15 January 2014
An important aspect in starting up a business or protecting an on-going concern is registering its trade mark.
The benefits of registering a trade mark are abundant:
(1) Registering your trade mark gives you the exclusive right to use your mark for the goods and/or services that it covers in Pakistan.
(2) If you have a registered trade mark you can prevent others from using it without your permission.
(3) A registered trade mark:
(a) makes it much easier for you to take legal action against anyone who uses your trade mark without your permission;
(b) allows the authorities to bring criminal charges against counterfeiters if they use your trade mark;
(c) is your property, which means you can sell it, franchise it or let other people have a licence that allows them to use it.
1. The registration of trade marks in Pakistan is governed by the Trade Marks Ordinance, 2001 (the “Ordinance”) and the Trade Marks Rules, 2004 (the “Rules”).
2. The fee for an application for registration of trade mark “for a specification of goods or services included in one class” is Rs. 2000/- (Rupees Two thousand only) alongwith the corresponding form TM-1 (available online).
3. Process of Registration of Trade Mark.
(1) What is a trade mark: “Trade mark” is defined in Section 2 (xlvii) of the Ordinance as:
any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from these of other undertakings;
(2) Application: The application for registration shall include:
(a) a request for registration of a trade mark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the trade mark:
(d) international classification of goods or services;
(e) a representation of the trade mark; and
(f) full name address and contact details of agent, in case the application, on behalf of the applicant, if made by his agent.
The application must state that the trade mark is being used with a bona fide intention and be subject to the payment of an application fee.
(3) Registrar: The Registrar shall examine, inform or reject the application for registration (Section 27).
(4) Journal: As soon as the application is accepted by the Registrar, it is advertised on the Trade marks Journal for acceptance (Section 28).
(5) Opposition: A person may oppose the registration in accordance with the Ordinance (i.e. if the applicant is not the proprietor of the trademark or the trademark is identical or similar to another trademark etc.) and the Registrar shall then allow both parties to address their concerns.
(6) Certificate of Registration: Where an application has been accepted and no notice of opposition has been received or the opposition has been disposed and the fee prescribed has been paid then the Registrar shall register the trade mark under the Ordinance (Section 33), and issue a certificate of registration from the Trade Marks Registry.
Disclaimer: The above information is not legal advice but basic guidelines in respect of registration of trade marks in Pakistan. Nothing provided herein should be used as a substitute for advice of competent counsel.
Myra Khan Qureshi is a Barrister-at-Law from the Honourable Society of Lincoln’s Inn and Vice Chairperson Women Rights Committee of the Lahore High Court Bar Association. She is currently practicing law in Lahore, Pakistan.
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