Trademark Registration in Pakistan: Process, Timelines and Protection

A registered trade mark gives its owner the exclusive right to use the mark for the goods or services covered, and a much firmer footing against infringers. In Pakistan, marks are registered with the Trade Marks Registry, which sits within the Intellectual Property Organization of Pakistan (IPO-Pakistan), under the Trade Marks Ordinance 2001.

Unregistered marks are not defenceless. A passing off action may succeed, but the owner then has to prove reputation and confusion. With a registration certificate in hand, enforcement, licensing and investor due diligence all start from a stronger place.

There is a commercial side as well. Franchisees, distributors, online marketplaces and investors increasingly ask for proof of registration. A registered mark can also be assigned, licensed or sold with the business with far more certainty.

Pakistan uses the international classification of goods and services. Each application covers goods or services in a particular class, so a business active in several areas may need several filings. Take a restaurant brand: it may want cover for restaurant services and also for packaged food, merchandise or delivery, if those are on the cards. Picking classes is a business decision as much as a legal one.

Search the Registry's records before filing to find identical or similar marks that are registered or pending. Do it early, before money goes into packaging, signage, domain names and marketing. All of these are painful to change once a conflict surfaces. Treat a search result as a reading of risk; the Registry or a competitor may see things differently.

• Describe the goods and services with care, covering what you do now and what you realistically plan to do.
• Look for marks that sound or look alike, as well as exact matches.
• Ask honestly whether the mark is distinctive or simply describes the product.
• Check the market for similar marks in use, which a register search can miss.

Applications are filed with the Registry, more and more often through IPO-Pakistan's online facilities, in the name of whoever will own the mark. You will need:

• The applicant's name, address and legal status.
• A clear representation of the mark, whether a word, a logo or both.
• The class and the specification of goods or services.
• Details of any prior use claimed in Pakistan.
• A power of attorney if an agent is filing.
• Priority details, if you are relying on an earlier foreign application.

Get the owner's name right. A company brand registered in a director's own name is a common source of ownership disputes once the director leaves or falls out with the other shareholders.

Foreign brand owners file through a local agent and may be able to claim priority from an earlier application in a Paris Convention country, provided they file within the prescribed period. File the logo as it is actually used. Where a business uses both a word mark and a logo, protecting each separately is often worthwhile.

Once filed, the application is examined against the Ordinance, including for distinctiveness and conflict with earlier marks. If the examiner objects, the applicant can reply in writing or ask for a hearing.

Accepted marks are advertised in the Trade Marks Journal, and anyone may oppose within the prescribed period. An opposition runs through an exchange of statements and evidence and may end with a hearing.

If your application is opposed, read the grounds closely. Opponents usually rely on prior registration, prior use and reputation, or a lack of distinctiveness. Sometimes a coexistence agreement or a narrower specification settles matters faster and more cheaply than a contested hearing.

Nobody can promise a fixed period for registration. The total time depends on how the application fares at each stage and on things outside the applicant's control. Think of it as a chain of steps: search, filing, examination, publication, opposition and registration. Any one of them can move quickly or stall.

• Workload and processing times at the Registry.
• Whether the examiner objects, and how fast the objection is answered.
• Whether anyone opposes, and how hard they fight.
• How complete and accurate the original filing was.

A clean, unopposed application generally moves more smoothly than one needing corrections or a contested hearing. If a launch is planned, file as early as you can, ideally before the brand is announced, and check the application's status often so that nothing from the Registry sits unanswered.

If no opposition succeeds, the Registry issues a registration certificate. Registration runs for a fixed term and can be renewed for further terms by applying and paying the applicable fee within the prescribed time.

Protecting the registered mark

• Watch the Trade Marks Journal for conflicting applications.
• Record assignments and licences with the Registry.
• Keep using the mark consistently; long periods of non-use can expose it to removal.
• Respond to infringement with a legal notice, a civil suit for an injunction and damages, or other remedies the law provides.

Sutra Law advises businesses throughout Pakistan on clearing, filing, prosecuting and enforcing trade marks before IPO-Pakistan and the courts. That includes searches, applications, replies to objections, oppositions, renewals and infringement action.

To get started, send us the mark in the form you use it, a list of the products or services it covers now and over the next few years, and the name of the entity that should own it. If a launch date is already fixed, or you have spotted a similar mark in the market, raise it early so the search and filing strategy can take it into account.