executed Authorization of Agent (this can be filed later).
- Where a priority claim is being made, a certified copy of the priority document together with a certified English translation (if the priority document is not in English). The priority document must be filed within three months of the date of filing the application.
- Transliteration and translation of non-English words appearing in the mark.
What is the next step after filing of an application?
Once the application is filed, Registry issues the Filing Certificate to the Agent/Applicant within 2-3 weeks’ time.
How long Registry does takes to examine an application?
The Registry examines and issues the Examination Report within 6-10 months of the filing of the application.
Is there any deadline to respond to the Examination reports/Show Cause Notice?
Response to the Examination Report/Show Cause Notice is required to be filed by the Agent/Applicant within two months of the issue of Show Cause Notice. Three extensions each of one month are available to the Applicant/Agent.
Until when can an advertised mark be opposed?
Any advertised mark may be opposed within 2 months of date of publication of the Trade Marks Journal which is further extendible by two months.
Does the mark automatically registered after publication if no opposition/s is filed against a mark?
If no oppositions are filed to the published application within opposition of four months, the Trade Marks Registry will issue Demand Notice to the Agent/Application calling upon them to submit registration fee within one month.
Is there any other formality after submitting the registration fee?
Once the registration fee is submitted by the Applicant/Agent, the registration certificate in respect of the mark will be issued within 5-6 months’ time.
Can you use the symbol ® in connection with trade marks in Pakistan?
Yes. Use of the symbol ® can be only in respect of a registered trade mark. Using the said symbol in connection with an unregistered trade mark, however, will amount to a false representation, which is a punishable offence with imprisonment of at least one month up to six months and fine or both.