Registering Trade marks in Pakistan

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15 January 2014

An important aspect in starting up a business or protecting an on-going concern is registering its trade mark.

A. Benefits

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.

B. Registration

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.

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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.

Any queries may be directed to lawyereadia@gmail.com

How to use www.pakistanlawsite.com

3 January 2014

New entrants in the field of law often find themselves struggling with basic research tools. For the internet raised generation, http://www.pakistanlawsite.com (the “Law Site”) provides an easy, efficient and comprehensive first step to researching law, precedents, judgments, commentaries, articles etc.

Usually law firms and lawyers maintain an account with the Law Site (much like an email account) by making periodic payments for the permission to use the same.

To subscribe for a new account, you have to register on the website.
The details, payment terms and terms and conditions are provided on: http://www.pakistanlawsite.com/RegistrationHelp.asp

If there is already an account maintained then the user may insert the “username” and “password” and tick the box next to “I accept the terms and conditions” on the homepage to login to the website.

Once logged in, the left side of the Law Site offers “Case law Search”, “Advance Search”, “Statute Search”, “Courtwise Search”, “Citation Search” and “Article Search”.

1. Case Law Search
To search the relevant case law on a matter, click the tab “Case law Search” and insert the matter that you require case law on. For example, insert “ultra vires” in the search box and click enter.

The search engine will provide all those cases/judgments that have mentioned “ultra vires” in the document. To get an idea of the judgment read the “Case Notes”, however, it is standard and good practice to read the complete judgment before providing reference to the same.

If you know the particular Section of an Act/Ordinance or Rules or Regulations (the “Statute”), you may access the Statute and click on “Cases” under the relevant Section.

Access to Statutes is provided below.

2. To search for a Statute, click the tab “Statute Search”. The Statutes (Acts, Ordinances, Rules and Regulations) are provided alphabetically. However, if you are unsure about the name, you may search the statute by inserting the year in the search bar.

An easier way is however to type out the statute name (or as much as you know of it i.e. Contract Act Pakistan) in http://www.google.com and find out the correct/complete name of the same including the year. It is then easier to find it alphabetically on the Law Site.

Google also generally has the popular statutes however, the completeness and the authenticity of the same can not be verified. It is often safer to rely on the Law Site.

3. If you are aware of the citation of the case (i.e. PLD 2003 Karachi 1) then you may access the case notes of the judgment in “Citation Search”.

For beginners, the above three (3) provide the easiest and most effective research ability online.

Be sure to always confirm whether a judgment or statute is still valid and always provide the citation of the same.

Good luck!

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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.

Any queries may be directed to lawyereadia@gmail.com