Pakistan - Enforcement of trademarks ordinance 2001 as of April 12, 2004

The Trademarks Ordinance 2001 came into force as of 12 April 2004  in order to comply with the TRIPS agreement.

The main aspects of the new ordinance are:

Service Marks

Service marks in classes 35 to 42 are now registrable.

Definition of “MARK”

The definition of “mark” has been expanded to include figurative elements, color, sound or any combination thereof.

Priority

Priority can now be claimed within six months from the filing date based on any earlier application filed in a country that is a party to the Paris Convention.

Well-Known Trademarks

A well-known trade mark is now protected even if it is not registered nor in actual use in Pakistan. However, the protection shall only be available to a mark that is well-known in Pakistan if it is a mark of a person who is either a National of, or domiciled in, a Convention Country, but irrespective of the fact whether or not that person carries on business or has goodwill in Pakistan.

Domain Names

The provisions of the new law have been made applicable to Domain names, if a Domain name is used as a Source Identifier, meaning that the Domain name is used on the Internet to distinguish goods or services of one undertaking from others, and that the Domain name is not a mere directional reference similar to the use of a telephone number or business address.

Divisional Application

Under the new law, a divisional application is also permissible for the registration of a part of the trade mark in respect of any or all goods, services or both, but should be by a person who has already made an application for registration of a trade mark and the said application is still pending.

Protection

A Collector of Customs has been given more powers to seize goods bearing infringing trade marks.  The other remedies of filing a suit in a court of law for recovery of damages, and an order for injunction, are also available to the proprietor of a trade mark or its assignee or licensee.

Collective Marks

Registration of Collective Marks has also been made permissible allowing members of an Association to distinguish goods or services of one undertaking from those of other undertakings.

Pending Matters

The applications which have been filed for registration under the old law of 1940 will be treated as having been filed under the new law, and the trade marks already registered shall be transferred to the Register to be maintained under the new law.

Duration & Renewal

The trade mark shall be registered for a period of ten years and may be renewed on payment of the prescribed fee for unlimited terms of ten years each.

Official Fees

There is no change in official fees.