The New Trade Marks Ordinance, 2001 has been enforced in Pakistan.

A trade-marks is a word, logo, label or any other device that is used to distinguish the goods or services of one manufacturer/provider from the goods or services of others. A trademark registration may be applied for in simple block letters or in design form. Trademark, under the new law has been defined as a mark capable of graphic representation which is capable of distinguishing goods or services of one undertaking from those of another undertaking, whereas definition of a “mark” now includes “figurative elements and sound”. The term “service” has also been defined under the new law to include “retailing”.

Not all trade-marks are necessarily registrable. The Trade Marks Registry may refuse registration to a mark on absolute as well as relative grounds.

The basic requirements for a mark to be registrable, are

Distinctiveness, inherent or acquired,

Should not consist or otherwise refer to the kind, quality, characteristics, purpose or value or geographical origin of the goods,

Should not consist of the shape which results from the nature of the good.

Should not have become customary in the current language.

Should not contain any scandalous design or matter.

Should not be likely to deceive or cause confusion.

Or likely to hurt religious susceptibilities of public

Should not have been applied for in bad faith and

Must not be identical or similar to earlier marks whether for identical or similar goods.

The other grounds for rejecting an application for the registration of a trade marks include:

If the mark is identical with or similar to an earlier trademark if the earlier trademark has reputation in Pakistan

If the use is liable to be prevented by virtue of any law including principles of Passing Off protecting an unregistered trademark or if by virtue of an earlier right of a third party by virtue of the law of copyright, design right or registered designs.

The new law has recognised the concept of Well-known marks. The new law further seeks to protect well-known marks to the extent that all persons connected with the use of an infringing trademark at any stage from production, storage, upto sale shall be a party to the infringement proceedings and may be held liable.

The new law envisages that goods and services shall be associated if they are likely to be dealt with and provided by the same business. A trademark shall be taken to be used even when used on second-hand goods.

The new law provides that use of the trademark after the date of registration as a description of the goods or services shall not invalidate the registration provided it is proved that there is an established use of the said word as the name or description of the article, goods or services OR the article has been manufactured under a patent which has expired more than two years before and the said word is the only practicable name for the article.

The new law provides exclusive rights to the proprietor of a registered trademark to use of such trademark and that such exclusive rights shall be infringed if a trademark identical, similar or deceptively similar to the registered trademark or otherwise likely to cause confusion or deception is used without consent of the proprietor and the infringement of a registered trademark has been declared to be an actionable wrong.

It is pertinent to mention that Pakistan has deposited its instrument of accession to the Paris Convention and the Paris Convention shall be in force as from July 22, 2004. Once Pakistan is a member of the International Convention for the Protection of Industrial Property. It, therefore, ensures that the trade marks owner in any other country can claim priority from the date of the application in his or her home country provided the application in Pakistan is filed within six months of the date of filing in the home country.

Under the new law, in case of any legal proceedings, the registration of the mark shall be prima facie evidence as to validity of the trademark and further, the registration shall be considered to be conclusive as to its validity after a period of five years from registration unless such registration has been obtained by fraud or contains any scandalous design or matter the use of which is disentitled to protection in a court of law or likely to hurt the religious susceptibilities of the public or is contrary to morality or any law currently in force.

An owner may “surrender” a trademark registration entirely as well as for a particular set of goods or services.

It is possible to assign registered trade marks in Pakistan both with or without goodwill. The law also provides for “partial” assignments such as those in relation to some of the goods or services or use of the mark in a particular manner or in a particular territory. However, it is mandatory the assignment deed be in writing.

Licensing of trademarks is permissible and both general and “limited” licenses may be granted. A limited license would in particular apply in relation to some of the goods or services or in relation to the use of the mark in a particular manner or in a particular locality. Use of a trademark by a licensee shall be deemed to be use of the mark by the proprietor itself and the benefit of such use shall be passed to the proprietor of the trademark. However, it is mandatory the license be in writing.

Rights of honest concurrent user have been recognized and the honest concurrent user of the mark can also obtain registration of the trademark.

In order to prepare a trade-marks application we need to know several details as given below

The full name, state of incorporation and the registered office address of the applicant.

The details of the proposed trade marks. If the mark is in design form, then 20 prints of the accurate rendition of the trade-marks in respect of which registration is to be sought

An accurate description of the specific goods and/or services in respect of which trademark protection is required. India accepts the International classification of goods from classes 01 to 42. It is possible to file multi class applications in Pakistan.

If the mark has been used in association with any of the goods and/or services, we need to know the first date of use in Pakistan. In the alternative, the application may be filed on a ‘proposed to be used’ basis.

In case the Applicant is claiming priority, then details of the home application along with a certified copy of the convention application must be provided.

We will require a Power of Attorney in our favour so as to enable us to act on the Applicant’s behalf. The name and designation of the person signing must be clearly mentioned. The Power of Attorney must be notarised. However, legalisation is not required.

Assuming that the Examiner does not raise any insurmountable objections, the mark is published in the Trade-marks Journal. Upon publication, any person may oppose registration of the mark by filing a Notice of Opposition. In Pakistan, oppositions may be filed within two months (extendible by two additional months) of the publication in the Trade Marks Journal. If the applicant wishes to contest the opposition, it files a Counterstatement within one month (extendible by one month) of his reciept of a copy of the Notice of Opposition. Thereafter, both parties have an opportunity to file their evidence by way of affidavits. Once evidence is closed, the parties may file written arguments and there is an opportunity for an oral hearing.

A trade-marks application is allowed if there is no opposition or if the opposition has been finally decided in the Applicant’s favour. Once the application has been allowed, a certificate of registration is issued automatically. However, in the case of first renewal, Registrar may require that the request for renewal be accompanied with evidence of use of the trademark in Pakistan.

If an application for registration of a trade-marks does not run into difficulty at the examination stage, and if it is not opposed following publication, registration is obtained and the registration is given for a period of ten years, subject to the mark being cancelled due to non-use. The registration is renewable for successive ten year terms.

A trademark registration may be revoked if the mark is not used in Pakistan within five years, without proper reasons, from the date of “completion of the registration process” which would mean the issuance of the registration certificate. The registration is also vulnerable to revocation if there is no bona fide use for an uninterrupted period of five years at any time without any proper reasons. A trademark registration may also be revoked if in the intervening period the mark has become common to trade or as a result of the use made by the proprietor, it is liable to mislead the public as to the nature, quality or geographical origin of the goods or services or the registration was obtained in bad faith.

A trademark may also be removed on various grounds such as if the mark was registered contrary to the provisions of “absolute grounds for refusal”. However, an invalidation action may be defended if the mark has, as a result of use, acquired distinctiveness in relation to the goods or services for which it was registered.

The owner of a registered trade marks has the remedy of infringement as well as passing off.

Under the new law, the act of infringement includes

Use of an identical registered well-known trade marks even in relation to dissimilar goods so long as the third party mark without due cause takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered well-known trade marks.

Likelihood of association with an earlier trade marks itself may be sufficient to constitute infringement of a trade marks.

Use of registered trade marks on business paper or in advertising may also constitute infringement.

Likewise, use of a registered trade marks as a trade name or name of a business concern dealing in goods or services in respect of which the trade marks is registered, also amounts to infringement

Infringement of registered trade marks may also occur by spoken use of the word mark.

Disparaging advertising also constitutes infringement of a registered trade marks. Advertisements which are objectionable include Advertisements which take unfair advantage and are contrary to honest practices in industrial or commercial matters; Advertisements which are detrimental to the distinctive character of a registered trade marks ; Advertisements which are against the reputation of a registered trade marks.

The Ordinance also provides that if the proprietor of a registered trademark displays any notice upon the packaging of registered goods, prohibiting commission of certain acts, such as duplication, alteration or obliteration of labels etc., any person who un-authorizedly commits such prohibited acts shall be deemed to have infringed the trademark

Further, the use of a registered trademark as a domain name or trade name or part thereof shall also be an infringement of the registered trademark.

Pakistan Trade Marks law provides a remedy under the civil law. The proprietor of a registered trademark can seek reliefs of injunction, damages, accounts as well as all other protections which may be available in respect of infringement of any other property right. The suit for infringement of a registered trademark can be filed before the Court of District Judge.

Under the new law, Court has been vested with the authority to pass orders requiring the infringer or any person appointed by the court in this behalf to erase, remove or obliterate the infringing mark or label from the goods. If such erasure is not practical, then the Court may order destruction of the goods.

Under the new law, all acts leading to

Confusion with the establishment, goods, services or activities of a competitor

Discrediting a competitor’s establishment, its goods, services or activities

Misleading of the public regarding a competitor’s establishment, its goods, services or activities

Wrongful disclosure or acquisition of valuable commercial secret and any such information without consent of the owner, and making false and deceptive statements, misleading advertisements and fraudulently applying for or obtaining registration of a trademark

have been declared to be acts of “Unfair Competition”. It would appear that trade secrets and undisclosed information may thus be protectable. An action against unfair competition may be brought before a District Court.

Power of Attorney signed by the Applicant(s) (Form-31).

Specification and claims (three copies in English on pages of International A-4 size (8 ½ X 11 ¾”).

Three copies of drawings, if any, one copy should be on tracing cloth and other two on stout white paper. Sheet of drawings should be in the International A-4 size.

In case of application where the true or first Inventor is not a party to the application, Form-1A duly endorsed by Inventor(s) is required. (No legalization is required on this form). The form should be signed by two witnesses also, whose names and complete addresses should also be mentioned on the reverse side of the form.

Full name, address, nationality and profession/business of the Applicant(s).

Full name, address, nationality and profession/business of the Inventor(s).

In case of priority application, a certified copy of the basic specification should be filed alongwith the application in Pakistan or be filed within three months of the date of filing the Pakistani Application.

Duration: 20 years. Granted for a period of 4(four) years from the date of application. Renewable each year upto twenty year.

Industrial Property Regulations, 1997, PART II

Salient Features

For the purposes of the Regulations, any composition of lines or colours or any three – dimensional form, or any material, whether or not associated with lines or colours, is deemed to be an industrial design, provided that such composition, form or material gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye.

The protection under these Regulations does not extend to anything in an industrial design which serves solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.

An industrial design is registrable if it is new.

An industrial design shall be new if it has not been disclosed to the public in Bhutan by publication in tangible form or by use or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration.

Industrial designs that are contrary to public order or morality shall not be registrable.

The exploitation of a registered industrial design in Bhutan by persons other than the registered owner shall require the agreement of the latter.

For the purposes of these Regulations, "exploitation" of a registered industrial design means the making, selling or importation of articles incorporating the industrial design.

The application for registration of an industrial design shall be filed in the prescribed manner with the Registrar and shall contain a request, drawings, photographs or other adequate graphic representations of the article embodying the industrial design and an indication of the kind of products for which the industrial design is to be used. It may be accompanied by a specimen of the article embodying the industrial design, where the industrial design is two - dimensional. The application shall be subject to the payment of the prescribed application fee.

Where the applicant is not the creator, the request shall be accompanied by a statement justifying the applicant’s right to the registration of the industrial design.

Two or more industrial designs may be the subject of the same application, provided they relate to the same class of the International Classification or to the same set or composition of articles.

The application, at the time of filing, may contain a request that the publication of the industrial design, upon registration, be deferred for a period not exceeding 12 months from the date of filing or, if priority is claimed, from the date of priority, of the application.

The applicant may withdraw the application at any time during its pendency.

Pursuant to the filing of the Application, the Registrar shall accord as the filing date the date of receipt of the application, provided that, at the time of receipt, the application contains indications allowing the identity of the applicant to be established and the required graphic representation of the article embodying the industrial design.

After according a filing date, the Registrar shall examine whether the application compiles with the requirements of the Regulations, whether the application fees has been paid and whether the industrial design complies with the requirements of the Regulations and the Rules pertaining thereto.

Where the Registrar finds that the conditions of the Regulations are fulfilled, he shall register the industrial design, publish a reference to the registration and issue to the applicant a certificate of registration of the industrial design;

otherwise, he shall refuse the application.

However, it may be possible to make a request for deferment of publication, upon registration of the industrial design, neither the representation of the industrial design, neither the representation of the design nor any file relating to the application shall be open to public inspection. In this case, the Registrar shall publish a mention of the deferment of the publication of the industrial design and information identifying the registered owner, and indicating the filing date of the application, the length of the period for which deferment has been requested and any other prescribed particulars. At the expiry of the period of deferment, the Registrar shall publish the registered industrial design.

The registration of an industrial design shall be for a period of five years from the filing date of application for registration. The registration may be renewed for two further consecutive periods of five years through the payment of the prescribed fee. A period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Any interested person may request the Court or the Registrar to invalidate the registration of an industrial design.

The Court or the Registrar shall invalidate the registration if the person requesting the invalidation proves that any of the requirements of the Regulations is not fulfilled or if the registered owner of the industrial design is not the creator or his successor in title.

The registered owner of an industrial design shall, in addition to any other rights, remedies or actions available to him, have the rights to institute Court proceedings against any person who infringes the industrial design by performing, without his agreement, any of the acts referred to in the Regulations or who performs acts which make it likely that infringement will occur.

The institution of legal proceedings on the basis of a registered industrial design during the period of deferment of publication shall be subject to the condition that the information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.

Power of Attorney signed by the inventor of design.

Name given to the design.

6 (six) photographs of post-card size, of each view of the designs.

Full name, address, nationality and kind of business of Applicant.

Statement of novelty.

In case of priority application, a certified copy of the basic application.

The protection under these Regulations does not extend to anything in an industrial design which serves solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.

8 labels of the work duly signed by the author of the work.

Name, address and nationality of the author/creator of the work.

Year of Creation of the work.

A Power of Attorney.

An Affidavit of the author/creator of the work surrendering rights in favour of the applicant company, if other then the author.