Latest Trademark Registration Procesure in Pakistan: Step-by-Step Guide

Learning and Resources
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There are specific requirements that should be fulfilled for registering trademarks in Pakistan

  • Governing Law and Statutes
    • The Trademarks Ordinance, 2001: This is the primary legislation governing trademark registration, protection, and enforcement in Pakistan (Statute index 1, 27). It defines trademarks, sets out the procedures for registration, and specifies the rights conferred by registration (Statute index 39).
    • The Trade Marks Rules, 2004: These rules supplement the Trade Marks Ordinance, providing detailed procedures and forms for trademark registration and related matters.
    • The Pakistan Penal Code: It contains penal provisions related to offenses involving trademarks (Statute index 23).
  • Relevant Authorities
    • The Trade Marks Registry: This is the official body responsible for administering the Trade Marks Ordinance, including examining trademark applications, maintaining the register of trademarks, and resolving disputes (Statute index 9, 45).
      • Address: Details can be found on the IPO Pakistan website.
  • Step-by-Step Guide to Trademark Registration
  1. Trademark Search: Conduct a thorough search of the Trade Marks Registry to ensure that the proposed trademark does not conflict with existing registered trademarks (Judgment number: Basic Trade Mark S.A. Versus Kapur And Company and another).
  2. Application Filing: File a trademark application with the Trade Marks Registry, including the prescribed form, fee, and representation of the trademark.
  3. Examination: The Trade Marks Registry will examine the application to ensure compliance with the Trade Marks Ordinance, 2001 (Judgment number: Morphy Richards Ltd. versus The Registrar Of Trade Marks and another and Statute index 14).
  4. Publication: If the application is accepted, it will be published in the Trade Marks Journal to allow third parties to oppose the registration ( Judgment number: Kabushiki Kaisha Toshiba Versus Ch. Muhammad Altaf and another).
  5. Opposition: If no opposition is filed or if the opposition is resolved in favor of the applicant, the trademark will be registered.
  6. Registration: Upon registration, a certificate of registration is issued, granting the trademark owner exclusive rights to use the trademark in Pakistan (Judgment number: Messrs T A B A Q‑‑Petitioner versus REGISTRAR, TRADE MARKS, KARACHI and another‑‑Respondents).
  • Required Documents
  1. Trademark Application Form: Filled out completely and accurately.
  2. Representation of the Trademark: A clear visual representation of the trademark.
  3. Power of Attorney: If the application is filed through an attorney.
  4. User Affidavit: If claiming prior use of the trademark.
  5. Other supporting documents: As required by the registry (Judgment number: Muhammad Ismail Versus Royal PVC (PVT.) LTD).
  • Common Pitfalls
  1. Lack of Distinctiveness: Trademarks that are descriptive or lack distinctiveness may be refused registration ( Judgment number: Bengal Fibre Industries Ltd. v. Lawrencepur Woollen and Textile Mills Ltd. Statute index 14).
  2. Similarity to Existing Trademarks: Trademarks that are identical or deceptively similar to existing trademarks may be refused registration (Judgment number: Messrs AHMAD TEA LIMITED Versus Messrs AHMED FOODS INDUSTRIES (PVT.) LIMITED. Statute index 17).
  3. Failure to Use the Trademark: Trademarks may be subject to revocation if they are not used within a certain period after registration (Judgment number: GAP, INC. Versus SHAHID CORPORATION. Statute index 7).
  4. Improper Documentation: Ensure all documents are properly prepared and submitted, including affidavits and power of attorney (Judgment number: D VAUGHAN RACKLIN‑‑Appellant Versus AR OF TRADE MARKS, KARACHI Respondent).
  • Relevant Case Laws
    • Shezan Services (Private) Limited v. Shezan Bakers and Confectioners (Private) Limited: This case highlights the importance of distinctiveness in trademark registration and the protection of existing trademark rights (Judgment number: Shezan Services (Private) Limited v. Shezan Bakers and Confectioners (Private) Limited).
    • Messrs Ahmad Tea Limited Versus Messrs Ahmed Foods Industries (Pvt.) Limited: This case reinforces the protection of registered trademarks and prevents the registration of similar marks that could cause confusion among consumers (Judgment number: Messrs AHMAD TEA LIMITED Versus Messrs AHMED FOODS INDUSTRIES (PVT.) LIMITED.
    • GAP, INC. v. SHAHID CORPORATION: This case highlights the rights of prior users of trade marks, especially those with international recognition, to protect their marks against registrations obtained without genuine intention (Judgment number: GAP, INC. v. SHAHID CORPORATION. Statute index 9).

Relevant Judgments and Statutes:

  • ROYAL PVC (PVT.) LTD. Versus REGISTRAR OF TRADE MARKS, 2011 CLD 833: Clarifies the procedural requirements for seeking revocation of a registered trade mark under the Trade Marks Ordinance, 2001.
  • TELEBRANDS CORPORATION through Attorney Versus TELEBRANDS PAKISTAN (PVT.) LIMITED through Chief Executive and another, 2006 CLD 580: Reinforces trademark protection and prevents counterfeit marketing, clarifying jurisdictional aspects in the context of internet advertising.
  • Nawaz Hussain v. Muhammad Jamil Chaudhary and others, 2007 CLD 1189: Balances the rights of parties in trademark disputes, ensuring injunctive relief does not unduly disrupt business while allowing thorough examination of legal issues.
  • Sanjeda Bano v. Muhammad Saeed Jehangir, PLD 1987 Karachi 53: Clarifies the scope and application of Section 10(3) of the Trade Marks Act, emphasizing that the Registrar should only refer matters to a civil court when complex rights cannot be resolved within the Registrar’s expertise.
  • Shezan Services (Private) Limited v. Shezan Bakers and Confectioners (Private) Limited, 2022 SCMR 1363: Clarifies the importance of distinctiveness in trademark registration and reinforces the protection of existing trademark rights.
  • Muhammad Jahangir and another v. Hassan Qaiser and another, 2004 CLD 516: Reinforces protection for registered trademark holders, emphasizing registration as prima facie evidence of validity.
  • GAP, INC. (A COMPANY ORGANIZED AND EXISTING UNDER THE LAWS OF THE STATE OF DELAWARE) Versus SHAHID CORPORATION, 2004 PTD 1916: Reinforces the principle that trademark registrations must be supported by a bona fide intention to use the mark.
  • Shezan Services (Private) Limited v. Shezan Bakers and Confectioners (Private) Limited, 2022 CLD 970: Reinforces the principle of prior rights in trademark law and the importance of distinctiveness in trademark registration.
  • Messrs AHMAD TEA LIMITED Versus Messrs AHMED FOODS INDUSTRIES (PVT.) LIMITED, 2020 CLD 1339: Reinforces the importance of protecting registered trademarks and preventing registration of similar marks that could cause confusion among consumers.
  • GAP, INC. v. SHAHID CORPORATION, 2004 CLC 1097: Reinforces the principle that a trademark registration can be expunged if the registered party has no bona fide intention to use the mark and has not actually used it, especially when another party can prove prior and continuous use of the mark.
  • Bengal Fibre Industries Ltd. v. Lawrencepur Woollen and Textile Mills Ltd., 1987 M L D 509: Clarifies the Registrar’s obligations under Section 16(1) of the Trade Marks Act and reinforces the principle that trade marks should be considered as a whole when assessing their registrability.
  • GALLUP BUSINESS RESEARCH SERVICES (PVT.) LIMITED Versus REGISTRAR OF TRADE MARKS and another, 2020 CLD 1404: Affirms the importance of recognizing established, long-term use and reputation in trade mark disputes.
  • Pakistan International Airlines Corporation v. Registrar of Trade Marks, 1987 CLC 966: Clarifies the scope and applicability of the Trade Marks Act (V of 1940) concerning the registration of property marks.
  • Javed Akhtar Chauhan v. Mumtaz Ali, 2016 CLD 1706: reinforces the protection of well-known international trademarks in Pakistan under the Paris Convention and the Trade Marks Ordinance, 2001.
  • Teki`ronix Incorporated v. M. Abdul Iiannan, PLD 1973 Karachi 14: reinforces the protection afforded to registered trademarks and clarifies the responsibilities of individuals who previously had access to sensitive business information.
  • BASIC TRADE MARK S.A. Versus KAPUR AND COMPANY and another, 2004 CLD 1454: reinforces the principle that trade mark disputes must be evaluated based on the conditions of the local market where the trade mark is used.
  • Muhammad Ismail Versus Royal PVC (PVT.) LTD., 2018 CLD 766: reinforces the importance of providing comprehensive and timely evidence in trademark disputes.
  • Morphy Richards Ltd. versus The Registrar Of Trade Marks and another, 1992 MLD 2506: clarifies the requirements for registering trade marks, particularly concerning names and surnames.
  • Hyundai Motor Co. v. Deputy Registrar, Trade Marks, 1987 M L D 2847: clarifies the criteria for registering trade marks, particularly composite marks including letters and devices
  • The Registrar of Trade Marks and another versus Walter Rau Neussor OI Und Fatt AG, 1993 SCMR 1503: clarifies the scope and limitations of the Registrar’s power to delegate functions under the Trade Marks Act, emphasizing the necessity for the Federal Government to clearly specify the functions that can be delegated via notification.
  • KABUSHIKI KAISHA TOSHIBA Versus Ch. MUHAMMAD ALTAF and another, 1989 CLC 1701: clarifies the burden of proof in trade mark disputes, particularly where the applicant seeks registration for the same class of goods for which a similar trade mark is already registered.
  • QADEER AHMED versus THE ASSISTANT REGISTRAR OF TRADE MARKS, THE TRADE MARKS REGISTRY and another, 1999 YLR 96: reinforces the principle that registration of a trade mark should be granted to the user who has been continuously using the trade mark prior in point of time.
  • Muhammad Rafiq v. Muhammad Ali, 1986 CLC 2621: reinforces the protection of registered trade marks and the importance of preventing deceptive practices that could mislead consumers.
  • Messrs T A B A Q‑‑Petitioner versus REGISTRAR, TRADE MARKS, KARACHI and another‑‑Respondents, 1987 CLC 738: clarifies that the Registrar is legally bound to issue a certificate of registration once a decision is made in favor of the applicant, even if an appeal is pending, unless a stay order has been granted.
  • D VAUGHAN RACKLIN‑‑Appellant Versus AR OF TRADE MARKS, KARACHI Respondent, 1986 MLD 1666: clarifies the procedure for handling trade mark registration applications when similarities exist with previously registered marks.
  • Premier Tobacco Industries Ltd. v. The Registrar of Trade Marks, Karachi, 1988 CLC 934: clarifies that when assessing a trade mark’s geographical connotation, the relevant territory is the country where the application for registration is made.
  • In Re: Islamabad Stock Exchange, 1992 CLC 1213: clarifies the process for establishing a stock exchange under the Securities and Exchange Ordinance, 1969, particularly in cases where there are multiple applicants.
  • Messrs Crescent Pak Soap And Oil Mills v. The Deputy Registrar of Trade Marks, PLD 1965 Supreme Court 292: clarifies the scope of the Trade Marks Act of 1940, confirming the Registrar’s authority to impose territorial limitations on trade mark registrations.
  • MBSSRS BENGAL FRIENDS & Co., DACCA versus (1) MESSRS GOUR BENODE SARA & Co., CALCUTTA AND (2) THE DEPUTY REGISTRAR OF TRADE MARKS, CHITTAGONG, PLD 1969 Supreme Court 477: clarifies the criteria for opposing trade mark registration based on prior use, emphasizing the need for credible evidence of continuous use and a real likelihood of deception or confusion in the relevant market.
  • Haji Abdul Gani Haji Ibrahim and Others v. Registrar of Trade Marks, Karachi and Another, PLD 1961 Karachi 158: clarifies the extent to which a Registrar can impose conditions on trade mark registration when a company has already established rights through long-term use of its trade name.
  • Section 39, The Trade Marks Ordinance, 2001: Defines the rights conferred by registration, including exclusive rights and the ability to obtain relief for infringement.
  • Section 17, The Trade Marks Ordinance, 2001: Specifies the relative grounds for refusal of registration, such as identity with or similarity to earlier trademarks.
  • Section 29, The Trade Marks Ordinance, 2001: Outlines the grounds on which the registration of a trademark may be opposed.
  • Section 102, The Trade Marks Ordinance, 2001: Addresses the penalty for falsely representing a trade mark as registered
  • Section 35, The Trade Marks Ordinance, 2001: Relates to the renewal of registration, including the renewal process and potential restoration.
  • Section 73, Trade Marks Ordinance, 2001: States the conditions in which registrations for trademarks can be revoked.
  • Section 90, The Trade Marks Ordinance, 2001: Gives provision with respect of an agent involved in the trademark registration, or who uses the trademark before the applicant.
  • Section 4, The Pakistan Names and Emblems (Prevention of Unauthorized Use) Act, 1957: Prohibits the grant or registration of patents, trademarks, etc., bearing certain names or emblems.
  • Section 14, The Trade Marks Ordinance, 2001: Outlines absolute grounds for refusal of registration, such as lack of distinctive character or scandalous designs.
  • Section 40, The Trade Marks Ordinance, 2001: Explains the rules pertaining to trademark infringement.
  • Section 86, The Trade Marks Ordinance, 2001: Lays down the laws to protect the trade mark as well as well-known trade mark.
  • Section 19, The Trade Marks Ordinance, 2001: Explains the Honest concurrent use
  • Section 23, The Trade Marks Act (V of 1940): Discusses copyright.
  • Section 1, The Trade Marks Ordinance, 2001: States the short title and extent.
  • Section 9, Trade Marks Ordinance, 2001: Discusses the Trade Mark Registry and branches thereof