- HISTORICAL BACKGROUND OF TRADEMARK ORDINANCE, 2001
- Comparison between Trademark Act, 1940 and Trademark Ordinance, 2001
- WHAT IS “MARK”?
- WHAT IS “TRADEMARK”?
- WHY WE REGISTER OUR BUSINESS/BRAND AND OBTAIN TRADEMARK CERTIFICATE?
- Intellectual Property Office Lahore
- WHO CAN APPLY FOR REGISTRATION?
- Trademark Registration in Pakistan
- WHETHER SEARCH BEFORE FILLING OF TRADEMARK APPLICATION IS NECESSARY?
- WHAT IS CLASSIFICATION?
- Corporate Office
- CLAIMING COLOUR(S)
- TIME DURATION
- PROCEDURE TO FILE THE APPLICATION FOR REGISTRATION OF TRADEMARK
- Ipo lahore office address
- contact us
- 33 Comments
- Contact Us
- REGISTRATION PROCESS OF TRADEMARK IN PAKISTAN: A COMPLETE GUIDE
- Duration of Registration
- Renewal Process
- OFFICES FOR FILLING OF APPLICATION FOR REGISTRATION OF TRADE MARK
- What are Intellectual Property Rights?
- Contact Information
HISTORICAL BACKGROUND OF TRADEMARK ORDINANCE, 2001
Currently, the Trademark Ordinance, 2001 is applicable in Pakistan to deal with any issue of trademark including process of registration of trademark and liabilities after the registration of trademark.
The Trademark Ordinance, 2001 has repealed “The Trademark Act, 1940” in the regime of President General Musharraf, in 2001.
The back ground history of this Ordinance is that the multilateral trade negotiations round known as the Uruguay round culminated in the establishment of the World Trade Organization (known as the WTO) by means of the Marrakesh Agreement, which came into effect on 1-1-1995.
Along with the Marrakesh Agreement, the states party to the same (known as member states, and including Pakistan) also entered into a number of other agreements, one of the most important of which was the Agreement on Trade-related Aspects of Intellectual Property Rights (commonly known as TRIPS).
As its name suggests, TRIPS relates to intellectual property rights including patents, trade marks and designs. Developed countries had to bring their national legislation in conformity with the WTO and other related agreements, including TRIPS, more or less immediately, but developing countries like Pakistan were given certain grace periods in this regard, which in the case of TRIPS extended up to 5 years.
Part I of TRIPS lays down certain general provisions and basic principles, while section 2 of Part-II specifically deals with trade marks and related rights. Article 2 (which is to be found in Part I) provides that in respect of Part II, member states have to comply with Articles 1 through 12, and 19, of another agreement, the Paris Convention for the Protection of Industrial Property, as amended (commonly known as the Paris Convention).
Thus, in order to comply with their obligations under TRIPS, the member States also had to be in compliance of the Paris Convention. Pakistan became a signatory to the Paris Convention on 22-7-2004.
It was in order to comply with its obligations under TRIPS that Pakistan repealed its then existing intellectual property laws, being the Patents and Designs Act, 1911 and the 1940 Act, and replaced them with the Patents Ordinance, 2000, the Registered Designs Ordinance, 2000 and the 2001 Ordinance respectively.
This is therefore the backdrop to the 2001 Ordinance, and in order to understand and apply its provisions properly, it is necessary to keep in mind the relevant provisions of TRIPS and the Paris Convention.
Comparison between Trademark Act, 1940 and Trademark Ordinance, 2001
If the 1940 Act and the 2001 Ordinance are compared, it will be seen that the latter statute introduces many new legal concepts (based of course, on TRIPS and the Paris Convention) which were not to be found in the 1940 Act.
Even in respect of those legal concepts which may appear to be the same as, or similar to, those found in the 1940 Act, the 2001 Ordinance in many cases uses new, and different, statutory language. Thus, even in respect of facts and circumstances which may be the same as, or similar to, those as arose under the 1940 Act, the application of the 2001 Ordinance may yet yield different results.
Cases decided under, or in relation or with reference to, the 1940 Act must therefore be reread and reappraised carefully before they are applied to the provisions of the 2001 Ordinance, even if those provisions may appear at first sight to be equivalent to those under the former enactment.
WHAT IS “MARK”?
The definition of mark has been provided in Section 2(1)(xxiv) of the Trademark Ordinance, 2001 that a “mark” includes, in particular, a device, brand, heading, label, ticket, name including person name, signature, word, letter, numeral, figurative elements, colour, sound or and combination thereof
WHAT IS “TRADEMARK”?
The Trademark Ordinance, 2001 has defined in section 2 (1) (xlvii) that “trade mark” means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings;
WHY WE REGISTER OUR BUSINESS/BRAND AND OBTAIN TRADEMARK CERTIFICATE?
Trademarks enable people to identify their product or service.
So they can become powerful and valuable business assets.
Intellectual Property Office Lahore
Trade mark protection is a business imperative and the best protection is obtained by way of registration. Therefore it is advisable to have your trademark registered because once the trade mark is registered, the owner/proprietor of a trade mark gets exclusive rights the TradeMark Ordinance, 2001 to use the trade mark.
Furthermore, a registered trade mark is a prima facie evidence of validity of trademark.
WHO CAN APPLY FOR REGISTRATION?
The owner/proprietor, partner, trust/society and company may be applied for the registration of their mark. The Application can be filed through authorized attorney or agent by preparing TM 48.
A Power of Attorney in favour of the attorney or agent from the applicant/proprietor of the mark under Form TM-48 of the Trade Mark Rules, 2004 on a Stamp Paper of Rs.
Trademark Registration in Pakistan
100/- for one mark and Rs. 200 for two or more marks.
WHETHER SEARCH BEFORE FILLING OF TRADEMARK APPLICATION IS NECESSARY?
Search prior to apply for the registration of mark is not mandatory.
A trade mark search is a completely optional step. Good companies always undertake trade mark before one considering filing a trade mark application. Therefore, it is strongly advisable to apply for search of your proposed mark prior to filling of Application for registration of Trademark.
A trade mark search determines two related issues of great import: will your trade mark infringe upon another’s trade mark, and could your trade mark application become a trade mark registration.
Because trade mark rights are granted to the first party to use that trade mark, a company providing a similar product and using a similar trade mark has superior trade mark rights over you.
Thus, they could potentially sue you for trademark infringement or if they own a trade mark registration, their trade mark could be a block to your trade mark being granted a trade mark registration. A trade mark search examines databases and can either “clear” a trademark for adoption or find that there are great risks involved with using that trade mark.
WHAT IS CLASSIFICATION?
A trademark is always filed in relation to a specific class or classes of goods and/or services.
There are total of 45 Classes in which the goods or services may fall. Classes 1 to 34 are for goods and Classes 35 to 45 are dealing with services.
The classification of goods and services under the Trademark Ordinance, 2001 is based on the Nice Classification (NCL) of Goods & Services established by the Nice Agreement in 1957. The classes are named after the city of Nice, France, where the first listing of classes was negotiated in 1957.
Act recognizes that a colour can also be a mark capable of registration or capable of affording distinction to a trade mark.
Thus, according to Trademark Act, a trade mark is can be registered without limitation of colour as well as with limitation as to Colour(s) or Combination of Colours. So, when a trade mark is registered without limitation of any colour(s) it is deemed to be registered for all colours, and a trade mark can also be limited wholly or in part to one or more specified colours.
An application for trade mark registration with limitation as to Colour(s) or Combination of Colours can be made in the same manner as it is made for registration of trade marks that registered without limitation of any colour(s).
Based on our experience and picking up of disposal rate at the trade marks registry, our tentative estimate is that the duration from filing of application to issuance of trademark registration certificate (where no opposition to applications comes forward) is 18 months.
PROCEDURE TO FILE THE APPLICATION FOR REGISTRATION OF TRADEMARK
Basic information on the steps to be taken for the registration of a trademark in Pakistan is as under:_
Ipo lahore office address
Filing of Application
2. Preliminary Examination
3. Final order for Publication
Publication in Trademarks Journal
5. Opposition Procedure
6. Issuance of Registration Certificate/Refusal
1. Filling of Application:
A trademark application can be filed in accordance with the Trademark Form i.e.
Form TM-1 and Form TM-2 (priority application) as available in Schedule II of the Trade Marks Act, 1999 along with the requisite government fee of Rs. 2,000/-.
1. The Name/Image of the mark sought to be registered;
The exact date of use of the mark. (not required, in case the mark is proposed to be used);
3. The name of the applicant/proprietor of the mark;
The address of the applicant/proprietor of the mark;
List of goods or services to allow us to identify the class or classes according to the International Classification of Goods and Services (Nice Classification 9th Edition classes 1 to 45).
The exact goods/services for which the mark is being used or is proposed to be used by the applicant/proprietor;
7. Trade Description of the applicant/proprietor. (for example, whether the proprietor/applicant a Retailer, Manufacturer, Wholesaler, Merchant, Service Provider etc.), and
8. A Power of Attorney in favour of the agent from the applicant/proprietor of the mark under Form TM-48 of the Trademark Rules, 2004.
2. Preliminary Examination
Once an application is filed, it is examined by the Registrar of the Trademarks.
Generally, the Examination of an application takes around 12 months from the date of filing of the application. After examination of application, the Registrar of the Trademarks may raise objections to the application as per Section 14 or 17 of the Trademark Ordinance, 2001 or any other technical or procedural objections. It is interesting to mention here that it is routing practice of Trademark Registry to raise the objections and the Trademark offices usually do it in almost 98% of trademark applications.
Objections which may be raised in the Examination:
Absolute Grounds For Refusal
Section 14 of The Trademark Ordinance, 2001 provides an absolute grounds for refusal of registration.—
(1) The following shall not be registered, namely:-
(a) mark which do not satisfy the requirement of clause (xlvii) of section 2;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of marks or indications which 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 (d) trade mark which consist exclusively of marks or indications which have become customary in the language or in the bona fide and established practices of the trade;
Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if, before the date of application for registration.
it has in fact, acquired a distinctive character as a result of the use made of it or is a well know trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(3) No trade mark nor any part thereof in respect of any goods or services shall be
registered which consists of, or contains, any scandalous design, or any matter the
use of which would-
(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be dis-entitled to protection in a High Courts or District Court;
(b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, perse, or in terms of goods or services it is intended to be so registered; or
(c) be contrary to any law, for the time being in force or morality.
(4) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Relative Grounds For Refusal:
Section 17 of the Ordinance further provides for the relative grounds of refusal which are as follows:
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because-
(a) it is identical with an earlier trade mark and is to be registered for goods- or services similar to those for which the earlier trade mark is registered; or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is registered.
and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented-
(a) by virtue of any law, in particular, the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade; or
(b) by virtue of an earlier right other than those referred in sub-section (1), (2) and (3) or clause (a) of this sub-section, in particular by virtue of the law of copyright design right or registered designs.
(5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier consents to the registration.
(6) Where separate applications are made by different persons to be registered as proprietor respectively of trademarks which are identical or nearly resemble each other.
in respect of the same goods or description of goods, the Registrar, if thanks fit, may refuse to register any of them until their rights have been determined by the High Court or a District Court.
The Examiner may also raise objections on certain procedural ground such as the absence of a valid Power of Attorney in favor of the trademark agent, incorrect classification of goods or services, incomplete information in the Trademark Application etc.
However, these objections are relatively easier to clear and do not substantially hamper the registration of the mark.
Examination Report/Show Cause
These objections raised by the Registrar are communicated to the applicants/attorney/agent (depends on who filed the application) by way of examination report/Show cause.
A hard copy of the Examination Report is sent to the Applicant/Attorney/Agent.
Response to the Objection
As per the section 27 of the Trademark Ordinance, 2001 in the event the Registrar has any objection in relation to the registration of the trademark, he shall communicate the same to the applicant and the applicant must respond to such objection within two month from the date of such communication.
If the Registrar is satisfied with the written reply, he may clear the mark for advertisement.
However, if the Registrar is not satisfied he is required to give a hearing to the applicant.
Final Order for Publication
After completion of hearing, the Registrar will pass a speaking order.
REGISTRATION PROCESS OF TRADEMARK IN PAKISTAN: A COMPLETE GUIDE
In the decision, the Registrar may also impose reasonable conditions, amendments, modifications and/or limitations on the registration as he deems fit and such proposal is communicated to the applicant in writing.
The decision of the Registrar must be communicated to the applicant in writing and the law makes a provision for an appeal from the decision of the Registrar.
4. PUBLICATION IN TRADEMARK JOURNAL
Once the mark is cleared of all the objections from the Trademarks Registry, it proceeds for advertisement in the Trade Marks Journal. The Trademark Journal is open to the public and the purpose of advertisement is to invite any opposition to registration of the mark from any third parties.
Once a mark is advertised and no oppositions are filed within the statutory time period, the mark moves to registration. However, if the Registrar receive any objection from any person, the opposition procedure commence with:
5. OPPOSITION PROCEDURE
Notice of Opposition
A notice of opposition is given in form TM – 5 of Trade Marks Rules, 2004 along with the requisite fee of Rs.
Once the applicant receives the notice of Opposition, he is required to file his counter statement in the form of TM-6 within two (2) months from the date of receipt of the notice of Opposition along with the requisite fee.
TM-6 shall be submitted alongwith the requisite fee of Rs.1,000/-
Submission of Affidavit-in-Evidence by both parties
Within two (2) months of the receipt of the Counter Statement, the Opponent is required to file evidence by way of affidavit in favor of the Opposition.
The time period for filing the evidence affidavit may be extended by one month on application to the Registrar. The Applicant is thereafter required to furnish his own evidence by way of affidavit in support of the application within two (2) months from the receipt of the Opponent’s evidence affidavit.
This time period is also extendable for a period of one (1) month on application to the Registrar. The Opponent is next required to file Evidence in Reply to the applicant’s affidavit within one (1) month of the receipt of the applicant’s affidavit in favor of the application, which may be further extended for a month on an application being made to the Registrar in this regard.
Hearing of Opposition
Within three (3) months of completion of the evidence, the Registrar shall give the notice of first hearing to the Parties.
Rule 55 of the Trademark Rules, 2004 provides that the first date of hearing shall be at least one (1) month after the date of notice to the parties. Any party who intends to appear for the hearing must notify the Registrar within fourteen (14) days of the receipt of the first notice.
In the event the applicant does not notify the Registrar of his intention to be present for the hearing and is not present on the date of hearing, the application may be treated as abandoned. In the event the opponent does not notify the Registrar of his intention to be present for the hearing and is not present on the date of hearing, the opposition may be dismissed for the want of prosecution and the application may proceed for registration.
The Registrar pass the order on the opposition, either accept the opposition of dismissed the same.
In the both situation, the aggrieved party may file an Appeal before the Appellate Forum.
6. ISSUANCE OF REGISTRATION CERTIFICATE
Once the mark is registered, the Registrar shall issue a certificate of registration of a trademark, after depositing the requisite fee by the Applicant.
After registration of mark, the Application may use the insignia ® for the business. It is pertinent of mention here that if a registered trademark is not used for a continues period of five years and three months from the date of registration, then the same becomes cancel on the ground of non use.
Duration of Registration
A trademark registration is valid for a period of ten (10) years from the date of application and may be renewed under section 35 of the Trademark Ordinance, 2001 thereafter from time to time.
As per Section 35 of Trademark Ordinance, 2001, a trade mark can be renewed after the expiry of renewal if the applicant makes an application within six (6) months from the date of expiry of Registration.
In such a case, the applicant has to file two forms one for renewal and one for payment of surcharge.
The form for renewal is Form TM-12 of the Trade Mark Rules, 2004 and the fees for the same is Rs. 10,000/- for one mark.
The said applications have to be made within six (6) months from the date of expiration of registration. In case, the applicant is not able to make such application within six (6) months from the date of expiry of registration, the Registrar removes the mark from the Register.
In such a case, Section 35 (6) of the Trademark Ordinance, 2001 comes into operation.
In such a case a mark has to be restored. For restoration of the mark, an applicant has to move an application for Restoration and renewal of trade mark under From TM-13 of the Trade Mark Rules, 2004. The fees for making an application under Form TM-13 is Rs.
2,000/- plus the fees for renewal, i.e. 10,000/- per mark. In this case, only one application is filed under Form TM-13 with combined fees for restoration as well as renewal. Such application has to be made after expiry of six (6) months but before expiry of one year from the date of expiration of the Registration. For example, if the six months period after expiration of registration has expired on 31st August, 2016 an application for restoration has to be moved by 28th February, 2017.
It is pertinent to mention herein that as per Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of Trade Mark Rules.
2002, the Registry has to give a mandatory notice to the applicant/agent that the mark is due for renewal and if the said is not provided but the mark is removed
OFFICES FOR FILLING OF APPLICATION FOR REGISTRATION OF TRADE MARK
The Trade Marks Registry is located behind KDA Civic Center, Gushan-e-Iqbal, Karachi.
Complete postal address is as follows: Trade Marks Registry, Plot CD-3, Behind KDA Civic Center, Karachi. Telephone numbers are +92 21 9923 1752, 9923 2050, 9923 1002.
What are Intellectual Property Rights?
Fax number is +92 21 9923 1001 and email address is [email protected]
Trade Mark application can also be filed at Lahore in the IPO-Pakistan Branch Office. At the following address: IPO-Pakistan Branch Office, House No: 15, Block E-1, Shahrah-e-Imam Hussain (A.S), Gulberg III, (Near Qaddaffi Stadium), Lahore. Tel: +92-42-99231981.
Fax: is +92-42-99231984. email: [email protected]
Trade Mark application can also be filed at IPO Pakistan HQ’s at the following address: House No.
23, Street 87, Ataturk Avenue (West), Sector G-6/3, Islamabad – Pakistan. Tel: +92-51-9208581-2 Fax: +92-51-9208157.
Can a Form be downloaded from the website?
Yes: All Trademarks forms are available on www.ipo.gov.pk.
Can Trademarks fee be submitted in cash?
The Trade Marks Registry does not accept CASH.
All payments to the Trade Marks Registry have to be made in the form of Pay Orders or Bank Drafts in the name of Director General, IPO-Pakistan.
About Zaheer Advocate
Qualification: L.L.B, M.B.A.
(Exe) L.L.M (Cont)
Zaheer's practice focuses on Corporate, Civil, Constitutional and Family laws. He represents clients contentious and non-contentious matters
Mr. Zaheer enrolled as an advocate of sub-ordinates courts in 2004 and then registered as an advocate of High Court in 2006.
During the period of study of law, joined M/s Agha Faquir Muhammad & Co and gained experience in drafting, research work, assist the senior in the court. After completion of LL.B, he started his career in 2004 with M/s Muneer A Malik & Co known as (Malik Chaudhry, Ahmed, Siddiqui & Waheed) where he gained extensive experience in a wide range of legal areas including but not limited to Constitution, Corporate, Media and Specific type of Criminal litigation (white-collar crime) cases.)
He has been providing legal services to numbers of Multi-national and National Companies and individuals including but not limited to Bol Media Network, Galadari Cement, Air Craft Sales and Services, Prime HR Services, Aqmar Pharma, Geo & Jang Group, etc
Sindh High Court Bar Association
Sindh Bar Council
Corporate & Banking Lawyers Association
Karachi Bar Association
International lawyers Association
Mobile: 0322-2999303, 0336-0126494,
Email: [email protected]
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