Build Strong Trademark in Pakistan

Located in South Asia, adjacent to Pakistan, China, Afghanistan and Iran, Pakistan plays an important role in connecting these regions, which is said to provide advantages for trade and investment. Pakistan has abundant reserves of natural resources, including fertile land, minerals, and water resources. These resources can be harnessed to develop industries such as agriculture, mining, and hydropower. Pakistan also has many industries that can develop economically strongly such as Pakistan can enhance agricultural production by applying modern techniques and improving irrigation systems, Pakistan has young and qualified human resources in the field of information technology, etc  can promote the development of this industry or Pakistan has many attractive tourist destinations, including the Himalayas, cultural heritage sites and beautiful beaches. Therefore, more and more businesses are expanding their business scope in Pakistan, in order to be able to distinguish their trademarks from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in Pakistan through the article below.

Legal basis

• Trademark Ordinance, 2001 (Ordinance No. XIX of 2001)

The concept of trademarks in Pakistan

A trademark is a word, phrase, symbol or design used to identify and distinguish the origin of a party’s goods from other parties. A service mark is a word, phrase, symbol or design used to identify and distinguish the origin of a service rather than a good.

The Trademark Registrar (TMR) is an agency under the Pakistan Intellectual Property Organisation (IPO-Pakistan) responsible for the registration of trademarks of goods and services under the Trademark Ordinance 2001. It is an agency of the federal government, which has jurisdiction over trademarks and services within the territory of Pakistan acting as a court civil and TMR decisions can be appealed to provincial supreme courts. The trademark registry is headed by an Executive Director and its office is located in Karachi, and has a Regional Office located in Lahore.

Conditions for trademark registration in Pakistan

Uniqueness: The trademark must be unique. This means that it must be able to clearly identify and distinguish the origin of the applicant’s goods or services from those of other businesses. A trademark cannot be a generic term for a product or service, a descriptive term simply describes the quality of a product or service, or something that can mislead consumers.

Availability: A trademark must not be identical or confusing to an existing trademark registered in Pakistan for similar goods or services.

Fair use: A trademark must not violate public order or morals, or be likely to mislead the public. It also cannot be obscene or offensive.

Types of trademarks that can be registered in Pakistan

Trademarks for Goods: This is the most common type and identifies the origin of physical products. This type may include:

• Wording: The brand name, slogan, or any other word used to identify the applicant’s product.
• Logo: A unique design or symbol that represents the applicant’s brand.
• Device: These are two-dimensional representations of a logo or design.
• Shape: A three-dimensional shape associated with the applicant’s product (e.g. Coca-Cola bottle).
• Label: The design or overall presentation of the applicant’s product packaging.

Service marks: Similar to trademarks for goods, these marks identify and distinguish the source of services rather than physical products. Examples include:

• Words and slogans: Related to a specific service (e.g. “Just Do It” for Nike training services).
• Logo and design: Used to represent the service provider.

Collective marks: These marks are used by an association of individuals to identify goods or services provided by their members. An example could be a certification mark used by a group of craftsmen to denote products made according to specific traditional methods.

Certification marks: These marks endorse certain characteristics of a product or service, such as quality, origin, or materials. A common example is the USDA Organic certification mark for organic food products.

Guide to Trademark Registration in Pakistan

Account registration is mandatory to use the online brand filing system. There are two types of users as follows:

• INDIVIDUAL (for those who file their own trademark application). You can refer to the instructions at the link below

https://ipo.gov.pk/system/files/RegisterasSELFIndividualforOnlineFilingSystemVer1.1.pdf

• REPRESENTATION (for those who wish to file a trademark application on behalf of their clients)
  • Lawyer
  • Registered Trademark Representative (RTMA)

Trademark registration documents in Pakistan

Applicant Information:

• Applicant name and address: The legal name and full contact information of the applicant, including phone number and email.
• Type of applicant: Indicates whether the applicant is an individual, company, or other legal entity. (Examples: Sole Proprietorship, Partnership, etc.)

Trademark Information:

• Images that represent trademarks: These can be image files (JPEG, PNG) or a clear and detailed description of the trademark (lettering, logo, design, etc.).
• Group of goods and services: A clear and specific list of the goods or services the applicant intends to use the trademark. Applicants can use the International Classification of Goods and Services (also called the Nice Classification for goods and the Vienna Classification for services) for ease of reference. These classification systems classify products and services, making it easier for the Trademark Office to review an applicant’s application.

After having all the information, the applicant needs to fill out the TM-1 form, which can be downloaded at the following link: https://www.ipo.gov.pk/trademarks-fee-forms

Statement of Use (Optional): If the applicant has commenced using the trademark in Pakistan, the applicant may submit a statement of use with evidence (e.g. product packaging, marketing materials) to potentially expedite the registration process.

Authorization (Optional): If a petitioner uses an attorney or agent to file the application, the petitioner may need a Authorization that allows them to act on the petitioner’s behalf.

Receipt of payment of fees: Currently the trademark registration fee in Pakistan is 3000 PKR

Trademark registration in Pakistan through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Pakistan accessed the Madrid Protocol on 24 May 2021.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications include the Madrid Singles of Vietnamese origin and the Madrid Applications with Pakistani designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and

Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

If you need to file a trademark application, please contact Viet An Law for the most effective support.