What is the Law to Govern Trademarks in Pakistan?

According to the Trade Marks Ordinance 2001 and the Trademarks Rules 2004, which superseded the Trade Marks Act 1940, trademarks are a type of intellectual property that require regulation. The scope of the law is to protect registered trademarks from infringement and unauthorised use, as well as settle disputes relating to them. WHAT ARE THE DIFFERENT INTERNATIONAL TRADEMARK TREATIES SIGNED BY PAKISTAN? Pakistan has signed a number of international treaties for the enforcement of Trademark rights, both for local and foreign proprietors. These include: The Convention Establishing the World Intellectual Property Organization; The Paris Convention for the Protection of Industrial Property 1883 (Paris Convention); The Agreement establishing the World Trade Organization (WTO); The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and Madrid Agreement since February 2021 to centrally administer trademark regulations.

WHAT GOVERNMENT DEPARTMENT REGULATE TRADEMARK DISPUTES AND AFFAIRS IN PAKISTAN?

The government of Pakistan established The Intellectual Property Organization (IPO) by promulgating the Intellectual Property Organization Act 2012. This act regulates and administers the registration of all kinds of trademarks in Pakistan.

WHO CAN APPLY FOR REGISTRATION OF TRADEMARK WITH IPO IN PAKISTAN?

Anyone can apply for registration of a Trademark in Pakistan, either as an individual or as a legal entity. Through the registration of a Trademark with the IPO, the owner or proprietor has exclusive rights to use the mark. Registration of a Trademark can be sought in any case where you are either already using the trademark or you intend to use it in the future.

WHEN TRADEMARK MAY NOT BE REGISTERED OR BE REFUSED TO BE REGISTERED BY IPO PAKISTAN?

Under the Trade Marks Ordinance 2001, trademarks to be registered must be in compliance with the provisions of the Ordinance. Some of the grounds provided in the law according to which a trade mark may be refused registration are as follows:

The trade mark sought to be registered lacks uniqueness and is similar and identical to some already registered trade mark;

The trade mark is devoid of distinctive character;

The trade mark which exclusively consists of a mark to identify a place, services, goods, quality, quantity etc.

A Trade Mark with a scandalous design;

A Trade Mark which is against any prevailing law, religious sentiments or morality;

Any Trade Mark which is declared illegal by process of law and declaration of the court.

WHAT ARE THE LEGAL RIGHTS OF PROPRIETOR OR OWNER OF REGISTERED TRADEMARK IN PAKISTAN?

As the registered proprietor or owner of a trademark, you're entitled to exclusive use of the trademark once it's registered. This means that if anyone attempts to infringe on your rights, you can take legal action against them for passing off or unfair competition.

WHAT ARE THE RIGHTS OF THE OWNER OR PROPRIETOR OF THE UNREGISTERED TRADE MARK IN PAKISTAN?

If you own an unregistered trademark, you can't file an infringement action or criminal complaint against someone who uses a similar trademark. However, you can file a passing off action in court. To do this, you'll need to prove that the other person's use of the similar trademark is likely to cause confusion among the public about who the owner of the trademark is.

CAN A FOREIGN TRADE MARK BE OFFERED PROTECTION IN PAKISTAN EVEN THOUGH IT IS NOT REGISTERED WITH IPO PAKISTAN?

Yes, foreign trademarks are also offered statutory protection in Pakistan. A recent example is of Starbucks famous logo which was being used by a local restaurant in Pakistan and heavily fined for breach of the famous trademark. It is noteworthy that any famous foreign trademark has been offered protection in Pakistan not merely under the Trade Mark Ordinance, 2001 but also because Pakistan is a signatory to Paris Convention and recently became a member of the Madrid System.

Pakistan is a country that takes intellectual property rights seriously, and this is evident in the way that they protect famous foreign trademarks. The Starbucks logo is just one example of a trademark that has been heavily protected in Pakistan. If you are thinking about doing business in Pakistan, you can be assured that your intellectual property will be safe.

WHAT ARE THE MAJOR BENEFITS OF REGISTRATION OF TRADE MARK?

A registered trade mark becomes the personal property of the owner or proprietor. No person can use it without the permission of the registered owner or proprietor. If there is a violation, the owner or proprietor can choose to file an infringement claim, including but not limited to a claim for damages, and also begin a criminal case against the violator.

The court can offer protection to the registered owner or proprietor of a trademark by restraining the violator from using a similar, identical, or deceptive trademark to cause further loss.

IS IT POSSIBLE TO SEARCH A TRADE MARK BEFORE RESERVING IT FOR BUSINESS?

To check whether a similar Trade Mark is already applied, pending or registered with IPO in a particular class or category, you can file a search request on form TM-55. For the purpose of making the search, it is important that the proposed Trade Mark be annexed with Form TM-55. PKR 1000 is payable on account of governmental fees which must be submitted in the shape of a Pay Order issued in name of the Director-General IPO. You also have the option to inspect the Trade Mark with the Intellectual Property Office (IPO) database. In that case, you will need to physically visit the IPO office and search the database for 15 minutes. You will be required to pay a governmental fee of PKR 300/- for a physical search of the Registry database.

WHAT ARE THE DOCUMENTS REQUIRED TO FILE APPLICATION FOR REGISTRATION OF TRADE MARK WITH IPO?

The following documents are required to apply for Trade Mark Registration with IPO:

A completed application on the prescribed Form 1, with the applicant's full name and particulars. A copy of the proposed Trade Mark.

Form TM-48 (Power of Attorney), duly stamped and notarized, if the Trade Mark is being applied for through an advocate or agent.

It is recommended but not mandatory to attach documentary proof showing that the Trade Mark has been used for several years. In any case where the application is contested, IPO will have to determine who the first user of the Trade Mark is.

HOW MUCH TIME AND COST DOES IT TAKE TO REGISTER TRADE MARK WITH IPO IN PAKISTAN?

The registration process for a trade mark in Pakistan usually takes 1-2 years, but this may be longer if the trade mark is objected to by a third party. The official cost of registering a trade mark in one class/category is PKR 15,000/-. However, the total cost of the registration process, including all expenses and the professional fee of a lawyer, is usually between PKR 50,000/- and PKR 100,000/-. The cost may increase further if the trademark application is opposed by a third party.

HOW TO DETERMINE THE CLASSIFICATION OR CATEGORY IN WHICH TRADE MARK SHOULD BE REGISTERED?

Depending on the business requirements, a trade mark can be registered in one or more classes or categories. Not only is Pakistan a Paris Convention country, but it has also recently become a member of the Madrid System. There is also an international classification known as the NICE Classification, which has been agreed to by Pakistan. This classification has 45 different goods and services that can be chosen from for the purpose of trade mark registration with IPO.

WHAT IS THE PROCEDURE FOLLOWED BY IPO PAKISTAN IN REGISTERING THE TRADE MARK?

Trade mark registration is required in order to ensure that your business has the exclusive right to use its trade mark(s). A trade mark is a sign used to distinguish your goods and services from those of other traders. You will need to file an application for registration of your trade mark with the registrar IPO, who will assign a unique trade mark number to your application. The registrar will examine the trade mark to confirm that it falls within the scope of the Trade Mark Ordinance 2000 and will also determine whether the trade mark is in conflict with any already registered trademarks.

WHAT ARE THE DOCUMENTS REQUIRED TO FILE APPLICATION FOR REGISTRATION OF TRADEMARK WITH REGISTRAR IPO?

While you don't need to prove that you've used your trademark in order to register it, the Registrar of Intellectual Property may request proof of use at any point during the registration process. Keep in mind that if you haven't used your trademark yet but plan to in the future, you'll need to start using it within five years of registering it - otherwise, your registration could be cancelled.

CAN A WORD OR SYMBOL BE USED TO SHOW THAT TRADEMARK IS ALREADY REGISTERED?

In Pakistan, the owner of any registered trademark is allowed to use the ® and ™ symbols with their trademark in order to confirm that the trademark is already registered with the Intellectual Property Office (IPO). However, it's important to note that using such symbols without a registered trademark is an offense under section 102 of the Trademark Ordinance 2000 and the offender could be liable to imprisonment for a maximum term of six months, or a fine, or both as punishment.

WHETHER CERTIFICATE FOR TRADEMARK REGISTRATION IS EFFECTIVE FOR LIFE TIME OR IS REQUIRED TO BE RENEWED?

A trademark certificate is valid for 10 years and must be renewed under Section 35 of the Trademark Ordinance 2000 by the owner.

WHO CAN INITIATE AN ACTION OF INFRINGEMENT BY FILING A SUIT OR COMPLAINT UNDER THE TRADE MARK ORDINANCE 2000?

The owner of a registered trademark may bring a claim under the Trademarks Ordinance 2000 against anyone who uses their trademark without permission, including in a way that might cause confusion with the registered trademark. This person is called the proprietor. As well as the proprietor, a licensee or assignee can also bring a claim in tribunal against anyone who violates the trademark. Proprietors of an unregistered trademark may also approach the tribunal, but they can only file a claim of passing off.

WHAT EVIDENCE GENERALLY IS REQUIRED TO ESTABLISH INFRINGEMENT IN TRIBUNAL?

In a trademark infringement case, the plaintiff would need to show in court that they are the rightful owner of a registered trademark, while the defendant is using a similar or identical mark without authorization. For an unregistered trademark, the plaintiff would need to prove in a passing off case that the defendant is intentionally deceiving consumers into believing that their products or services come from the plaintiff. The plaintiff would need to show that they have an established reputation or goodwill in the brand, and that the defendant's actions are causing confusion or harming their business.

WHAT IS THE PERIOD PRESCRIBED UNDER THE LAW FOR FILING CLAIM OF INFRINGEMENT IN TRIBUNAL?

According to Section 81, if a proprietor does not take any action against infringement or file an opposition within 5 years from the date of learning about the defendant's use of their trademark, this is seen as acquiescence. This means that after 5 years have passed, the plaintiff cannot go to court claiming infringement unless they can prove that they had no knowledge of the defendant's use of their trademark during that time.

WHAT ARE THE REMEDIES AVAILABLE TO PROPRIETOR AGAINST INFRINGEMENT OF TRADE MARK? WHETHER THERE EXIST ANY CRIMINAL REMEDIES UNDER THE LAW TO PROSECUTE THE INGRINGEE?

If someone is violating your trademark, you as the proprietor can file a lawsuit against the infringer before the Tribunal. The Tribunal is established under Section 17 of the IPO Act, 2012. You can ask for a permanent and mandatory injunction against the infringer, along with damages for actual loss, future profit or loss of reputation.

Tribunals have the power to both conduct civil and criminal proceedings. They can try all Trade Mark-related offenses defined in Section 99 to 107 of the Trade Mark Ordinance 2000 as well as Sections 478, 479, 480, 481, 482, 483, 485, 486, 487, 488 and 489 of Pakistan Penal Code 1860. The maximum punishment for these offenses is 2 years in jail and/or a minimum fine of PKR 50,000/-.

WHAT IS THE FORUM OF APPEAL AVAILABLE UNDER THE LAW?

An appeal against the decision of the Tribunal must be filed before the High Court in the jurisdiction in which the Tribunal made its original judgment and decree. A division bench of the High Court hears appeals filed against judgments and decrees of the tribunal. However, if appealing against an order of the tribunal, the appeal is heard by a single bench of the High Court in the jurisdiction in which the tribunal issued its original order.

CAN A DISPUTE BE RESOLVED THROUGH ARBITRATION OR MEDIATION AND IS ENFORCEABLE IN PAKISTAN IN TRADEMARK RELATED DISPUTES?

Arbitration and mediation have been increasingly used as methods of alternate dispute resolution (ADR) in Pakistan over the years as they are generally seen as quicker ways to resolve disputes than going through the process of litigation. In order for ADR to take place through arbitration or mediation, however, both parties must agree to use this method instead of going to court. Although ADR is not yet as popular as it could be in Pakistan, it has been shown to be a cheaper and quicker option in some cases. When arbitration or mediation is used to settle a dispute, the award is binding on both parties and cannot usually be challenged.

As mentioned before, in order for arbitration or mediation to take place between two parties, they must first agree to an arbitration clause which would prevent either party from going to court to resolve the dispute.

Lahore Office

Block E 1, Johar Town , Lahore, Punjab , Pakistan 54000
Mr. Ahmed Burhan

Faisalabad Office

Burhan Center, 97-99, Gulistan Market Railway Road, Faislabad, Pakistan
Mr. Ahmed Burhan

UK Office

Associate Office (London)
Mr. Ahmed Burhan