What is a trade mark?
A trade mark is a legal right in favor of a person who applies for protection of his brand from being used by any person in order to take undue advantage over business of that person. Purpose of Trade Mark is to protect the brand name and logo from being used by any third party. Trade mark can be a combination of word, logo, symbol and sign or any of the above that can be used to distinguish your business brand from business brand of any other person who may be engaged in similar business. Only upon the registration of trade mark, a legal right is created in favor of person registering the brand. This means that no person can use similar trade mark for his business and for so doing not only that violator will be restrained by the Court from using such name but also that he may become liable to pay damages for using deceptive means of taking undue advantage over the brand name of the earlier person. Trade Mark is considered to be part of the intellectual property and the legal right in relation to the trade mark can be established by registering the brand logo and name under the provisions of the Intellectual Property Act, 2012. Trade Mark once registered is deemed valid for ten years in Pakistan and can be renewed as many times without condition.
Importance of Trademark Registration
Brand name is of significant importance in the prevailing business environment. Consumers become loyal to a brand that offers them satisfactions and that is where the fake brands come in. The idea of fake brand is that by misusing the brand name not only that damage to image of some well-reputed company is caused but also that undue advantage over that business is being gained by use of such deceptive practices.
Time, money and hardship that you invested to introduce a brand which is now a pride of your company can be saved from being misused by some fake company. All you need to do to save your genius brain child is to register unique brand name, logo, mark or symbol of your company.
How do you protect your BRAND?
Registering a trade mark gives you the exclusive right to use, sell and license the Trade Marks in the relevant domain without anyone misusing it by coming up with an identical or similar fake Trade Mark.
Who can apply for a Trademark in Pakistan?
The IPO Act 2012 read with prevailing rule and regulations allow that a trade mark registration application can be made by following persons:
- Partnership Firm
- Company- Limited Liability Partnership, Private and Public Limited Company, Non-Profit Organization (NGO, Trust, Welfare Society, Foundation etc.)
Step by Step Process of Trademark Registration in Pakistan
Request for Search Facility
We recommend that search request may be made on Form TM-55 to Registrar of Trade Marks to check whether there are any identical or similar logos already registered with Intellectual Property Organization (IPO). IPO maintain a register of all marks and logos already registered and can be helpful in making informed decision while choosing a name for your brand.
Check list for Filing a Search Application
- Search Application Form TM-55 is applicable for trademark search in any one class at a time.
- Form TM-55 must be accompanied with two representations of the mark (each representation should be on a sheet of strong paper)
- Search fee amounting to 1000/- PKR should be submitted in the form of Pay order/ Bank draft made in the name of Director General IPO.
Personal Search Facility
You can also opt to have a quick check on Search register. This facility is available at Trade Marks Registry, Karachi, Islamabad and Lahore. Every person opting for this facility is allowed 15 minutes to check the register upon paying Rs. 300/- through bank draft.
How to Fill TM-1 Form for applying registration of Trademarks
An application in writing to the Registrar of Trademarks for registration of a trademark is made on Form TM-1
Check List to Fill TM-1 Form for Applying Registration of Trademarks
- An application for registering a register a trademark to be made on TM-1.
- One copy of TM-1 along with six representations of trademark on a strong paper of 13×8 inch must be accompanied.
- Application must specify the class in which brand is sought to be registered. In case if Trademark is to be registered in more than one class, a separate application must be given for each separate class [See Trade Marks Rules, 2004, for classification of goods and services].
- Form must be completely filled [Full name, Description and Nationality of the applicant].
- Full name and nationality of every partner must be specified in case of Partnership firm.
- Complete trade or business address must be specified.
- If the mark is in the form, of series, then indicate the number of series.
- Indicate domain name is in respect of goods or services.
- If the mark is in color, then color may be claimed. In this case, the applicant shall have right to use only the claimed colors in his/her mark.
- If no color is claimed, mark may be used in any color.
- Signature of applicant is required with his/her designation. If the mark is owned by an individual, he must sign it. · If owned by a partnership firm, by the managing partner, · If the applicant is a limited company, by the managing director or Director.
- Where the application is being filed through an attorney, a power of attorney on Form TM48, duly stamped, must accompany this application.
- If the applicant is foreign national, he should file application through their duly authorized attorney or advocate in Pakistan.
- If the mark is in a language other than English or Urdu, it’s translation and transliteration in the form of an affidavit from the applicant must accompany this application
How to Authorize an Agent in the Matter of Proceeding Trademark application?
- If applying through an Advocate/Agent, Form TM-48 (Power of Attorney) duly stamped and notarized must be executed.
- The authorized Agent, will act on behalf of applicant and shall make correspondences on behalf of the applicant.
How to Pay the Filing Fee?
Pay Order / Bank Draft amounting to Rs. 2000/- in the name of Director General, IPO-Pakistan is payable for each application.
Process of Registration
- Upon receiving the application Cash receipt and trademark number is allotted to the applicant;
- The Acknowledgement Receipt by the Trade Marks Registry is issued within 10-15 days of filing an application;
- After 3 months Examination Report is generated. In case of objections, applicant is served with Show-Cause Notice.
- Reply to show-cause notice is required to be made within 2 months from date of issue;
- An objection may arise if you file your application for trademark in an incorrect classification. Once all objections, if any, are satisfied, the IPO may also call you for a hearing before the Registrar to provide answers to any further queries;
- In case of no objection, application will be published in the Trade Marks Journal to call upon any person to bring his grievance on the table with two months from date of publication in journal. Application stands accepted, if no oppositions are filed and Demand Notice is issued to the applicant requiring to submit Form TM-11 along with registration fee amounting to Rs. 9,000/- in form of a pay order/ bank draft in the name of Director General IPO-Pakistan for issuance of the Registration Certificate;
- Registration Certificate is issued by the Registrar of Trademarks on receipt of payment etc.
The Validity Period of Trademark Registration Certificate in Pakistan
A Trademark Certification is valid for ten (10) years from the date of application and is renewable under section 35 of the Trademark Ordinance 2001.
Process For Trademark Renewal in Pakistan
A trademark to be renewed after the expiry is to be applied within six months from the expiry date. The applicant is required to submit Form TM-12 (original plus one duplicate) and make payment of surcharge of Rs. 15,000/- for one trademark. If application is not filed within six months, trade mark can be removed from the register. Applicant will need to apply for the restoration of the trademark on Form TM-13 in terms of the Trade Mark Rules, 2004.
Rs.3000/- as restoration fee will be required to be paid, and such an application is accepted within 12 months from the date of expiry of trademark registration.
How much time does it take to Register a Trademark in Pakistan?
Normal time based on our extensive experience, from fling of application for registration and till registration certificate is issued is somewhat 18 months.
Infringement of Trade Marks
Section 39 and 40 of the Trade Marks Ordinance 2001 provide that if any person uses the mark for the trade which is similar to the goods or services for which that mark has been registered, it shall be deemed to be the infringement of the registered trademark under Section 40.
Action for Infringement
Section 46 provides different remedies for infringement of the trade mark:
- Accounts; or
- Any other remedies which are available to the person having some other property rights.
Place where the suit has to be instituted
According to Section 117 of the Trade Marks Ordinance 2001, suit for the purpose of redressal of grievance caused as a result of infringement of any trade mark is required to be filed before District Court.