Designs and Models

– Registered Designs Ordinance, 2000, promulgated on September 7, 2000.
– Registered Designs Rules, 2023, promulgated on March 11, 2023.

Membership in International Conventions

– Berne Convention, since July 5, 1948.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 6, 1977.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since July 22, 2004.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 9, 2023.

Filing

Applicant: a person claiming to be the proprietor of any new or original design not previously published in Pakistan may apply for the registration of the design in respect of any article or the set of articles specified in the application in Pakistan, except in the case of a priority application.

Definitions: article means any article of manufacture and includes any part of an article if made and sold separately. Proprietor means: (1) where the author or creator of the design, for good consideration, executes the work for some other person than the person for whom the design is so executed; (2) where a design or the right to apply a design to an article becomes vested whether by assignment, transmission or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, in respect and to the extent in and to which the design or right has been so vested that other person or as the case may be the original proprietor and that other person; (3) if and to the extent to which two or more persons have created the same design independently of each other, the person whose application has the earliest filing date or if priority is claimed, the earliest validity claimed priority date, shall have the right to the registration of an industrial design as long as the said application is not withdrawn, abandoned or rejected; and (4) in any other case the author or creator of the design as may be assigned or as may be transferred by succession. The term person includes any firm, partnership or body corporate.

Foreigners and nationals not living in the country: they must appoint an agent.

Foreigners: foreigners are entitled to the same protection as is available to Pakistanis.

Kinds of designs and models: there are two kinds of designs, namely a design which can be registered before its publication in Pakistan and a design based on a priority application.

Not registrable: a design shall not be registered unless it is new or original and in particular shall not be so registered in respect of any article if it is same as a design which before the date of the application for registration has been registered in Pakistan or published anywhere in the world in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

Novelty: not specifically provided, but a brief statement of the novelty for which the applicant seeks protection may be endorsed by him on the application and on each of the representations.

Priorities: in addition to the members of WTO, Pakistan has arrangements for giving “Priority” to designs with several Commonwealth countries including the United Kingdom.

Series application: a set of articles may be treated as one article.

Territory covered: the whole of Pakistan.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (attested by two witnesses);
2. 6 identical drawings, prints or photographs of the designs or 6 identical samples of woven or textile goods.

Electronic filing: not available.

Examination

Amendment of application: errors in an application for a design may be corrected by the Controller either upon a written request or otherwise.

Opposition: a pending application cannot be opposed, but a petition to the High Court can be made at any time after the registration of a design or within two years of the registration of a design to the Controller for its cancellation.

Provisional registration: not possible.

Registration: when a design is accepted, the necessary information is entered in the Register of Designs.

Publication: applications are not published by the Patent Office.

Protection

Delivery of document: the period between the filing of an application and the granting of a design patent varies in each case.

Beginning of protection: from the date of the application if it is successful and in the case of a priority application, from the priority date. However proceedings for infringement cannot be instituted before the design is registered.

Duration: ten years from the date of application for registration.

Renewals: the initial period of copyright for a registered design may be extended for two further periods of ten years each.

Annuities: no annuities are charged. For registration of designs and applications thereof, including each extension of ten years, a prescribed filing fee is payable.

Marking of registered goods: before delivery for sale of any article to which a registered design has been applied, the proprietor must ensure that each article is marked with the word “registered” or with the abbreviation “regd.” or “rd.”.

Changes in the list of goods: as mentioned above, a design already registered in one or more classes, may be registered in other classes as well.

Assignment: a person registered as the proprietor of a design may assign his design. Any such assignment may be registered at the Patent Office.

Licenses: a person registered as the proprietor of a design may grant licenses for his design. Such licenses may be registered at the Patent Office.

Modification of Protection after Registration

Right of prior user: if the design has previously been used in such a way that it has been disclosed either to the public or to any individual member of the public who is not bound to secrecy, this amounts to publication and biases registration.

Opposition to registered designs: any person interested as stated above may petition for cancellation of the registration of a design on any of the following grounds: (1) that the industrial design should not have been registered because the specific substantive requirements prescribed in the Ordinance have not been fulfilled; (2) that the industrial design is contrary to public order or morality; (3) that the person in whose name the industrial design is registered has no right to it.

Annulment of registration: the registration of a design will be cancelled if the proceedings for cancellation are decided in favor of the opposer.

Compulsory licenses: there is no provision for the granting of compulsory licenses in respect of designs.

Expropriation: not provided for under the Ordinance.

Infringements and penalties: if any person infringes a registered proprietor’s right, the registered proprietor of any design may, if he so elects to do, bring an action for the recovery of the damages suffered by such contravention and for an injunction against the repetition thereof. Other penalties for contravention under the Ordinance may include imprisonment, extendible to two years, and a fine, which may extend to 20,000 rupees or both.