Introduction to trademark protection in Pakistan
An application to register a trademark in Pakistan can be filed at the trademarks office in Lahore or Karachi. Online filing of trademark applications in Pakistan is not yet available.
The Pakistan trademark office follows the 10th edition of the NICE Classification and registration of marks are acceptable in classes 1 – 34 in respect of goods and classes 35 to 45 in respect of services. The Pakistan trademark office accepts only single class applications.
Members of the WTO and signatories to the Paris Convention for the Protection of Industrial Property, can file convention applications claiming priority in Pakistan. A certified copy of the priority document is necessary for claiming priority. The same can be filed within 3 months from the date of filing the application in Pakistan.
It is also possible to file an application in Pakistan on an intent to use basis or by claiming use of the trademark in Pakistan. However for maintaining the registration in effect, evidence of use is required to be filed at the time of second renewal.
A trademark application filed in Pakistan is examined on absolute and relative grounds to determine whether it can be granted protection. The response to the objections should be filed within 2 months from the date of receipt of the examination report with a maximum extension of another 3 months. When the application is accepted by the trademark office, it is published in the trademarks journal and is open to opposition for a period of 2 months from the date of publication. This opposition period can be extended by another two months.
The registration of the trademark is valid for a period of 7 years in respect of applications filed prior to April 12, 2004, renewable for a period of 15 years from the date of the expiration of the original registration, or from the last renewal of registration, as the case may be. With respect to trademark applications filed after April 12, 2004 the registration is valid for a period of 10 years and renewable every 10 years. An application for renewing a trademark registration can be filed at any time during the 6 months prior to the expiration of the registration/last renewal validity. Late renewal is also possible within 4 months from the date of publication of the non-renewal in the trademarks journal under the heading “Unpaid Renewal Fee.”
A cancellation petition on the grounds of non-use can be filed to remove a trademark from the register, if it has not been used for 5 years and one month from the date of registration.
Recording the assignment of trademarks with or without the goodwill of the business, change of name and/or address of the applicant/proprietor, registered user agreement and licenses of registered trademarks, are possible. Amendments to the registered trademark without substantially altering the identity of the mark or the specification of goods and services covered by the registration of the trademark is also possible.
Use of the ® symbol on unregistered trademark, manufacture, import or sale of counterfeit goods, are offences punishable under the law in Pakistan. Legal action can be initiated before the District Courts or High Court of Pakistan.