Registration and useOwnership of marks
Who may apply for registration?
Any legal person, a national of any country, may apply for the registration of a trademark.
A proprietor or owner of a mark 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 it so deems fit.
A person who is already using the trademark or service mark or has intention to use the trademark or service mark in future may file an application for registration under the Trade Marks Ordinance 2001 as sole proprietor of the trademark or service mark.
In the event that two or more persons are co-proprietors of a trademark or service mark, the said mark would be jointly applied, having an equal, undivided share in the trademark or service mark, subject to an agreement to the contrary.Scope of trademark
What may and may not be protected and registered as a trademark?
Any mark may be protected and registered as a trademark if it is capable of being represented graphically and is for distinguishing the goods or services of one undertaking from that of another. A mark in this regard includes a device, brand, label, ticket, name (including personal name), slogan, signature, word, letter, numeral or figurative element, or any combination thereof.
In addition to the above, collective or certification marks and other non-traditional marks, including colour, sound and three-dimensional designs, may also be protected through trademark registration. There is, however, some ambiguity regarding the protection of smells, owing to the problems of graphical representation.
A mark may not be protected and registered if it does not satisfy the definition of a trademark as set out in clause xlvii of section 2 of the Ordinance. Moreover, the Ordinance clearly sets out the absolute and relative grounds for refusal of a trademark in sections 14 and 17 of the Ordinance respectively.
A mark shall not be registered and protected as a trademark if the mark:
- is devoid of any distinctive character;
- consists exclusively of indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; and
- consists exclusively of indications that have become customary in the language or in the bona fide and established practices of the trade.
Rights pursuant to registration confer the legal right upon the registered proprietor to initiate an action for infringement, passing off and unfair competition. The proprietor of an unregistered trademark, on the other hand, can only initiate action for passing off.
Broadly speaking, a person has no right to pass off their goods as the goods of somebody else, and therefore an action for passing off is enforceable in respect of registered as well as unregistered trademarks. In this regard, the key element is deception and confusion; therefore, if any mark, even one that is not entitled to registration, is used in manner so as to cause deception or confusion, the prior user may institute proceedings under common law.Unregistered trademarks
Can trademark rights be established without registration?
The courts in Pakistan form part of the common law jurisdiction that recognises the rights of the prior user or adopter irrespective of the registration under the tort of passing off. The action in pursuant to such rights could be brought as per the provisions of Trade Marks Ordinance 2001; however, a plaintiff bringing a claim for passing off must produce evidence establishing the following three-part test:
- goodwill and reputation attached to the goods and services supplied in association with the trademark;
- a misrepresentation by the defendant to the public leading, or likely to lead the public to believe that the goods and services supplied by the defendant are those of the plaintiff, whether or not that misrepresentation is intentional; and
- the plaintiff is suffering, or there is a likelihood that it will suffer, damage as a consequence of the misrepresentation by the defendant.
Owing to the level of evidence required to substantiate a claim for passing off, it can be an expensive and lengthy process.
Similarly, as per section 86 of the Ordinance, well-known trademarks can be protected without requiring any registration. Pakistan is a signatory to the Paris Convention and affords protection to an owner of a well-known trademark who is domiciled in a Paris Convention country or has a real and effective industrial or commercial establishment in a Paris Convention country, whether or not that person carries on the business or has any goodwill in Pakistan, and references to the proprietor of such a mark shall be construed accordingly.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Famous foreign trademarks termed as well-known marks are afforded statutory protection under Pakistani law, even where the mark is not registered or used in Pakistan. In determining if a trademark is well known, without having to require registration or actual use in the form of sales of goods or services under the trademark in Pakistan, the following factors shall be considered as relevant criteria for establishing the well-known status of the trademark, namely:
- the amount of worldwide recognition of the trademark;
- the degree of inherent or acquired distinctiveness of the trademark;
- the duration of the use or advertising of the trademark in Pakistan or internationally;
- the worldwide commercial value attributed to the trademark;
- the worldwide geographical scope of the use and advertising of the trademark in Pakistan or internationally;
- the worldwide quality and image that the trademark has acquired in Pakistan or internationally; and
- the worldwide exclusivity of use and registration attained by the trademark and the presence or absence of identical or deceptively similar third-party trademarks validly registered or used in relation to identical or similar goods and services.
Moreover, the owner of a trademark is entitled to protection under the Paris Convention, which forms part of the Ordinance through section 86. The proprietor shall be entitled to restrain by injunction the use in Pakistan of a trademark of which, or the essential part of which, is identical or deceptively similar to the well-known trademark in relation to identical or similar goods or services, where the use is likely to cause confusion or where such use causes dilution of the distinctive quality of the well-known trademark.The benefits of registration
What are the benefits of registration?
The effects of registrations are given in section 33 of the Trade Marks Ordinance 2001, although the list is not exhaustive, it does stipulate the basic rights conferred on the registrants as set out below:
- the proprietor of a registered trademark shall have exclusive rights in the trademark that are infringed by use of the trademark in Pakistan without their consent;
- without prejudice of the right of the proprietor of a registered trademark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this ordinance if the trademark is infringed; and
- references in this Ordinance to the infringement of a registered trademark shall be to any such infringement of the rights of the proprietor.
In addition to the above, the registration of a trademark in the courts of Pakistan is considered to be prima facie evidence of proprietorship that could result in instant relief by the courts in the form of interlocutory injunction against any unauthorised use of the registered mark. The registration is further used on many forums to enforce proprietary rights in various areas of practice. Moreover, the registration is proved vital to attract the jurisdiction of various governmental agencies and enforcement forums such as the Pakistan Customs Service under SRO No. 170(1)/2017, Drug Regulatory Authority and Competition Commission of Pakistan, etc.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The application for the registration of a trademark must be in manual form and the list of required documents as provided under the Trade Marks Ordinance 2001 and the Trade Marks Rules 2004 is as given below:
- An application as per the prescribed form that sets out the particulars of the applicant including a formal request for registration of a trademark, full name and address of the applicant, a statement of goods or services in relation to which it is sought to register the trademark, international classification of goods or services in which the applicant wishes to apply, a representation of the trademark and full name, address and contact details of agent, in case the application, on behalf of the applicant, if made by their agent. The application shall further state that the trademark is being used by the applicant, or with their consent, in relation to goods or services, or that they have a bona fide intention that it should be used.
- If an applicant wants to apply through an advocate or agent for the registration of a trademark, they have to authorise an agent through form TM-48 (Power of Attorney) duly stamped and notarised.
Rule No. 17 of the Trade Marks Rules 2004 stipulates that every application for the registration of trademark, and where additional copies of the application are required, every such copy shall contain a representation of the mark in the space provided on the application form for that purpose. The Rules further provide principles regarding additional representation.
In addition to the above, it is advisable that a search may be made to the Registrar of Trademarks to check whether there are any identical or similar marks present on the Register. A search request can be filed on form TM-55. One search application would be applicable for one trademark search in any one class only and should be accompanied with two representations of the mark along with the search fee amounting to 1,000 Pakistani rupees should be submitted in the form of a pay order or bank draft made in the name of the Director General IPO. The Trade Marks Registry further provides a personal search facility, during which the applicant or their agent could access the Registry database through an on-site system for 15 minutes each, the results of a search would not be limited to one class and would remain private and not be part of the official record, the fee for utilising the facility is 300 Pakistani rupees for 15 minutes.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
It takes about two years to obtain a trademark registration, barring an opposition. The official cost for filing one application in one class is approximately US$10. The total cost, including professional fees, of a legal practitioner and expenses can range between US$400 and US$600, but may increase in the event of office objections.
The estimated time and cost in the registration process may increase owing to office action or objections by the Trade Marks Registry.
The costs may further increase if the trademark application is opposed by a third party.
Documents such as power of attorney and trademark representation (namely, product labels or packaging materials) are required. The Registry will also require evidence of bona fide use by the applicant if prior use is claimed.
Moreover, as per section 25 of the Ordinance, where a person has duly made a convention application in respect of a trademark and within six months from the date of such a Paris Convention application that person or their successor in title applies to the registrar in Pakistan for the registration of the same trademark under the Ordinance in respect of some or all of the same goods or services (or both) in respect of which registration was sought in the Paris Convention country, in such a case, the person or their successor in title may claim priority for registration of the trademark in Pakistan. The effect of such priority is that the relevant date for the purpose of establishing precedence of right is the date of filing of the first Paris Convention application and the registrability of the trademark shall not be affected by any use of the mark in Pakistan for a period between the date of first application in the Paris Convention country and the date of application for registration in Pakistan. The registration would formally come into effect after the issuance of trademark registration certificate, but the right would be deemed to have been accrued since the date of application for registration.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
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. There are 45 classes for goods and services with 1 to 34 being for goods and 35 to 45 for services.
Multi-class applications are not available for either searches or registration.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The proprietor of a trademark needs to file form TM-1, on which the registrar would assign an application number. The mark is then examined by the Registry to determine whether it falls within the definition or ambit of a trademark and whether there are any conflicting marks on the register.
In the event that the trademark does not fulfil the requirements, the registrar issues an examination report with their objections and the proprietor of the trademark is required to file a written statement contesting the objections within a period of one month. The application is then listed for hearing, after which the registrar may either accept the mark to be advertised in the Trademarks Journal or reject the application. In the event that the application is rejected an appeal may be filed with the High Court of the competent territorial jurisdiction. In the event that the application is accepted, the mark is accepted for advertisement and published in the Trademarks Journal.
Letters of consent are usually accepted by the Registry if the objection pertains to the same third-party mark since the basis of the objection is negated through obtaining the third party’s consent.
Once the mark is advertised in the Trademarks Journal, persons who can potentially be affected by the registration of the trademark are invited to file oppositions, to which the proprietor of the trademark files a response. The opponent is bound to file evidence to which the proprietor of the trademark responds and is finally heard by the registrar, after which the registrar can decide whether to grant registration or not.
Any decision taken by the registrar in the opposition proceedings can be appealed to the High Court having competent jurisdiction.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
The use of a trademark or service mark may be claimed before registration is granted or issued. Proof of bona fide use may have to be submitted on the request of the registrar. However, the proprietor may also express its intention to use the mark in the future by stating that the mark is proposed to be used.
Pakistan is a signatory to the Paris Convention and priority can be claimed if the application is filed within six months of the application in the Paris Convention country.
If registration is granted without use, the proprietor of the trademark must use the mark within five years from the date of registration to either maintain the registration or to defeat a third-party challenge on grounds of non-use. No bona fide use for a period of five years from the date of registration can attract the claims of ‘trafficking in trademarks’, which can be highly prejudicial to the trademark in question.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
The markings ® and ™ can denote the status of the mark in Pakistan being registered and applied for respectively. The markings are means of communicating the status of a mark and assists in the effect of consumer dependability over the proprietorship over the mark and the product bearing the same. Although marking is not a mandatory requirement as per the Pakistani law, its use is beneficial because it reduces the risk of the infringer claiming innocence of not being aware of the status or existence of proprietary rights over the mark and deter any potential infringer by illustrating legally recognised rights over the same. In addition to the above, misrepresentation via marking as to the status of a trademark also amounts to an offence under section 102 of the Trade Mark Ordinance 2001 and is punishable with imprisonment for a term that shall not be less than one month but that may extend to six months, or a fine, or both.Appealing a denied application
Is there an appeal process if the application is denied?
The decision of the registrar must be communicated to the applicant in writing. If the applicant intends to appeal the decision, they must do so within one month from the date of application in the form as set out in form TM-15 to the registrar, requiring them to state in writing the grounds of and the materials used by them in arriving at their decision. An appeal to the High Court having competent jurisdiction from any decision of the registrar under the Trade Marks Ordinance 2001 or the Trademark Rules 2004 must be made within two months from the date of such a decision or within such further time as the court may allow. The appeal procedure in the High Court is the same as that of a civil case.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Applications are published and advertised in the Trademark Journal for opposition. As per section 28(2) of the Ordinance, any person may, on application made to the registrar in the prescribed manner and on payment of the prescribed fee, give notice of opposition to the registrar.
A third party may oppose the registration of a trademark after the mark is accepted and advertised in the Trademark Journal.
The primary bases of such challenges or oppositions are prescribed in section 29 of the Ordinance. Upon receiving the notice of opposition from the third party, the applicant must file a counter-statement within two months, as failing to do so would result in the application being abandoned. In the event that the applicant files a counter-statement, the matter is taken up for evidence and subsequently a hearing takes place. Upon completion of the hearing, the registrar passes the orders for grant or denial or refusal of registration.
Moreover, as per section 80(5) of the Trade Marks Rules 2004, a request for the extension of time for filing the opposition after the time has expired can be made to the registrar, who at their discretion can extend the period or time if they are satisfied with the explanation for delay and is satisfied that the extension would not disadvantage any other person or party affected by it.
Another interesting trend is for a third-party proprietor who believes that the proposed application is identical or very similar to their mark, to write to the applicant stating the basis of its claims and calling for an amicable settlement. However, the party is not obliged to do so. This is termed a ‘pre-opposition’ letter, and we have seen many cases resolved at this stage with no need to proceed with a formal opposition.
In accordance with section 73(4), an application for revocation or cancellation may be made by an interested party, including a brand owner, who does not have protection, provided that it is a bad-faith application, either before the High Court or the registrar. The official cost for filing a notice of opposition for one application is US$60. The total cost, including the professional fees of the legal practitioner and expenses, can range between US$1,700 and US$2,000.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark shall be registered for a period of 10 years from the date of registration and may be renewed under section 35 of the Ordinance for a further period of 10 years at the request of the proprietor, subject to payment of such a renewal fee as may be prescribed. In order to maintain registration, the proprietor must show bona fide use of the trademark in Pakistan and pay the prescribed fee for its renewal. Bona fide use can be evidenced in the form of invoices, packaging and advertising and promotional material.Surrender
What is the procedure for surrendering a trademark registration?
The provision for surrendering of registered trademark by the proprietor is provided under section 38 of the Trade Marks Ordinance 2001 that states that: 'A registered trademark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered'. The Trade Marks Rules of 2004 further provides the procedure for surrender wherein it states that the proprietor may surrender registered trademark, by sending notice to the Registrar either in the form as set out in form TM-35 (given in the rules) in respect of all the goods or services for which it is registered or in the form as set out in form TM-36 in respect only of those goods or services specified by them in the notice. After such notice, the Registrar shall, upon the surrender taking effect, make the appropriate entry in the Register and publish the same.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
The scope of trademarks as enunciated in the Trade Marks Ordinance 2001 is fairly broad, as a result of which there are certain elements, the protection of which may overlap between copyrights and designs. For instance, any element that bears an artistic work such as a logo or a trade dress or packaging may be protected under both trademarks and copyrights. Similarly, three-dimensional marks that exhibit the shape of a product may be protected under trademarks as well as designs.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The Trade Marks Ordinance 2001 governs all instances of infringement and does not strictly distinguish between online or physical infringement. ‘Domain names’ are defined under section 84 of the Ordinance 2001 as: ‘A domain name shall be a mark that is a user-friendly substitute for an internet address’. In addition to the above, as per section 40(6) of the Ordinance, a person shall infringe a registered trademark if the person uses such registered trademark as their domain name or part of his domain name or obtains such domain name without consent of the proprietor of the registered trademark, with the intention of selling such domain name to another including the proprietor of the registered trademark. As such, the online use of a deceptively similar or identical trademark or trade name or an infringing domain name would be actionable under the Ordinance.