TRADEMARK PROSECUTION PAKISTAN
Trademark Filing Procedure in Pakistan
The procedure for filing a Trademark in Pakistan is as follows:
- Filling a Trademark in Pakistan – A trademark application in Pakistan can be filed for a single only. Multi class trade mark applications cannot be filed in Pakistan. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Pakistan within six months from the priority date.
- Official Examination of a Trademark in Pakistan / Issuance of Office Action – After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report will be issued by the Registrar within 3 months to 1 year depending on the back log at the registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Pakistan can be refused / objected by the Registrar on relative or absolute grounds of refual:
a. Relative Grounds of refusal of a trademark in Pakistan:
A mark is similar/ identical to an earlier trademark for the same or similar goods/ services. A mark which is similar/identical to an earlier trademark in respect of different goods/ services.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.
b. Absolute Grounds of Refusal of a Trademark in Pakistan:
If the trademark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of others.
If the trademark consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the goods or rendering of the service or other characteristics of the goods or services.
If the trademark consist exclusively of marks or indications which have become customary in current language or in the bona fide and established practices of the trade.
However, a trademark which may be initially refused on absolute grounds can be registered if it acquires a distinctive character as a result of extensive and continuous use by virtue thereof, it being associated with the trademark owner alone. Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within one month. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing. When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal, which is published and available on Registry’s website.
- Publication / Advertisement of a Trademark in Pakistan – After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark.
- Opposition of Published Trademark in Pakistan – On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 2 months from the date the Trademarks Journal is made available to the public. The time period to file the notice of opposition can be extended by a maximum period of 2 month upon filling a specified request for extension of time along with the prescribed fee, made before the expiry of the statutory period of 2 months.
- Registration & Renewal of a Trademark in Pakistan – The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non- renewal. Each renewal term is for a period of 10 years.
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