The Applicant
As a first step, you have to send or hand in a duly completed trademark application (2 in original & 6 photocopies) on prescribed form TM-1, which includes the contact details of your company, a graphic illustration of its mark, a description of the goods or services and class for which your business wishes to obtain trademark registration, and pay the required fees in form of bank draft or pay order in favour of DG, IPO Pakistan. The applicant may request for search of the trademark that he/she intends to register by submitting TM-55 form to the Trade Marks Registry, along with fee. Note that some trademark offices (e.g. US and Canada) may also require proof of use or a declaration that your company intends to use the trademark. In Pakistan no such declaration is required at the time of filing and a trademark can be filed on the basis of its proposed use in future. However, such trademark is required to be used within five years from the date of registration.
The Trademark Registry: The steps taken by the Trademark Registry for registration of a trade mark in Pakistan are as described below:
Formal examination: At the time of filing application and before issuance of any application number the trademark office examines the application to make sure that it complies with the administrative requirements or formalities (i.e., whether the application fee has been paid and the application form is properly filled in).
Application number: The application number is given at the time of filing of application; however, official receipt is usually given within three to four weeks after filing.
Substantive examination: The trademark office examines the application to verify whether it complies with all the substantive requirements (e.g., whether it belongs to a category which is excluded from registration by the trademark law and whether the trademark is in conflict with an existing mark on the register in the relevant class). If there are some objections then an examination report (commonly known as “Show Cause Notice”) is sent to the applicant.
Reply: The applicant files reply to the objections raised in the examination report.
Hearing: In most of the cases, the applicant files a response to the examination report and a hearing is appointed and the Registrar hears the arguments of the applicant or his agent in support of the stance taken in the reply.
Publication and opposition: After hearing if the Registrar is convinced then trademark is accepted for publication in official Trade Marks Journal with a two month’s period of time (further extensions, not exceeding two months, may be obtained) for third parties to oppose its registration.
Registration: If there is no opposition or once it has been decided that there are no grounds for refusal, the trademark is registered, and a registration certificate is issued which is valid for 10 years.
Renewal: the mark may be renewed after every ten years, for indefinite term, on payment of required renewal fees, but the registration may be canceled entirely for certain goods or services if the trademark has not been used for a continuous period of five years.
Process and expected time duration
Application Filed – 30 days
Official Receipt – 4 to 8 months
Substantive Examination / Examination Report – 2+3 months
Reply to Examination Report/Hearing and Accepted/Rejected – 4 to 8 months
Appeal before High Court if rejected – 2 months
Publication Demand Note Issued Opposition – 30 days
Fee Paid
Registration Certificate Issued
How long does it take to register a trademark?
As the Trade Marks Registry conducts substantive examination, therefore it takes longer to get a trademark registered in Pakistan as compared to some other countries. The registration process used to take three to four years for its completion. However, with ongoing computerization of the Registry, the process has been expedited and now it is completed positively within two years and is likely to get more expedient over time. Application for renewal of trademark can be filed within six months before the date of expiry. After expiry of a trade mark, the same can be renewed within six months after paying late fee.
How can you find out if your chosen trademark might conflict with other registered trademarks? What is a trademark search?
Before submitting an application for registering a trademark, you should ensure that a proper trademark search has been carried out. This is done to make sure that the trademark you intend to use, or a similar one, is not already registered by another company for identical or similar products. You can either make a trademark search yourself or hire the services of a trademark agent. Either of you can do the search through the Trademark Registry. There is a search section in the Registry and an examiner of trademarks is head of this Section. Always bear in mind that a trademark search is only preliminary. It may be difficult to make sure that your trademark of choice is not confusingly similar to existing validly-registered trademarks. This is why the guidance of an experienced trademark agent, who is familiar with the practice of the trademark office and court decisions, may be very helpful. Trademarks are grouped into classes according to the goods or services they serve to identify. However, please bear in mind that in Pakistan currently classes 01 to 42 are available and classes 43 to 45 are not yet available (proposed to be included). Appropriate amendments in the Trademark Ordinance, 2001 are however, being considered by the Government of Pakistan. Once these amendments are made Trade Marks Registry will start entertaining applications falling in classes 43 to 45 as well.
Source:
ASAD LAW ASSOCIATES
Lahore, Pakistan
www.asadlawassociates.org
