Trademark

Summary

Pakistan is a member of the Paris Convention for the Protection of Industrial Property. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement(classes 1-34) and service mark classification (classes 35-45) is applied in Pakistan.Pakistan is currently following both the Trademarks Act of 1940 in respect of cases filed prior to April 12, 2004, as well as the new Trademarks Ordinance of 2001 that was promulgated on April 12, 2004. In the said Ordinance,provisions for the registration of service marks,convention applications, priority rights and domain names have been included.

A trademark application filed in Pakistan is examined to determine its registrability. When a trademark is accepted by the Registrar, it is published in the Trademarks Journal. Any interested party may file a notice of opposition to the registration of a trademark within 2 months from the date of publication or within the period set by the Registrar, not exceeding 2 months in aggregate.The initial registration of the trademark is valid for a period of 7 years in respect of applications filed prior to April 12, 2004, renewable for a period of 15 years from the date of the expiration of the original registration, or from the last renewal of registration, as the case may be.The initial registration of a trademark filed after April 12,2004 is valid for 10 years and renewable for a period of 10 years.

The fees for renewing a trademark registration can be paid at any time during the last 6 months prior to the expiration of the latest registration. However, upon payment of an additional fee, a late renewal is possible during a grace period of 4 months starting from the date of publication of the registration in the Trademarks Journal under the heading “Unpaid Renewal Fee.”The assignment of a registered trademark with or without the goodwill of the business, change of name and/or address, registered user agreement and licenses of registered marks, are possible. The introduction of amendments to the registered mark without substantially affecting the identity of the mark or the boundaries of the list of goods covered by the registration of a trademark is also possible and shall be recorded in the official register.

The use of a trademark is not mandatory for filing an application. However, for maintaining the registration in effect, evidence of use is required to be filed at the time of second renewal. However, a concerned party may request the Registrar or the High Court to remove a trademark from the register, if it has not been used for 5 years and one month from the date of registration.Illegal use of the word “Registered” on an unregistered trademark, use of counterfeited trademark, illegal use of a registered trademark by an unauthorized person,dealing in goods bearing counterfeited trademark are offences punishable under the law in Pakistan.Infringement proceedings may be filed in the District Court as well as in the High Court.

Filing Requirements

i) Trademark/Service Mark Applications

1.A Power of Attorney [on Form TM-1. 48] duly notarized and signed by the applicant in two places marked by X.
2. Transliteration and translation of the non-English words appearing in the mark.
3. Trademark in use in Pakistan or proposed to be used. If in use, the period of use shall be specified.
4. The nature of business of the applicant, e.g.manufacturers, merchants, etc.
5. The name, address and nationality/domicile of the applicant.
6. Specification of the goods on which the mark is applied.
7. Twelve specimens of the mark, (not needed for word marks).
8. A certified copy of the application giving the filing date, number and country, if the application is to be filed with a priority claim.

ii) Renewal of Trademark/Service Mark Registrations
1. A Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked
by X.
2. A copy of the Registration Certificate.

iii) Search
1. Prints of the mark, (not needed for word marks).
2. Classes or goods to be searched.

iv) Recording an Assignment
1. A Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in two places marked by X,
(from each party separately).
2. A duly notarized deed of assignment executed by both parties.
3. A copy of the certificate of the trademark registration.

v) Recording a License Agreement
1. A Power of Attorney (form-48) notarized.
2. License agreement document notarized or legalized up to the Pakistani Consulate.
3. Trademark registration number and class.

vi) Recording a Merger
1. A Power of Attorney (form-48) notarized.
2. Merger document notarized or legalized up to the Pakistani Consulate.
3. Trademark registration number and class.

vii) Recording Change of Name
1. A Power of Attorney (on Form-48) in the new name and/or address duly notarized.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the applicant’s domicile.
3. A copy of the certificate of the mark registration.

viii) Recording Change of Address
1. A Power of Attorney (on Form-48) in the new name and/or address duly notarized.
2. A notarized certificate proving the change of name or address issued by the local competent authority of the
applicant’s domicile.
3. A copy of the certificate of the trademark registration.

Patent

Summary

General Information

International Agreements : WTO, GATT and Paris Convention.

What is Patentable :
1. Pharmaceutical products or a process for manufacturing. It may also be a chemical product or a process of manufacture thereof.
2. Inventions related with “Circuit Layout Designs”.
3. MICRO ORGANISMS per se and biological processes for the production of plants or animals other than non-biological and microbiological processes.
4. Patents may be granted for every field of science and technology if the invention satisfies the as in (1) above.

Novelty Requirements :
A patent shall NOT be granted, if prior to the filing of the application in Pakistan, or where the application is a priority application, the priority date, it has been disclosed to the public anywhere in the world including Pakistan by:
1. Publication in tangible form; or
2. By oral disclosure; or
3. By use; or
4. In any other way

Claiming priority : Yes – Within one year

Examination : Yes – Compulsory

Protection Period : 20 Years from filing date

Publication : Yes

Oppositions : Yes – within 4 months as of publication date.

Annuity Payments : Annually beginning with the 5th year and shall be paid before the expiration of the 4th year from the date of Patent or of any succeeding year during the term of the patent.

Compulsory Licensing : Yes

Filing Requirements

Patent Filing Requirements

1. Full details of the Applicant, nationality and profession/business.
2. Full details of the Inventor(s), nationality and profession/business.
3. Power of Attorney Simply Signed.
4. Three copies of specifications in English.
5. Three copies of Formal Drawings, if any, one copy should be on tracing cloth and the other two on stout white paper.
6. If claiming priority, a certified copy of Priority Document (can be filed within 3 months as of application date in Pakistan).
7. In case of application where the true or first inventor is not a party to the application, Form-1A on its reverse side duly endorsed by the inventor in presence of two witnesses is required (NO legalization is required). The names and complete addresses of the witnesses should be mentioned.

Industrial Design


Summary

General Information

International Agreements : WTO, Berne Convention & Paris Convention

Novelty Requirements : Yes – For the purpose of novelty, any disclosure to the public of the industrial design shall not be taken into consideration if it occurred within twelve months preceding the filing date or, where applicable, the priority date, of the application and if it was-by–reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

Claiming priority : Yes – Priority can be claimed within 6 months from the filing date in any WTO member county.

Examination : Yes

Protection Period : 10 Years

Extension Term : Two Terms of 10 Years each

Publication : None

Opposition : Not available

Annuity Payments : Yes – before the expiry of term

Grace period for Annuity payments : 6 Months

Compulsory Licensing : Yes

Filing Requirements

Design Filing Requirements

1. Power of Attorney Notarized
2. Two copies of the model or design if it is two-dimensional or two copies of each view thereof, if it is three-dimensional.
3. A Notarized Assignment Deed signed by the inventor, if the applicant is not the inventor.
4. A certified copy of the priority document (if claimed).