Outline of Pakistan’s marking system

Recommended preliminary search: To avoid conflicts with other companies' trademarks, it is important to preliminarily search for the existence of identical or similar trademarks in the Trademark Registry before filing. At IPO Pakistan, it is also possible to make an official trademark search request by attaching two trademark samples to the prescribed form (Form TM-55) and requesting a similarity search for a fee of 1,000 rupees per class. There is also a paid service (300 rupees) that allows you to browse the trademark database for 15 minutes at the IPO office, and it is also possible to conduct an informal search. It is a practical risk management point for companies to understand potential conflict risks through such prior clearance investigations before filing an application.

4. Examination procedure

Formalities Examination: Once an application is accepted, it will first undergo a Formalities Examination by the Trademark Registry. In the formality examination, formal requirements are checked, such as whether the necessary items are entered correctly, whether the prescribed documents are complete, and whether there are any omissions in payment of fees. If there are any deficiencies, correction instructions will be issued, and if the corrections are made according to the instructions, the examination will continue.

Substantive examination: Once the formal requirements are met, the next step is Substantive examination (content examination). The examiner will determine whether the trademark meets the registration requirements set forth in the law. The main points of the examination are as follows.

• Distinctness: Is the trademark too descriptive or just a generic name? (If it lacks distinctiveness, this is a reason for refusal.) For example, a trademark consisting only of words that directly indicate the product's quality, efficacy, place of origin, etc. or a common name cannot be registered because these are "words that other businesses also need to describe their own products and services." However, even if the distinctiveness is not sufficient at the time of application, registration may be approved if it can be proven that the distinctiveness has been acquired through use (secondary meaning).

• Conflict with someone else's previous quyền: Check whether the same or similar trademark has already been registered (or applied for) for the same or similar goods or services. This is a relative ground for refusal, and the examiner will search the trademark database to see if there are any conflicting prior applications or registrations. If a conflicting prior trademark is found, a notice of reasons for refusal will usually be issued.

• Public order and morals/deceptiveness: Trademarks whose structure or meaning violates public order and morals (e.g., obscene words, etc.), or those that are likely to deceive consumers about the quality or origin of goods or services (e.g., a trademark that includes a place name unrelated to the origin) will not be allowed to be registered as an absolute ground for refusal.

The examination period depends on the number of applications and the situation of the examiner, but it is common for the first examination result to be notified within about a few months to one year from the application(In recent years, the process has become faster due to computerization, and it is said that there are cases where the first examination result is available in about three months). If the examiner finds reasons for refusal, a Notice of Reasons for Refusal(Office Action) will be issued, and the applicant will be given the opportunity to respond by submitting written opinions and amendments within a specified period of time after receiving the notification (usually 2 months + up to 3 additional months for additional extension). If you make an appropriate counterargument/amendment within the response period and the examiner accepts it, the reason for refusal will be resolved. For example, if a conflict with an earlier trademark is pointed out, there are cases where the trademark is approved by reducing the number of designated products or by attaching a disclaimer to the trademark (clarifying the portion of the trademark that is not claimed). On the other hand, if the examiner's decision does not change even after submitting a written opinion, or if you do not respond within the deadline, the application will be rejected. Even in the case of a decision of refusal, if the applicant is dissatisfied, it is possible to file an appeal for rescission of the trial decision (judicial review of the trial decision) to the High Court.

5. Objection system

Publication and opposition: Once the substantive examination has been cleared, the trademark is determined to be eligible for registration (acceptance), and ispublished (publicized) in the Trademark Gazette before registration. In Pakistan, the Trademarks Journal is published electronically monthly, and trademarks that pass examination are published in the official gazette. The purpose of public notice is to give interested parties an opportunity to raise objections. Two months(60 days) from the date of publication is the Opposition Period during which third parties can file an opposition to the registration of the trademark. The two-month opposition period can be extended twice by one month if necessary, and there is room for oppositions to be accepted for up to four months from the date of public notice.

Procedure for filing an opposition: Those who wish to file an opposition (interested parties such as competitors) must submit a prescribed Notice of Opposition to the Trademark Registration Office within the specified period. The objection form must specifically state the reasons (grounds) for the objection, and the main reasons for the objection include the following.

• Relative reasons: Since the applied trademark is the same or similar to the petitioner's previously registered trademark, and the designated goods and services are also the same or similar, it will cause confusion if registered (infringement of first-to-file right/prior user right).

• Absolute reasons: The trademark itself does not meet the absolute registration requirements of the Trademark Law, such as it lacks distinctiveness, is too descriptive, or is a generic name.

• Fraudulent intent/malicious intent: The trademark application is based onfraudulent intent, such as imitation or free riding (a typical example is an application that plagiarizes a well-known trademark of the complainant).

• Other rights infringement: The use or registration of a trademark conflicts with another person's copyright, trade name right, portrait right, official emblem/emblem protection regulations, etc. In particular, applications that are similar to well-known or famous trademarks (subject to protection under Article 6-2 of the Paris Convention) or trademarks that are confusingly similar to another person's company name may also be grounds for opposition.

If an opposition is filed, a copy will be served on theapplicant by the Trademark Registry. The applicant must submit a counter statement to the objection within 30 days after receiving it (extension may be extended up to 60 days if there is a valid reason). If you do not submit a written reply within the deadline, the trademark application will be abandoned (it will be considered that you have accepted the opposition).

If the applicant files a counter-statement, a copy thereof will in turn be sent to the opponent. The opponent may file arejoinder if necessary, typically making additional written arguments within 30 days. The Trademark Registry will then invite evidencefrom both parties. Evidence is submitted in the form of written evidence such as an affidavit (afidabit), and is generally submitted in the order of evidence from the opponent and counter evidence from the applicant. If there are still issues in dispute after the written hearing, the Trademark Office will designate a date for an oral hearing, giving both parties an opportunity to make their arguments and prove their case directly. After the hearing, the hearing officer (trademark registrar) will make a decision based on the arguments and evidence of both parties, and will notify you of the decision in writing. If the opposition is approved, registration of the trademark will be refused. If the opposition is dismissed (applicant wins), the trademark will proceed to registration procedures.

Appeal against opposition decision: If the losing party is dissatisfied with the opposition decision made by the Trademark Registrar, it is possible to appeal to the High Court within a prescribed period. In Pakistan, apart from the Intellectual Property Office, a court dedicated to intellectual property rights (Intellectual Property Court) has been established in each province, and examinations of decisions by the Trademark Registrar are also handled by the Intellectual Property Division of the High Court. In this way, the opposition system is an important process that reflects the opinions of third parties before registration, and in practice companies are required to monitor competitors' public announcements and file objections as necessary in order to protect their own rights.

6. Registration and creation of rights

Registration Decision and Registration Fee: If the publication period has expired and there are no oppositions or the opposition is finally dismissed, the trademark will be Registration Decision. The registration authority will issueregistration fee payment notice (demand note) to the applicant, and the applicant must pay the prescribed registration fee (9,000 rupees as mentioned above) within one month after receiving the notice. Once payment of the registration fee has been confirmed, the trademark will be officially entered inthe Register and a Registration Certificate will be issued. The registration certificate clearly states the trademark illustration, registration number, registration date, registrant's name, designated goods and services, etc., and the registration procedure is completed.

Time of rights accrual: In Pakistan, the term of trademark rights is stipulated as 10 years from the filing date. Therefore, although the substantive right (exclusive right to use) arises after the registration is completed, its effect extends retroactively tothe filing date. For example, even if it takes two years from application to registration, once registration is complete, even if another person has started using the same trademark for similar products between the application date and the registration date, you may be able to request an injunction based on your own earlier application (however, cases where the third party has continued to use the trademark from before the filing date will be considered separately). In any case, the exclusive right of a registered trademark accrues retroactively to the filing date, and the registered trademark owner (right holder) has the right to use the trademark exclusively in connection with designated goods and services. If a third party uses the same or confusing trademark without permission, it will be considered an infringement, and you can seek an injunction or compensation for damages (see the section on exercising rights below for details).

Effects of registration: The following legal effects and benefits are granted to the right holder of a registered trademark.

• The right holder of a registered trademark has the exclusive right to use the trademark for designated goods and services, and can prohibit the use of the trademark or similar trademarks without the permission of the right holder. Registration carries with it a presumption of title, making it easier to obtain an injunction in court.

• The trademark registration certificate serves as presumptive evidence of ownership of the right holder, making it easier to prove ownership in the event of a dispute.

• Registered trademarks are also a prerequisite for taking various administrative protection measures, such as import injunctions at customs (registration is important in counterfeit product control by the Competition Commission of Pakistan and the Pharmaceutical Regulatory Authority, etc.).

• It is now possible to attach the “Registered™” mark (® display) to products and advertisements, which has the effect of increasing brand credibility. However, it is prohibited to display the ® mark at an unregistered stage (there are penalties for false representations), and it is common to use symbols such as ™ or ℠ before registration.

7. Obligations after registration (obligation to use, renewal, cancellation, etc.)

Duration and Renewal: Trademark registrations in Pakistan are valid for 10 years from the date of application. It is possible to renew the validity period by completing the prescribed procedures before the end of 10 years, and there is no upper limit to the number of renewals, and it can be renewed as many times as you like every 10 years. Renewal procedures are accepted from 6 months before the expiration date, and you can maintain your rights for an additional 10 years by paying the renewal fee. Even if you inadvertently forget to renew, you have the option of renewing by paying an additional fee within the 6-month grace period after expiration (your registration will be canceled after the grace period has passed). A registered trademark that is not renewed will expire at the expiration of the term and lose its rights. For this reason, it is important for companies to manage renewal deadlines for their important trademarks and ensure that renewal procedures are completed within the deadline.

Obligation to use and cancellation of non-use: In Pakistan, if a trademark is not used continuously for five years after registration, the trademark registration may becancelled (cancelled) at the request of a third party. Specifically, interested parties can file a petition to the Intellectual Property Court for the cancellation of trademark registration for trademarks that continue to be unused without justifiable reasons after five years have passed from the date of completion of registration. If a non-use cancellation is approved, the trademark will be removed from the registry and the rights will expire without retroactive effect. The purpose of these regulations is to sort out "dead trademarks" that are only registered but left unattended, and to protect only those trademarks that are actually used in the market. Therefore, it is advisable for companies to begin continuous use of the trademark as soon as possible after obtaining trademark registration, and establish the brand as a brand in the market. Please note that there is a risk of cancellation if the card is not used for five years without a valid reason.

Other grounds for cancellation: In addition to non-use, trademark registration may be invalidated or canceled due to circumstances discovered after registration. For example, if an absolute or relative reason for refusal was overlooked at the time of registration (it was actually descriptive, it conflicted with a prior trademark, etc.), interested parties can file an invalidation trial (registration cancellation lawsuit) to invalidate the registration. Additionally, cases where a trademark becomes a general name (ordinary name) or where the trademark itself is used in a manner that is contrary to public order and morals after registration may also be grounds for cancellation. Furthermore, if the right holder wishes to abandon the trademark right, the registration can be canceled by filing an application for voluntary cancellation (abandonment of registration) with IPO Pakistan. In this way, it is important to continue to use and manage trademarks appropriately even after registration, and to carry out renewal and waiver procedures as necessary.

8. Rights enforcement and infringement measures

Determination of Infringement: If a trademark that is identical or confusing to a registered trademark is used without the permission of the right holder for goods or services designated by the registered trademark, this constitutes infringement of trademark rights. For example, if a third party uses a mark that is "substantially the same or confusingly similar" to a registered trademark for goods or services that are within the scope of the registration, infringement will occur. Furthermore, if a registered trademark is a well-known mark, any act that causes consumers to confuse the source or dilutes the credibility of the trademark may be injunctive as infringement in a broad sense, even if the trademark is used for dissimilar goods or services. However, in the case of an unregistered trademark, there is no legal infringement of trademark rights, and in this case, civil remedies will be sought as "passing off" (unfair competition). Foreign trademarks that are well known even if they are unregistered can be protected under Article 86 of the Ordinance, but the burden of proof is heavy, so it is easier to eliminate infringement if they are registered.

Civil action: In the event of trademark infringement, rights holders may seek redress throughcivil action. In Pakistan, an intellectual property court (IP Tribunal) has been established in each province based on the Intellectual Property Act 2012, and trademark infringement cases are, in principle, under the jurisdiction of these specialized courts (only in Sindh [Karachi], the High Court has first instance jurisdiction). In an infringement lawsuit, the primary remedy is to stop the infringing activity through an injunction, and you can also claim damages for the infringement and transfer of unjust profits (account). In the case of particularly obvious infringement, an injunction may be issued as a provisional injunction at the same time a lawsuit is filed, so presenting the registration certificate increases the possibility of obtaining prompt injunctive relief. The court (or IP court) will make a judgment based on the arguments and evidence of both parties, and if infringement is found, a permanent injunction order and a final judgment on the amount of damages will be issued. If dissatisfied with the judgment, the losing party canappeal to the High Court.

Criminal Measures: Pakistan's Trademark Law and Penal Code also provide forcriminal penalties for egregious trademark infringement. For example, the act of intentionally forging or imitating another person's registered trademark and attaching it to a product or selling it (so-called piracy or manufacture and sale of counterfeit goods) is a criminal offense, punishable by up to two years' imprisonment and a fine. Additionally, the act of manufacturing or possessingmachines or equipment for affixing another person's trademark to products without permission can be punished with up to three years in prison. Furthermore, it is prohibited to falsely indicate that unregistered trademarks are registered trademarks on products or advertisements (e.g., unauthorized use of "Registered" or the ® mark), and violators will be subject to penalties such as fines. Criminal procedures are mainly used as a means of dealing with malicious counterfeiters and habitual counterfeiters, and when rights holders file criminal complaints or file complaints with the police, they can expect a deterrent effect through coercive measures such as investigation, seizure, and prosecution.

Customs Border Enforcement: In order to prevent the distribution of counterfeit products, Pakistan has a border enforcement system for intellectual property infringing products byCustoms (Customs Authority). Trademark owners can apply in writing to customs to request that imported goods that use their trademarks without permission be treated as prohibited import goods. Once the application is accepted and the rights information is registered in the database of the customs authorities, the customs will detain or confiscate any cargo that appears to be a counterfeit product of the trademark at the time of import inspection. In 2017, a chapter on intellectual property protection was added to the Customs Regulations, strengthening the mechanism by which Customs, IPO Pakistan (Trademark Database) and Directorate General of IPR Enforcement work together to detect and confiscate infringing goods. This allows companies to use trademark registration as leverage to prevent counterfeit products from entering the border.

As mentioned above, in Pakistan, **civil, criminal, and administrative (customs)** methods can be used to enforce trademark rights and counter infringement. It is important for companies to choose appropriate countermeasures depending on the damage situation, and to protect their brand by collaborating with local specialized lawyers and authorities as necessary.

9. Madrid Protocol and international applications

Pakistan acceded to the Madrid Protocol on May 24, 2021, becoming a party to the Protocol (108 countries at the time). This allows brand owners in Pakistan to utilize the Madrid International Registration System to simultaneously seek trademark protection in over 100 other member countries and territories with a single international application. Similarly, if a foreign company wants to acquire trademark rights in Pakistan, it can include Pakistan as a designated country via Madrid. For example, a Japanese company can pursue trademark protection in Pakistan relatively easily without going through a local agent by filing a Madrid application based on the basic application (or registration) of its home country and adding "Pakistan" to the designated countries.

However, even when using the Madrid system, there are Pakistan-specific requirements and points to keep in mind. Specifically, at the time of accession, the Pakistani government declared that ``a declaration of intention to use the trademark is required when designating the country as Madrid.'' This means that if Pakistan is included as a designated country in an international application, the applicant must clearly indicate that the applicant intends to use the trademark in Pakistan. Additionally, it has been declared that even if a license is recorded in the International Registry Register (WIPO's international registration database), the record itself will not have legal effect within Pakistan. Therefore, if you wish to license the use of your trademark to a third party through a license agreement, you will need to consider procedures such as registering a license holder in Pakistan separately.

The Pakistan Trademark Office's examination period for an international application designation is a maximum of 18 months, and if the examiner finds grounds for refusal, a Notice of Provisional Refusal will be notified via the International Bureau of International Bureau (WIPO). After receiving the notification, the applicant (designated candidate) must respond by submitting a written opinion or amendment to the Pakistan Trademark Office within two months after receiving the notification (application for extension of time may be possible depending on the circumstances). If the reasons for refusal are successfully resolved, the international registration will be granted protection in Pakistan, and WIPO will issue an additional notification to that effect. As mentioned above, since Pakistan is currently a member of the Madrid Protocol, in addition to direct filing (filing to IPO Pakistan through a local agent), Japanese companies can also take advantage of via Madrid route. Each method has different costs and procedural characteristics, so it is best to choose the appropriate application method according to your company's trademark strategy.

10. Other practical points that companies should keep in mind

Finally, we will summarize some practical points for companies seeking trademark protection in Pakistan.

• Using a local agent: When a foreign company files a trademark application in Pakistan, the involvement of a local registered trademark agent (patent attorney/attorney) is essential. By relying on an experienced local agent, you can smoothly apply and maintain your rights, from handling procedures in English to handling local-specific formats to post-registration management. Select a reliable IP specialist firm to issue a power of attorney (Form TM-48) and conduct various communications smoothly.

• Response to foreign language trademarks: If the applied trademark is written in characters of a foreign language other than Urdu or English (e.g. Japanese or Chinese), translations and transliterations (romanization of the pronunciation) are required to be attached. In Pakistan, examinations and registrations are conducted in the official languages ​​of English or Urdu, so it is necessary to clarify the meaning and pronunciation of trademarks in languages ​​that are not understood locally. Also, when using a trademark in the local market, consider protecting the Urdu version of the trademark, if necessary. There are cases where foreign brand names are transliterated into Urdu characters to make them more familiar to consumers, so if you register important brands as a trademark in Urdu as well as in English, you can prevent transliterated trademarks from being stolen by third parties.

• Appropriate display of trademarks: When displaying trademarks on products or advertisements, be sure to display them appropriately before and after registration. It is customary to use the ™ (trademark) or ℠ (service mark) symbol for trademarks that are pending registration, and use the ® (registered trademark) mark after formal registration has been completed. As mentioned above, it is prohibited by law to attach the ® mark to an unregistered trademark, and violation of the mark is subject to penalties. On the other hand, after registration, the fact of registration can be made known by adding the ® mark, which has a certain effect on deterring infringement. However, even if you do not display it, it does not mean that you cannot immediately exercise your rights, but after registration, it is desirable to properly display the registration on products, websites, etc., so that counterfeiters do not get away with saying, ``I did not know it was registered.''

• Maintaining rights and accumulating evidence of use: As mentioned above, in Pakistan, a license can be revoked after 5 years of non-use. Therefore, it is important to start using the trademark locally as soon as possible after obtaining trademark registration, and to continually accumulate and store evidence of use (photos of locally sold products, advertising materials, transaction documents, etc.). In the unlikely event that a third party requests cancellation of non-use, we will maintain rights by submitting proof of use. Additionally, even if you are unable to use the product for a while due to business reasons, if there is documentation showing that you continue to intend to use the product and are planning to expand the market, it may be considered a legitimate reason.

• Rights transfer/license: When transferring trademark rights due to corporate reorganization or brand sale, it is necessary to promptly register transfer of trademark registration name (name change procedure). By submitting the necessary documents to IPO Pakistan and changing the right holder on the register, legal requirements for third-party protection will be established. Similarly, when licensing a trademark to another company, recording the license on the International Register is not effective in Pakistan, so if necessary, consult a specialist to see if it is possible to register the licensee domestically (e.g. through the Registered User system). Proper rights management can reduce the risk of future disputes and rights expiration.

• Monitoring the trends of competitors: In order to protect your own trademark, it is also important to monitor whether your competitors are applying for or using similar trademarks. Check IPO Pakistan Trademark Journal regularly and consider filing an opposition if similar marks are published. Also, collect information on whether there are any misleading brands on the market, and if necessary, promptly take measures such as sending a warning letter or filing an injunction lawsuit. Although Pakistan is not a huge market, counterfeit products and brand takeovers can occur, so it is advisable to work with a local agent to monitor the rights around you.

The above has been a comprehensive explanation of Pakistan's trademark system, from definitions, applications and examinations, registration, right maintenance, infringement countermeasures, international applications, and practical points to note. Although Pakistan has a trademark system influenced by the British legal system, in recent years it has also moved to meet global standards, such as joining the Madrid Protocol and introducing electronic filing. Although the procedures are relatively easy for Japanese companies to understand, some of the detailed operations are unique to each country, so be sure to refer to the latest official information and advice from reliable local experts to formulate an accurate trademark strategy.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

→ Patent Attorney Profile → Contact Us → Consultation Flow