Trade Marks

A Trade Mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.

 

Trade Mark law in Pakistan is governed under 2 legislations:

  1. Trade Marks Ordinance 2001
  2. Trade Marks Rules 2004.

Procedure

  1. As soon as the application is filed it needs to be examined by the Registrar of Trade Marks, which usually takes 12 months. After this period the Registrar may raise objections. Once this objection is filed, the applicant is then notified to respond back within 2 months of that notice.
  2. Once the Registrar is satisfied with a written reply of the notice of objection, he/ she may approve the mark for advertisement. However, if the reply is not satisfactory then the applicant/ representative will be called in for a hearing. At the conclusion the Registrar may point out any other amendments to the applied mark in order for it to be approved.
  3. Once the mark is cleared from all objections from the Trade Marks Registry, it proceeds for advertisement in the Trade Marks Journal. The Trade Mark 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.
  4. In case of no opposition, the mark is then said to be registered.

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Requirements

  • Full name, nationality, trading style (if any) and full business address of applicant.
  • List of goods or services in respect of which registration is sought for. Separate applications have to be filed for goods or services falling in different classes.
  • Transliteration and translation of non-English words if appearing in the mark.
  • For device/label mark, 15 prints of the mark.
  • First date of use of the mark in Pakistan, if used.
  • Power of Attorney duly signed by authorized signatory of applicant at two places (indicated thereon) at least before a Notary Public.
  • In case of claiming priority, application can be filed by a person who has made “convention application”, within six months from the date on which the convention application was made. The documents of priority can be filed either with application or within three months from the date of application in Pakistan.

    Trade Marks Services We Provide:

     

    • Trade Mark Searches
    • Application Filings
    • Legal Actions
    • Hearings
    • Oppositions
    • Acceptance & Registration
    • Renewals
    • Post Registration
    • Appeal in Superior Courts
    • Trade Mark Journal Watch Services

    Patents

    A patent is a grant of exclusive rights for an invention to make, use and sell the invention for a limited period of 20 years. Patents are granted for new, non- obvious product or process inventions that have an industrial application and which have not been excluded from patentability. Patentability criteria in Pakistan include Novelty, inventive step and industrial applicability.

     

    Patent law in Pakistan is governed under 2 legislations:

    1. Patents Ordinance 2000
    2. Patents Rules 2003

    Procedure

    1. Receive request to file patent
    2. Formalities (including emails, debit notes) with the client and the Patent Office
    3. Examination at Patent Office (no fixed time)
    4. Acceptance by Controller of Patents
    5. Published in IP Journal and/or website
    6. Sealed in case of no opposition
    7. Renewals

    There are 3 types of Patent Application filed in Pakistan:

    1. Ordinary Application: This application is created once all the required criteria to file a patent application are met. The official date of this patent is the date when it is filed in the Patent Office.
    2. Application for Patent of Addition: This application refers to any additions for improvement or modification of an invention for which a patent has already been applied or granted.
    3. Convention Patent Application: This is a priority patent application whereby the application is dated as of the official date of the corresponding application for patent first made in a WTO member country.

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    Requirements

     

    1. Full name, nationality, and complete business address of the applicant(s).
    2. Two copies of specification and claims in English on pages size 8-1/4” x 11-3/4” (International A-4 size).
    3. Two copies of drawing(s) if any. All sheets of International A-4 size.
    4. Application form signed by the applicant(s) and endorsement on the reverse by the inventor(s) in presence of two witnesses; if the inventor(s) himself/themselves is/are not the applicant(s) in Pakistan. In alternate Assignment document can also be provided if the inventor’s signature on the said form is not possible.
    5. Power of Authority signed by applicant(s) notarized by the notary public.
    6. In case of priority application, certified copy of basic specification is filed with the application in Pakistan or within three months of the date of filing the application. Priority can be claimed for corresponding applications filed in WTO member countries by filing applications in Pakistan within 12 months from the date of first foreign application. If priority document is in language other than English, English translation of the same along with affidavit from the translator verified/attested by Notary Public is required for submission in the Patent Office.

    Patents Services We Provide:

    1. Patent searches
    2. Application filing
    3. Legal actions
    4. Hearings
    5. Application acceptance and sealing
    6. Filing oppositions
    7. Annuities
    8. Post Grant related matter
    9.  Appeal in superior courts
    10. Patent validity check

    Designs

    An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two dimensional features, such as patterns, lines or colour.

     

    Design law in Pakistan is governed under 2 legislations:

     

    • Registered Designs Ordinance, 2000
    • Registered Designs Rules, 2023

    Procedure

    1. Filing of design application in the IP office
    2. Examination of application
    3. If all terms are satisfied by the Registrar, then it is registered
    4. Issuance of a Registration Certificate for 10 years

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    Requirements

     

    1. Full name, nationality and complete business address of the applicant.
    2. Representations of the design (line drawings/photographs)
    3. Power of Authority duly signed by authorized signatory of applicant before a Notary Public.
    4. In case of priority application, certified Priority documents can be filed either at the time of filing of the application or can be filed within three months from the date of filing of application with late fee. Priority can be claimed for corresponding applications filed in WTO member countries by filing applications in Pakistan within six months from the date of first foreign application. If priority document is other than English language, English translation of the same along with affidavit from the translator verified/attested by Notary Public is required for submission in the Patent Office.

    Patents Services We Provide:

    1. Design searches
    2. Filing new applications
    3. Design registrations
    4. Legal actions
    5. Annuities

    Copyright

    Copyright is a legal instrument that provides the creator of a work of art or literature, or a work that conveys information or ideas, the right to control how the work is used. The intent of copyright is to advance the progress of knowledge by giving an author of a work an economic incentive to create new works.


    Copyright law in Pakistan is governed under 2 legislations:

    1. Copyright Ordinance 1962 
    2. Copyright Rules 1967

    Procedure

    1. Filing copyright application
    2. Publication in the leading newspaper within 1 month of the date of filing
    3. Scrutiny or opposition (if any)regarding the application
    4. In case of opposition the application status is changed to ‘pending’
    5. Registration in case of no opposition

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    Requirements

     

    1. Full name, nationality and full business address of the applicant.
    2. Power of Attorney.
    3. Name, business address and complete residential address of the author of the work.
    4. The year of creation of the work.
    5. Year from which the work was published/used (in Pakistan and around the world).
    6. Affidavit from the author, if the applicant is a party other than the author and the work has been assigned to the applicant.
    7. In case of a logo or artwork, copies of the logo/artwork should be on a card on the back thereof following details may be typed and signed by the author, on front as well as on the back (4 sets).
      • Name and address of the author.
      • Name of the Applicant.
      • Year of creation.

    Copyright Services We Provide:

    1. New Filings
    2. Official Actions
    3. Acceptance & Registration

    Domain Names

     A domain name is a mark which is a user friendly substitute for an Internet address.
    The provisions of Trademarks Ordinance 2001 apply to domain names subject to the provisions of the Third Schedule.

    Requirements for registration

    A domain name if used as a source identifier may be registered as a trade mark in respect of relevant goods or services.

     

    The applicant for registration of domain name shall show that he offers goods or services via internet using the domain name. such evidence shall be in the form of specimen showing use of the domain name as a source identifier.

     

    Explanation – For the purposes of this para, use of a domain name shall be taken as source identifier if it is used on internet to distinguish goods or services of one undertaking from the other provided that use of a domain name as a mere directional reference, similar to use of a telephone number or business address shall not be taken as use of the domain name as a source identifier

     

    Provisions may be made by rules for further identification and classification of computer related services associated with internet.

    Indication of geographical origin

    Notwithstanding the provisions of clause (c) of sub-section (1) of section 14, a domain name may be registered which consist of marks or indications which may serve, in trade, to distinguish the geographical origin of the goods or services.
    Domain name not to be misleading as to character or significance- (1) A domain name shall not be registered if the public is liable to mislead as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a domain name.

    The Register may, accordingly, require that a mark in respect of which application has been made for registration include some indication that it is a domain name.

     

    Notwithstanding the provisions of sub-section (7) of section 27, an application may be amended so as to comply with any such requirement.

    Procedure for acceptance, opposition and registration

    The provisions of this Ordinance for acceptance, registration and opposition as they apply to trade mark shall also apply to the domain names.

    Term of registration and renewal

    Notwithstanding the provisions of section 32 and 33, a domain name shall be registered for a period of five years form the date of registration and may be renewed for further periods of like term, as long as, the domain name is in actual use on internet.

    Recognitions