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Q. What is the law that regulates trademarks in Pakistan?
A. In Pakistan, registration and protection of trademarks is regulated under the Trademarks Ordinance, 2001 and it extends to whole of Pakistan.
Q. What is Trademark?
A. A Trademark is a mark used for the purposes of differentiating goods or services of one business from the goods or services of others. Any unique words, letters, numerals, drawings, pictures, shapes, colours, logo types, labels or combinations used to distinguish goods or services may be considered as trademark.
Q. What is the difference between trade name and trade mark?
A. Trade name is the full name of your business, such as: “Syed Bhais (Pvt.) Limited” and it identifies your company or firm. A trademark, however, is the sign that distinguishes the product of your company. A company may have various trademarks. For instance Syed Bhais Private Limited sells its products under the trademark “Syed Bhais” and logo “SB”.
Q. My company’s name is Syed Bhais (Pvt.) Limited incorporated with Securities & Exchange Commission of Pakistan, is the company’s name will automatically be protected as a trademark?
A. No, by registering your business and its trade name with the Securities & Exchange Commission of Pakistan your company’s name will not be protected as a trademark. A trade name is the full name of your business i.e. “Syed Bhais Private Limited” and it identifies your company. A trademark is the sign that distinguishes the product of your company.
Q. What is meant by Coined word?
A. Coined words are invented words, the words which do not have any meaning and have advantage of protection easily. As in the name of “Syed Bhais” which is a renowned brand name, coined word is “Bhais” which is an invented word and do not have any meaning.
Q. Who is authorized to apply for trademark registration?
A. Any person who intends to use a trademark can apply for registration. It can be individual, firm, company or organization.
Q. Is it compulsory to register a company’s trademark?
A. It is not mandatory but highly advisable.
Q. What is a trademark/brand name search? Is it necessary to conduct search before applying for registration?
A. It is not necessary but advisable, to make sure that the trademark you intend to use or a similar one is not already registered by anyone.
Q. For how long registered trademark is protected or what is the duration of registration?
A. From filing of the date trademark is registered for ten years, which can be renewed after every ten years.
Q. What are service marks?
A. Service mark is a name given to trademarks registered to distinguish the services of an enterprise from those of others. According to Trademarks Ordinance 2001, service means, service of any description which is made available to users or potential user and includes the provision for services in connection with business of any industrial or commercial nature, and without limitation, includes banking. Retailing communication including telecommunication, education, law, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of goods including electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
Q. What are collective marks?
A. According to section 82(1) of the Trademark Ordinance, 2001 a collective mark shall be a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
Q. What are certification marks?
A. According to Trademark Ordinance, 2001, a certification mark shall be a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
Q. Are advertising slogans can be registered as trademark?
A. Yes, advertising slogans can be registered as trademark.
Q. Can I license my trademark to other enterprises?
A. Yes, trademarks can be licensed. In such case you will retain ownership and agrees to the use of the trademark by one or more enterprises.
Q. Can I sell trademark of my company to another company?
A. Yes, trademark can be sold independently from the business; a registered trademark is a personal property.
Q. If an individual or business enterprise portrays their trademark is registered while in reality it is not, is this an offense?
A. Yes, this is an offense.
Q. What is the penalty for applying false trade description?
A. He will be punished with imprisonment of either description for a term which shall not be less than three months but which may extend to two years, or with fine which shall not be less than fifty thousand rupees, or with both and on subsequent conviction penalty will be enhanced.
Q. For my business should I start using the mark after filing or must I wait for registration to use the trademark?
A. You can start using a mark irrespective of filing or registration.
Q. For many years I am using a mark for my business, still trademark registration is necessary?
A. In case of dispute prior use is generally sufficient for claiming rights over a given trademark, however, trademark registration will provide legal certainty on exclusive rights to the use of a trademark. It is highly advisable to register a trademark.
Q. What is trademark infringement?
A. A person shall infringe a registered a registered trademark if such person uses in the course of trade a mark which is identical with the trademark in relation to goods or services which are identical with those for which it is registered.
Q. When a trademark is not infringed?
A. A person shall not infringe a registered trademark when used in good faith. Where registration of a trademark is subject to disclaimer, a person shall not infringe the trademark by using disclaimed part of the trademark.
Q. What action is available in case of infringement of trademark?
A. Civil and criminal remedies are available in case of infringement of trademark rights. Infringement of a registered trademark shall be actionable by the proprietor of the trade mark by way of damages, injunctions, accounts or otherwise shall be available to the proprietor of the trademark as is available in respect of the infringement of any property right.
Q. In case of importation of infringing goods, material or articles what remedies are available?
A. Infringing goods, material or articles may be treated as prohibited, the proprietor of the registered trade mark may give notice in writing to the collector of Customs that he is the proprietor of the registered trade mark, that infringing goods, material, article, bear false indications as to their source or the identity of their manufacture are expected to arrive in Pakistan from outside Pakistan and that they are subject to the control of the customs authorities under the Customs Act, 1969 (IV of 1969): and he request s the Collector of Customs to treat such goods as prohibited.
Q. I am using trademark since long but not registered are there any rights for unregistered mark?
A. If your mark is not registered you cannot file an action for infringement. An unregistered mark will have only a right of passing off. To exercise the right of passing off you have to establish with evidence that your mark is being used and which has a reputation and goodwill.
Q. I am not using trademark can it be cancelled on non-use?
A. Yes, it can be cancelled on non-use.
Q. Whether foreign proprietors, business establishments can apply for registration of their trademark in Pakistan?
A. Yes, they can apply for registration in Pakistan.
Q. To which International Trademark Treaties, Pakistan is a signatory?
A. Pakistan is signatory to Paris Convention for the Protection of Industrial Property and Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).