Trade and Merchandise Marks are registered, maintained and protected in Pakistan under the provisions of the Trade Marks Act, 1940 ("the Act"), Trade Marks Rules, 1963 ("the Rules"), Merchandise Marks Act, 1889, Pakistan Names and Emblems (Prevention of Unauthorised Use) Act, 1957 and the Pakistan Penal Code, 1860. Pakistan is not a member of the Paris Convention for the Protection of Industrial Property.
Section 2(l) of the Act defines a trade mark as a mark used or proposed to be used in relation to goods for indicating a connection in the course of trade between goods and some person having the right as proprietor or registered user to use it, with or without any indication of the identity of that person. In terms of section 2(f) of the Act, a mark is defined to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.
Who may Apply:-
Section 14(1) of the Act allows any person claiming to be the proprietor of a trade mark used or proposed to be used by him to make an application for its registration. Section 17 of the Act permits jointly owned trade marks to be registered in the name of joint proprietors. Section 36(1) of the Act permits registration of a mark in the name of a company who is about to be formed in Pakistan. Registration may also be obtained in the name of a person whose sole intention is to assign the mark to a company which is about to be formed.
Trade marks are registered in Pakistan in accordance with the International Classification of Goods. Service marks are not
register able in Pakistan. A trade mark can only be registered in respect of particular goods or class of goods and the Registrar's decision as to the class in which any goods fall, is held to be final.
Marks in Color:-
Section 7 of the Act provides that a mark registered without limitation of
colors is registered for all colors. But a trade mark may be limited to one or more specified
colors and such limitation will be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.
Defensive Trade Marks:-
Pursuant to section 38 of the Act, a well-known, invented word mark registered in respect of certain goods may also be registered by its proprietor as a Defensive Trade Mark for other goods on which he does not use or propose to use the mark.
PROCEDURE FOR REGISTRATION
The Act allows an application for registration of a trade mark to be filed by any person claiming to be the proprietor of the mark used or proposed to be used by him. One application is required to be in respect of goods falling in one class only. Application may be made either by the owner of the mark or by a legal practitioner who has been
authorized by the applicant to act on his behalf on Form TM- 48. Six additional representations of the mark are required to accompany the application. All foreign applicants are required by Rule 9 to furnish an address for service in Pakistan. Upon receipt of duly completed application, the Register is required under section 14 and Rule 23 to cause the application to be examined to ascertain whether the mark is
register able and also cause a search to be made for conflicting marks.
Subject to any opposition, as soon as after the expiration of two months from the date of the advertisement in the Journal, Registrar is required by Rule 41 to effect an entry of registration of the mark in the Register of Trade Marks and to issue a certificate of registration to the applicant.
Effect of Registration:-
Section 23 of the Act provides that registration of a mark in the name of a person is prima facie evidence of his ownership of the mark. Section 24 provides that in all legal proceedings, the registered proprietor is not required to establish his title to the mark. Section 21(1) gives the proprietor of a registered trade mark an exclusive right to use the mark in respect of goods for which the mark is registered. This exclusive right is however limited by sections 22, 25 and 26. It is also limited by section 10(2) under which a mark identical with or closely similar to a mark already on the Register in the name of one person can also be registered in the name of another person in case of honest concurrent user or other special circumstances.
Registration entitles the registered proprietor to an action for infringement against others
unauthorized using a mark identical with or closely resembling the registered mark. An action of passing off may also be instituted in such cases. Registration of a mark gives power to the registered proprietor to assign the mark either with or without goodwill of the business. Registered marks can also be licensed under the provisions of the Act by the registration of registered users of the marks.
Validity of Registration and Renewals:-
The Act permits registration of a trade mark for a period of 7 years from the date of the application, unless renewed. Registration is renewed for a term of 15 years and so forth. Renewals can be applied for not more than six months before the date of expiry of the registration. At least one month before that date, the Registrar is required to notify the proprietor that the mark is renewable on payment of renewal fees. If these fees are not paid, the mark is advertised in the Journal and may afterwards be removed from the Register. Any mark such removed from the Register can be restored, if it is just to do so, on payment of the prescribed fees.
Registered proprietor of a mark is entitled to use the mark himself or, under section 29 of the Act, to license its use to some other person as a Registered User. Application in such case is required to be made jointly by both the parties and should accompany an affidavit. The Act does not permit registered user of a defensive or certification trade mark.
TRESPASSING OF TRADE MARKS RIGHTS
Civil and criminal remedies are available in case of trespassing of trade mark rights. Criminal remedies are prescribed in the Penal Code and the Merchandise Marks Act. Civil remedy is either for passing off under the common law or for infringement under the provisions of the Act.
Under section 21, a registered trade mark is infringed in the following events:-
(a) when the offending mark is used by a person who is not the registered proprietor or registered user of the mark;
(b) when the offending mark is same as the registered mark or its essential features so nearly resemble the registered mark that there is
like hood of deception or confusion;
(c) when the offending mark is used in the course of trade and in respect of goods for which the mark is registered; and
(d) when the offending mark imports a reference to the registered proprietor or registered user or to his goods in the course of trade.
When the plaintiff is successful in an infringement suit, the courts, if prayed, may issue an injunction restraining the defendant from using the offending mark. A suit for infringement is required to be filed in a court not inferior to a District Court having jurisdiction to try the suit.
Subject to any agreement between the parties, section 40(1) requires a registered user of a trade mark to call upon the registered proprietor thereof to take proceedings to prevent infringement thereof.
Information Required for Filing a Trade Mark Application in Pakistan:
1. Ten specimen of the mark
2. Name, address and nationality/domicile of the applicant
3. Nature of business of the applicant, e.g. manufacturers, merchants, etc.
4. Specification of goods on which the mark is applied
5. International classification of the goods
6. Whether the mark is in use in Pakistan. If yes, please specify period of user
7. Transliteration and translation of non-English words appearing in the mark
8. Power of attorney [on Form TM-48] signed by the applicant. In case of a corporate entity, by any duly
authorized officer of the entity. Power of attorney may be filed subsequent to filing of the application. General power of attorney is permissible.