The Trade Mark Law enforced in Pakistan is the Trade Marks Ordinance, 2001, promulgated on April 13, 2001. Under the Trade Mark (Invalidation and Summary Registration) Act XXXVII of 1950, all trademarks that were registered in India before August 14, 1947, and had not been registered for more than seven years after the date of application, were invalidated in Pakistan.

– Trade Mark Rules, 2004, promulgated on April 12, 2004.
– Trade Marks (Amendment) Act, 2023, promulgated on August 16, 2023.

– 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.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since May 24, 2021.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 9, 2023.

Applicant: any person, firm or corporation claiming to be the proprietor of a trademark, used or proposed to be used by him, may apply for registration of a trademark in respect of goods, services or both goods and services.

Applicants not living in the country: may apply, but must furnish full name and contact details of agent for services in Pakistan.

Trademarks of foreigners: a foreign applicant cannot claim greater privileges than a national applicant and is liable to the same restrictions as a subject of Pakistan. A trademark must satisfy the requirements of the Trade Marks Ordinance 2001.

Definition: a trademark is a mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A mark may comprise a device, brand, heading, label, ticket, name (including personal name), signature, word, letter or numeral, figurative element, color, or any combination thereof.

Sound marks: registrable.

Marks for services: registrable in the prescribed classification of services in accordance with the International Classification of Services.

Novelty: not necessary.

Not registrable: (1) trademarks which cannot be represented graphically, which are incapable of distinguishing goods or services of one already applied for registration, devoid of any distinctive character, trademarks which consist exclusively of marks or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services or other characteristics of goods or services or those which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade. Provided that registration shall not be refused if prior to date of application for registration, the trademark has acquired a distinctive character as a result of the use made of it or is a well-known trademark; (2) if it consists exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods; (3) no trademark or part of a mark will be registered if it consists of or contains any scandalous design or, by being likely to deceive or cause confusion, is disentitled to protection in a High Court or a District Court or is likely to offend the religious susceptibilities of any class of Pakistani subjects or is contrary to any law in force or to morality. Nor can a word, which is the commonly used and accepted name of any single chemical element or single chemical compound, be registered.

National flags: not registrable.

Names or portraits: if of a living person, then consent of the person whose portrait it is, is necessary; if of a person recently dead, the consent of his legal representatives is required.

Associated marks: where the proprietor of a trademark is entitled to the exclusive use of any part of that mark separately, he may register the whole and the part as separate trademarks, and such marks shall be associated. Similar or identical marks belonging to one proprietor in respect of the same goods or same description of goods are registered as associated marks.

Priorities: priority rights can be claimed through an application made in a Convention country to register the trademark.

Classification: international; Schedule IV of the Trade Mark Rules.

Multi-class applications: are not permitted.

Territory covered: the whole of Pakistan unless specifically restricted to specified areas or parts of Pakistan.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, notarized;
2. 6 prints (max. size: 13 x 8 inches), leaving a margin of not less than one inch and a half on the left hand part of the sheet;
3. Electrotype.

Electronic filing: available.

Amendment of application: the amendment of an application is permitted by the Registrar upon such terms as he may think fit. An amendment which substantially affects the identity of the mark or extends the goods or services covered by the application, will not be allowed.

Examination: formal. Satisfaction of the requirements of the Ordinance is however required and a search is also carried out of earlier trademarks by the Registrar.

Opposition: any person may, within two months of the date of advertisement or re-advertisement of an application give notice, in writing, in prescribed manner, to the Registrar, of opposition to the registration of a trademark, along with a statement of the grounds of opposition. Registration may be opposed on any of the grounds upon which an application for registration may be rejected except the ground that the trademark cannot be represented graphically. Besides specific grounds for opposition have also been prescribed.

Letters of consent: acceptable by the Registrar of Trademarks.

Disputes about ownership: may be settled by the Registrar.

Application kept secret: applications are open to inspection but a person who desires to inspect an application may be asked to show that he has an interest in doing so.

Appeal: an appeal against any decision of the Registrar must be made to a High Court within two months of the date of such a decision.

Urgent registration: there is no specific provision for urgent registration. All the necessary formalities must be observed before registration is completed.

Provisional registration: not provided for but protection takes effect as from the date of filing of the application.

Publication: an application for registration of a trademark, which is required or permitted to be advertised under the Act, will be published in the Trade Marks Journal, together with the conditions and limitations if any, during such period and in such manner as the Registrar may direct.

Rectification: an aggrieved person may apply to the Registrar or High Court for the rectification of an error or omission in the register, not affecting the validity of the registration of a trademark.

Delivery of document: at the time of filing an application for any purpose under the Act. Such time may be extended at the discretion of the Registrar.

Beginning of protection: from the date of filing of the application for registration.

Duration: ten years from the date of registration.

Renewals: are for periods of ten years. An application for the renewal of the registration of a trademark may be made before the expiry of the registration, failing which the request may be made within such further period of not less than six months as may be prescribed.

Latest term for renewal: on the date of expiry of the previous registration of the trademark.

Term of grace for renewal: six months.

User rights: protected on registration of the trademark concerned.

Obligation to use: where a trademark has not been used before it is tendered for registration, the applicant must have a definite intention of using the mark. Use is compulsory; otherwise the mark is liable to be expunged from the Register on the basis of a rectification application by an aggrieved person or party. It is highly recommended to use a mark as soon as possible after registration. Any third party may request the cancellation of a trademark registration for non-use for a period of five years and one month from the date of application.

Is considered valid trademark use: use on any covering, packaging, document, label, band, ticket, reel or thing in or with which the goods are or are intended to be, dealt with or provided in the course of trade; use in a form not diverging essentially from the registered one; use on commercial materials (invoices, stationery); use on a sign board or in an advertisement; use by a licensee (the Registered User Agreement should be registered at the Trademarks Registry); export; use at exhibitions and fairs in Pakistan; renewal.

Nominal use: would not constitute use.

Marking of registered goods: there are no specific provisions for this but a mark should not be described as “Registered” unless it is registered in Pakistan or there is a clear indication as to the country in which it is registered.

Text of marking: no specific text.

Modification of the mark: modification of a mark may be permitted by the Registrar but it must not be such as to substantially alter the character of the mark.

Changes in the list of goods: permitted but always subject to the Registrar’s discretion. Changes must, however, fall in the same class of goods. Additions are not allowed, but restrictions are accepted.

Assignment: it is possible to transmit by assignment, testamentary disposition or operation of law, a registered or unregistered trademark as other personal or movable property. A registered trademark shall also be transmissible either in connection with the goodwill of business or independently, but not in the case of an unregistered trademark.

Licenses: registrable.

Registered users: use of a mark by a licensee is permitted by a system of registered users whose use of the trademark counts for all purposes as use by the owner. Trafficking in trademarks is not permitted.

Rights of prior user: provided for.

Compulsory licenses, expropriation, nullification, validation of invalidated marks, provision for restoration, registration of invalidated marks: not provided for.

Infringement and penalties: infringement, inter alia, occurs when a person who is not the registered proprietor of a trademark, uses in the course of trade, that mark or a mark deceptively similar to it in relation to the same class of goods or services or if the person uses such registered trademark as his trade name or part of his trade name or if the person uses such registered trademark as his domain name or part of his domain name or obtains such domain name without the consent of the proprietor of the registered trademark with the intention of selling such domain name to another including the proprietor of the registered trademark. Infringement also occurs, inter alia, if the proprietor of a registered trademark or licensee breaches certain restrictions in respect of registered goods while displaying a registered trademark on their packaging or on the container in which they are offered to the public. Such action is punishable under the Penal Code and is also actionable under the provisions of the Trade Mark Ordinance. Unregistered trademarks are not protected by the Act but have some rights under the Penal Code. They are also protected under the common-law remedy for passing-off. Passing-off is actionable as a common-law tort.