Trademarks in Pakistan 2024

Trademarks in Pakistan 2024

TRADEMARKS 2024

PAKISTAN

Ali Kabir Shah, Hanya Haroon, Talib Ali Shah

Ali & Associates

LEGAL FRAMEWORK

Domestic law

1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing Trademarks is the Trade Marks Ordinance 2001 and Trade Mark Rules 2004, which outlines process and procedures for all aspects related to registration and prosecution as well as enforcement.

International law

2. Which international trademark agreements has your jurisdiction signed?

Pakistan is currently a signatory to several international Treaties on Trademarks, including:

• the Paris Convention for the Protection of Industrial Property 1883;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights in 1994;
• the Convention Establishing the World Intellectual Property Organization;
• the Madrid Agreement 1891 and the Protocol Relating to the Madrid Agreement, concluded in 1989; and
• the Agreement Establishing the World Trade Organization.

Regulators

3. Which government bodies regulate trademark law?

The Intellectual Property Organization established under the Intellectual Property Organization Act 2012.

REGISTRATION AND USE

Ownership of marks

4. Who may apply for registration?

Any legal person or a national of any country may apply for the registration of a trademark.

The term ‘proprietor’ or ‘owner’ of a mark means a person who has been entered in the register at the Trade Marks Registry, and possessing the right to use the mark in any manner they see fit.

A person who is already using the trademark or service mark, or intends to use such marks, may file an application for registration under the Trade Marks Ordinance 2001 as the sole proprietor of the trademark or service mark.

In cases where two or more persons are co-proprietors of a trademark or service mark, the mark would be jointly applied, with each person having an equal, undivided share in the trademark or service mark, unless there is an agreement to the contrary.

Scope of trademark

5. What may and may not be protected and registered as a trademark?

Any mark may be protected and registered as a trademark if it is capable of being represented graphically and has the purpose of distinguishing the goods or services of one undertaking from that of another. A mark includes a device, brand, label, ticket, name (including personal name), slogan, signature, word, letter, numeral or figurative element, or any combination thereof.

Furthermore, collective or certification marks and other non-traditional marks – including color, sound and three-dimensional designs – may also be protected through trademark registration. There is, however, some ambiguity regarding the protection of smells, owing to the problems of graphical representation.

A mark may not be protected and registered if it does not satisfy the definition of a trademark as set out in clause xlvii of section 2 of the Trade Marks Ordinance 2001 (the Ordinance). Moreover, the Ordinance clearly sets out the absolute and relative grounds for refusal of a trademark in sections 14 and 17 respectively.

A mark shall not be registered and protected as a trademark if the mark:

• is devoid of any distinctive character;
• consists exclusively of indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
• consists exclusively of indications that have become customary in the language or in the bona fide and established practices of the trade.

Unregistered trademarks

6. Can trademark rights be established without registration?

Being a common law jurisdiction, Courts recognize rights of a prior user or adopter, irrespective of registration under the tort of passing off. Under the tort of passing off, an action pursuant to such rights could be brought as per provisions of the Trade Marks Ordinance 2001 (the Ordinance). However, a plaintiff bringing a claim for passing off must produce evidence establishing the following three-part test:

• goodwill and reputation attached to the goods and services supplied in association with the trademark;
• a misrepresentation by the defendant to public leading, or likely to lead, the public to believe that the goods and services supplied by the defendant are those of the plaintiff, whether or not that misrepresentation is intentional; and
• the plaintiff is suffering, or there is a likelihood of damage as a consequence of the defendant’s misrepresentation.

Owing to the level of evidence required to substantiate a claim for passing off, it can be an expensive and lengthy process.

As per section 86 of the Ordinance, well-known trademarks enjoy protection without the need for registration. Pakistan, as a signatory to the Paris Convention, extends this protection to owners of well-known trademarks in Paris Convention countries. This includes those domiciled there or with a real and effective industrial or commercial establishment, irrespective of their business presence or goodwill in Pakistan.

Moreover, section 92 of the Ordinance stipulates that protection is granted to a trade name, whether or not it is part of a registered trademark, without the requirement for formal filing or registration under the same Ordinance.

Famous foreign trademarks

7. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous foreign trademarks termed as well-known marks are afforded statutory protection under the law of Pakistan, even where the mark is not registered or used in Pakistan. In determining if a trademark is well known, without requiring registration or actual use in Pakistan, the following factors shall be considered as relevant criteria for establishing the well- known status of the trademark:

• the amount of worldwide recognition of the trademark;
• the degree of inherent or acquired distinctiveness of the trademark;
• the duration of the use or advertising of the trademark in Pakistan or internationally;
• the worldwide commercial value attributed to the trademark;
• the worldwide geographical scope of the use and advertising of the trademark in Pakistan or internationally;
• the worldwide quality and image that the trademark has acquired in Pakistan or internationally; and
• the worldwide exclusivity of use and registration attained by the trademark and the presence or absence of identical or deceptively similar third-party trademarks that have been validly registered or used in relation to identical or similar goods and services.

Protection of well-known marks as per the Paris Convention is codified in section 86 of the Ordinance. The proprietor can seek an injunction to prevent the use in Pakistan of a trademark, or its essential part, if it is identical or deceptively similar to their well-known trademark. This applies to identical or similar goods or services and when such use may cause confusion or dilution of the distinctive quality of the well-known trademark.

The benefits of registration

8. What are the benefits of registration?

The benefits of registrations are given in section 39 of the Trade Marks Ordinance 2001 (the Ordinance). Although the list is not exhaustive, it does stipulate the basic rights conferred on the registrants, which are as follows:

• the proprietor of a registered trademark shall have exclusive rights in the trademark that are infringed by the use of the trademark in Pakistan without consent;
• in addition to the Ordinance, the proprietor may also obtain relief under any other law;
• registration of a trademark is considered prima facie evidence of proprietorship, which could result in instant relief by the courts in the form of an interlocutory injunction against any unauthorized use of the registered mark; and
• registration is further used in many forums to enforce proprietary rights before various government agencies and enforcement forums. In particular, registration has proved vital to attract the jurisdiction of Customs under Statutory Regulatory Order No. 170(1)/2017, the Drug Regulatory Authority and the Competition Commission of Pakistan, among others.

Filing procedure and documentation

9. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

As of 2023, the IPO has introduced online filing system for trademark applications, which can be submitted by the applicant or any representative thereof. Please note that submitting the application for the registration of a trademark in hard copy remains an option. For the ease of users and applicants, the IPO website contains guidelines for navigating the online filing system.

Following is the list of documents that are mandatory when filing for a trademark application (as set out in the Trade Marks Ordinance 2001 and the Trade Marks Rules 2004).

An application as per the prescribed form that sets out the particulars of the applicant, including:

• a formal request for registration of a trademark;
• the full name and address of the applicant;
• a statement of goods or services in relation to which the registration is sought;
• the international classification of goods or services under which the applicant wishes to apply;
• a representation of the trademark; and
• full name, address and contact details of the agent, if the application is made by an agent on behalf of the applicant.

The application shall further state that the trademark is being used by the applicant, or with their consent, in relation to goods or services, or that they have a bona fide intention that it should be used.

If an applicant wants to apply through an advocate or an agent for the registration of a trademark, the applicant must authorize an agent through form TM-48 (Power of Attorney) duly stamped and notarized.

Rule No. 17 of the Trade Marks Rules 2004 stipulates that every application to register a trademark, including any required additional copies, must contain a representation of the mark in the space provided on the application form for that purpose. The Trade Marks Rules 2004 further provide principles regarding additional representation.

To check for identical or similar marks in the Trade Marks Registry, file a search request using form TM-55. Each application covers one trademark search in a single class, requiring two representations of the mark and a search fee of 1,000 Pakistani rupees payable via a pay order or bank draft to the Director General of the Intellectual Property Organization. Additionally, a personal search facility is available on-site for 15 minutes at a fee of 300 Pakistani rupees, allowing access to the database without limitations on classes, maintaining privacy and excluding the results from the official record.

Registration time frame and cost

10. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It takes approximately two years to obtain a trademark registration, barring an opposition. The official cost for filing one application in one class is approximately 3,000 Pakistani rupees. The total cost, including professional fees, of a legal practitioner and expenses can range between 70,000 and 100,000 Pakistani rupees but may increase in the event of office objections.

The estimated time and cost in the registration process may increase due to office action or objections by the Trade Marks Registry. The costs may further increase if the trademark application is opposed by a third party.

Documents, such as power of attorney and trademark representation (namely, product labels or packaging materials), are required. The Trade Marks Registry will also require evidence of bona fide use by the applicant if prior use is claimed.

Under section 25 of the Trade Marks Ordinance 2001, if a person makes a Paris Convention application for a trademark and applies to register the same trademark in Pakistan within six months, they can claim priority. This allows them to establish precedence based on the date of the first Paris Convention application. The registrability is not affected by any use of the mark in Pakistan during the period between the first application in the Convention country and the application for registration in Pakistan. While formal registration occurs after receiving the trademark registration certificate, the right is considered to have accrued since the date of the registration application.

Classification system

11. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Pakistan is a Paris Convention country and, in accordance with section 12 of the Trade Marks Ordinance 2001, both goods and services are included in the prescribed classification of goods and services in accordance with the Nice Classification. There are 45 classes for goods and services, with 1–34 being for goods and 35–45 for services.

Multi-class applications are not available for either searches or registration.

Examination procedure

12. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The proprietor of a trademark must file form TM-1, on which the registrar would assign an application number. The mark is then examined by the Trade Marks Registry to determine whether it falls within the definition or ambit of a trademark and whether there are any conflicting marks on the register.

If the trademark does not fulfil the requirements, the registrar issues an examination report with objections and the proprietor of the trademark is required to file a written reply contesting the objections within one month. The application is then listed for hearing, after which the registrar may either accept or reject the trademark application. If the application is rejected, an appeal may be filed with the High Court of the competent territorial jurisdiction. If the application is accepted, the mark is accepted for advertisement and published in the Trademarks Journal.

Letters of consent are usually accepted by the Trade Marks Registry if the objection pertains to the same third-party mark, as the basis of the objection is negated through obtaining the third party’s consent.

Once the mark is advertised in the Trademarks Journal, persons who can potentially be affected by the registration of the trademark are invited to file oppositions, to which the proprietor of the trademark files a response. The opponent is bound to file evidence to which the proprietor of the trademark responds and is finally heard by the registrar, after which the registrar can decide whether to grant registration or not.

Any decision made by the registrar in opposition proceedings can be appealed to the High Court of the competent territorial jurisdiction.

Use of a trademark and registration

13. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The use of a trademark or service mark may be claimed before registration is granted or issued. Proof of bona fide use may have to be submitted at the request of the registrar. However, the proprietor may also express its intention to use the mark in the future by stating that the mark is proposed to be used.

Pakistan is a signatory to the Paris Convention and priority can be claimed if the application is filed within six months of the application in a Paris Convention country.

If registration is granted without use, the proprietor of the trademark must use the mark within five years of the date of registration to either maintain the registration or to defeat a third-party challenge on grounds of non-use. No bona fide use for a period of five years from the date of registration can attract the claims of ‘trafficking in trademarks’, which can be highly prejudicial to the trademark in question.

Markings

14. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The markings ® and ™ can denote the status of the mark in Pakistan as being registered or applied for, respectively. The markings are means of communicating the status of a mark and assist consumer dependability in the proprietorship of the mark and the product bearing the mark.

Though marking is not a mandatory requirement, its use is beneficial as it reduces the risk of the infringer claiming innocence by not being aware of the status or existence of proprietary rights over the mark and deters any potential infringer by illustrating legally recognized rights over the mark. Moreover, misrepresentation via marking as to the status of a trademark also amounts to an offence under section 102 of the Trade Marks Ordinance 2001 and is punishable by imprisonment for a term that shall not be less than one month but that may extend to six months or a fine, or both.

Appealing a denied application

15. Is there an appeal process if the application is denied?

The decision of the Registrar must be communicated to the applicant in writing. If the applicant intends to appeal the decision, they must submit form TM-15 within one month of the decision, requiring the Registrar to state the grounds of and the materials placed reliance on in reaching the decision.

Pursuant to obtaining the decision or reasons for the order, the aggrieved party shall file an appeal before the High Court of competent territorial jurisdiction within two months. The procedure for filing an appeal in the high court is the same as that in a civil case.

Third-party opposition

16. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published in the Trademark Journal. As per section 28(2) of the Trade Marks Ordinance 2001 (the Ordinance), any person may, on application made to the registrar in the prescribed manner and on payment of the prescribed fee, give notice of opposition to the registrar.

The primary basis of these challenges or oppositions are prescribed in section 29 of the Ordinance. Upon receiving the notice of opposition, the applicant must file a counterstatement within two months, as failing to do so would result in the application being abandoned. If the applicant files a counterstatement, the matter is taken up for evidence and subsequently a hearing takes place. Upon completion of the hearing, the registrar passes the orders for grant or refusal of registration.

Moreover, as per section 80(5) of the Trade Marks Rules 2004, a request for the extension of time for filing the opposition after the time has expired can be made to the registrar, who at their discretion can extend the period of time if they are satisfied with the explanation for delay and are satisfied that the extension would not disadvantage any other person or party affected by it.

Another interesting trend is for a third-party proprietor who believes that the proposed application is identical or very similar to his or her mark to write to the applicant stating the basis of the proprietor’s claims and calling for an amicable settlement. However, the applicant is not obliged to do so. This is termed a pre-opposition letter and we have seen many cases resolved at this stage with no need to proceed with a formal opposition.

In accordance with section 73(4) of the Trade Marks Rules 2004, an application for revocation or cancellation may be made by an interested party, including a brand owner, who does not have protection, provided that it is a bad-faith application, either before the high court or the registrar. The official cost for filing a notice of opposition for one application is 9,000 Pakistani rupees. The total cost, including the professional fees of the legal practitioner and expenses, can range between 250,000 and 350,000 Pakistani rupees.

Duration and maintenance of registration

17. How long does a registration remain in effect and what is required tomaintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark shall be registered for a period of 10 years from the date of registration and may be renewed under section 35 of the Trade Marks Ordinance 2001 for a further period of 10 years at the request of the proprietor, subject to payment of such a renewal fee as may be prescribed. To maintain registration, the proprietor must show bona fide use of the trademark in Pakistan and pay the prescribed fee for its renewal. Bona fide use can be evidenced in the form of invoices, packaging, and advertising and promotional material.

Surrender

18. What is the procedure for surrendering a trademark registration?

Surrendering a registered trademark by the proprietor is provided under section 38 of the Trade Marks Ordinance 2001 and this may be done for some or all of the goods or services for which it is registered. The Trade Marks Rules 2004 further provides the procedure whereby a notice is to be sent by the proprietor to the registrar either in the manner as set out in form TM-35 (given in the Trade Marks Rules 2004) or in the manner as set out in form TM-36. After this notice, the registrar shall, upon the surrender taking effect, make the appropriate entry in the register and publish the same.

Related IP rights

19. Can trademarks be protected under other IP rights?

The scope of trademarks as laid out in the Trade Marks Ordinance 2001 is fairly broad, as a result of which there are certain elements, the protection of which may overlap with copyrights and designs. For instance, any element that bears an artistic work such as a logo or a trade dress or packaging may be protected under both trademarks and copyrights. Similarly, three- dimensional marks that exhibit the shape of a product may be protected under trademarks as well as designs.

Trademarks online and domain names

20. What regime governs the protection of trademarks online and domain names?

The Trade Marks Ordinance 2001 governs all instances of infringement and does not distinguish between online and physical infringement. Domain names are defined under section 84 of the Ordinance as ‘a mark that is a user-friendly substitute for an internet address’. Moreover, as per section 40(6) of the Ordinance, a person shall infringe a registered trademark if the person uses this registered trademark as part of their domain name or obtains this domain name without the consent of the proprietor with the intention of selling the same to another party, including the proprietor. As such, the online use of a deceptively similar or identical trademark, trade name or an infringing domain name would be actionable under the Ordinance.

LICENSING AND ASSIGNMENT

Licenses

21. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

A license to a trademark, either exclusive or non-exclusive, may be recorded with the Trade Marks Registry under section 70 (2)(b) of the Trade Marks Ordinance 2001 (the Ordinance), though this is not mandatory. A registered license establishes the rights of a licensee, making it easier for a licensee to protect the trade- mark against misuse. As per section 77 of the Ordinance, a licensee may initiate infringement proceedings that affects his or her interest if the proprietor of the registered trademark refuses to act or fails to act within two months of being called upon to do so by the licensee.

There is no prescribed format for a license agreement and the scope largely depends on the understanding between the parties. However, we recommend including or defining the following clauses:

• the scope of permitted use;
• the derivation of any further rights, such as the right to initiate action for the protection of the trademark;
• the provision of sublicensing or authorizing the use of the mark to third parties;
• an indemnity clause; and
• terms governing dispute resolution, etc.

Assignment

22. What can be assigned?

A registered trademark, as personal or movable property, can be transmitted by assignment. Any mark may be assigned with or without goodwill. The assignment may be for some or all the goods and services. The assignment may also be limited in relation to the use of the trademark in a particular manner or a particular locality. There is no requirement to include other business assets.

Assignment documentation

23. What documents are required for assignment and what form must they take? What procedures apply?

A registered trademark shall be transmissible by assignment in the same way as other personal or movable property. An application to register the title of a person who becomes entitled by assignment to a registered trademark is made by way of forms TM-23 or TM-24 along with the prescribed fee. The registration certificate, along with the company’s incorporation certificate and a board resolution, may have to be produced at the time of application.

Validity of assignment

24. Must the assignment be recorded for purposes of its validity?

The assignment of a trademark must be recorded with the Registrar of trademarks for the purposes of its validity. Upon completion of documentation and being satisfied that no third-party interests are affected, the Registrar issues a certificate of assignment validating the assignment of the trademark in the name of the assignee.

Security interests

25. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

The Financial Institutions (Recovery of Finances) Ordinance 2001 regulates the enforcement of security interests for financial institutions and recognizes tangible as well as intangible property for the purposes of creating a security interest. Intangible property, such as trademarks, patents and other intangible assets, can be subjected to a charge. However, it would be beneficial to record the security interest for purposes of its validity and enforceability.

ENFORCEMENT

Trademark enforcement proceedings

26. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The Trade Marks Ordinance 2001 (the Ordinance) makes provisions for civil and criminal remedies against the infringement of a trademark for relief in a suit for infringement or passing off; a penalty for falsely representing a trademark as registered; falsification of entries in the register of trademarks; and applying a false trade description.

Under the Intellectual Property Act 2012, specialized IP tribunals are formed in each province as well as federal level with exclusive jurisdiction to deal with IP matters. All tribunals are now operational and all IP cases from District courts have been transferred to the tribunals.

Moreover, as per the Ordinance, the proprietor of the registered trademark may give notice in writing to the Collector of Customs to treat the infringing goods, material or articles as prohibited goods. As a result, the Collector of Customs shall seize and destroy such goods from the customs authorities as per the prescribed procedures. Similarly, the Customs Authority has also established a Directorate of IP Rights Enforcement where brand owners can notify customs of potential trademark infringements, verified by the directorate for necessary action. Customs officials are mandated to report suspicions of infringement under the Ordinance or Copyright Act 1962 to the directorate.

Procedural format and timing

27. What is the format of the infringement proceeding?

A suit for infringement is civil in nature and the format is laid down in the Code of Civil Procedure 1908, while a criminal complaint may be filed in accordance with the Criminal Procedure Code 1898.

Civil proceedings

The plaint must be filed in the tribunal that has territorial and legal jurisdiction. The plaint is usually accompanied by applications seeking an urgent hearing and interlocutory relief. After institution of a plaint, the tribunal conducts a preliminary hearing as to the maintainability of the suit.

Should tribunal find triable issues, it would order the summoning of the defendant on a particular date and mention in the order the manner and the mode by which the summons or notices must be served upon the defendant.

The defendant may appear personally or through counsel and is usually granted time (which may extend to one month or more) to file its defense to the proceedings through a written statement and a response to an application for interlocutory injunction. Once the defense has been filed, the tribunal sets a date for the hearing of arguments and a decision on the grant of an interlocutory injunction or orders. Parallel to this, the tribunal conducts proceedings on the main suit so that the main defense is filed by the defendant.

Once the main defense has been filed, but usually after the decision on any interlocutory injunction application, the tribunal sets down a date for framing the issues. After the issues have been framed, the plaintiff is first required to produce its evidence through witnesses, and thereafter the defendant. The evidence must be submitted by both parties. Discovery is allowed and testimony, as a rule, is live. Expert witnesses are also allowed but their evidence is limited to matters of their expertise. Upon completion of the examination and cross-examination of witnesses, the case progresses for final arguments and judgment.

The time frame for an injunction in a civil suit is approximately six to 10 months with the disposal taking approximately three to six years.

Criminal proceedings

The criminal enforcement mechanism is governed by the Criminal Procedure Code 1860 whereby a complainant may either file a private complaint before the tribunal or a formal complaint with the Intellectual Property Organization (IPO).

The private complaint before the tribunal is examined and, on being satisfied over its admissibility, the Presiding officer may issue notices to the accused infringer to appear in person or bailable warrants.

A complaint with the IPO encapsulates a verification of the rights of the Complainant after which it is transferred to the relevant agency for further action whereby the LEA would conclude a preliminary report and remand the infringer into custody, producing him or her before the tribunal. The LEA would thereafter prepare a final report and file it before the tribunal, whereupon trial will commence.

The time estimate for a criminal case cannot be speculated on, as that depends on various procedural compliances.

Burden of proof

28. What is the burden of proof to establish infringement or dilution?

The certificate of registration is the most substantial proof of title in an action for infringement of trademark or dilution of reputation, and the proprietor can rely on the said certificate to establish their case. However, it is also necessary to show that the unauthorized use of the mark by the defendant constitutes an infringement as per section 40 of the Trade Marks Ordinance 2001.

With regard to passing-off proceedings, the burden of proof is upon the claimant to show that there is an equitable interest or right, this interest is being violated and the violation is causing confusion or deception, or both, among consumers.

Standing

29. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A proprietor of the registered trademark, a licensee or registered user and a proprietor of an unregistered trademark may seek remedy for an alleged trademark violation by way of an infringement or passing- off action.

A licensee may not be able to sue for an action for trademark violation unless the licensor refuses to do so or does not do so within two months of being notified of the infringement as laid down in section 75 of the Trade Marks Ordinance 2001, or unless the license specifically grants a licensee the right to initiate infringement proceedings.

The proprietor of the registered trademark and registered user under the registered user agreement may bring a criminal complaint, but the proprietor of an unregistered trademark may only bring an action in passing off, which is a common-law remedy.

Border enforcement and foreign activities

30. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Activities that take place outside the country of registration can support a charge of infringement or dilution only if it can be established that the infringing activity or cause of action is arising in Pakistan, or both. If no such evidence can be produced, the proprietor of a trademark may bring the action in the country where infringement is taking place provided that the country is a signatory to the Agreement on Trade- Related Aspects of Intellectual Property Rights and the Paris Convention.

Pakistan has also implemented border enforcement mechanisms allowing the proprietor of the trademark to file a complaint against the clearance of counterfeit or infringed goods in accordance with the addition to the Customs Rules 2001 Statutory Regulatory Order (SRO) No. 170(1)/2017, dated 16 March 2017, empowers customs officers in Pakistan to act against the import and export of counterfeit goods by seizing or confiscating the goods.

The Drugs Act 1976 defines ‘counterfeit drug’ as ‘a drug, the label or outer packaging of which is an imitation of, or resembles or so nearly resembles as to be calculated to deceive the label or outer packaging of a drug of another manufacture’. The said Act empowers Drug Regulatory Authority of Pakistan to penalize the import, marketing and sale of a product bearing a deceptively similar trade dress or packaging (an extension to the protection of trademarks or trade dress).

Discovery

31. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Pakistan’s law on discovery envisages two kinds of discovery: discovery as to facts and discovery as to documents. The law concerning discoveries as to facts permits the plaintiff or the defendant to deliver, with the leave of the tribunal, its interrogatories in writing to the other side and must also specify which interrogatories must be answered by which person. The parties may also seek documents for inspection from the other party that are or have been in the possession of the other party. It is in the tribunal’s discretion to grant such a request for the production of a document based upon the relevance of the document to the subject of the case.

The scope of interrogatories is limited to the extent that these must relate to a real matter at issue between the parties and must be answered through an affidavit. The tribunal has the authority to direct a party under interrogation to answer in more detail if these have either been insufficiently answered or where the answer has been omitted.

The law requires only those documents can be directed to be produced which have either have been referred to in the pleadings of the party or have been relied upon by such a party. In certain cases, the tribunal may, in its discretion, direct that a duly verified copy of the document be produced for inspection instead of the original record.

Upon the failure of any party to answer interrogatories in the manner directed by the tribunal, or to produce the document, the tribunal may, in the event of non-compliance with its directions, dismiss its suit if the defaulting party is the plaintiff; otherwise, if the defaulting party is a defendant, its right to defend the suit may be closed.

Moreover, the party defaulting to comply with the direction of the tribunal to produce the document shall not be entitled either to rely on such a document in future or otherwise cannot derive any benefit from such a document in the proceedings of the suit.

Timing

32. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

There is no fixed time frame for an infringement, dilution or related actions for cases being dealt at the trial court level, as much depends on the individual case. A preliminary injunction takes approximately two to six months, whereas the finality of the lawsuit is attained within two to three years. The time frame for an appeal against an order against the preliminary or permanent injunction is 30 days whereas the disposal may take up to two- to three-year period.

Limitation period

33. What is the limitation period for filing an infringement action?

As per section 81 of the Trade Marks Ordinance 2001, where the owner of an earlier trademark or other earlier rights has acquiesced for a continuous period of five years from the date of registration in the use of a registered trademark in Pakistan, any entitlement on the basis of that earlier trademark or other rights ceases.

Litigation costs

34. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs for infringement or dilution actions, including trial and appeal, vary from 2.5 to 3 million Pakistani rupees or more. Recovering costs is provided under the law, but Pakistani courts are generally hesitant and, when granted, the amounts are limited to a small fraction of the total expenses.

Appeals

35. What avenues of appeal are available?

As per the Intellectual Property Act 2012 (IPO Act), a suit for infringement of a trademark shall be instituted in the tribunal exercising jurisdiction. Any judgment, decree or order passed by the tribunal is appealable before the High Court exercising jurisdiction over the tribunal.

Any judgment, decree or order passed by the High court can be appealed before the Supreme Court of Pakistan, provided special leave to appeal is granted by the Supreme Court. Any decision on such an appeal by the Supreme Court shall be appealed once before the larger bench of the Court after which it shall be final.

Historically, an important exception to the above was the unique jurisdiction of the Sindh High Court, which, owing to the status of Karachi as country’s commercial hub, provided that civil suits valued at over 65 million Pakistani rupees could be filed directly before the single bench of the Honorable Court. However, recently, the Honorable High Court has ruled that for IP infringement matters, the IP tribunals pursuant to the IPO Act have the exclusive jurisdiction and that these suits shall be filed before the said tribunal. That said, this decision is currently pending adjudication in an appeal before the Divisional Bench of the High Court.

Defenses

36. What defenses are available to a charge of infringement or dilution, or any related action?

The Trade Marks Ordinance 2001 (the Ordinance) provides several defenses for the defendant against a charge of infringement or dilution, which are as under:

• claim prior use or honest concurrent use;
• claim that the use of the mark is not infringing as per section 40 of the Ordinance;
• challenge the entitlement of plaintiff on account of estoppels, acquiescence or abandonment of the disputed mark; or
• claim that the challenged mark includes essential personal, business names or descriptive words necessary for describing their goods or services.

Remedies

37. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

In an action for infringement or dilution, a successful party may seek preliminary or permanent injunction, damages and account for profit. Damages may be apportioned based on the actual loss, loss of business opportunity, future profits and loss of reputation. Injunctive relief is available, preliminary or permanently, upon the fulfillment of three conditions:

• the existence of a prima facie case in favor of the applicant;
• irreparable loss, damages or injuries that may occur to the applicant if injunction is not granted; and
• that the balance of convenience should be in favor of the applicant.

Moreover, under the Pakistan Penal Code 1860 Section 482, any person who uses a false trademark shall either be imprisoned for a term not exceeding one year or shall be fined, or both.

ADR

38. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR methods, including mediation and arbitration, exist in Pakistan. While not widely employed, they offer a cost-effective and relatively swift alternative to litigation. Settlement decisions through arbitration are binding. However, enforcement may be challenging if one party rejects the arbitrator’s decision. In these cases, approaching the court for enforcement can be a lengthy process.

There is no compulsion on the parties to enter mediation for IP cases. However, if a pre-existing agreement between the parties stipulates that a dispute may be resolved through arbitration, then the courts are expected to be bound by this and refer the matter to arbitration.

UPDATE AND TRENDS IN TRADEMARKS IN PAKISTAN

Key developments of the past year

39. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Two issues regarding trademark laws are most pertinent at the moment as follows.

• The Promulgation of the Trade Marks Amendment Act 2023, the most notable issue in which is relating to cancellation of Trademarks, the jurisdiction of which is given to the Registrar of Trademark or the High Court, thus ousting jurisdiction of the Intellectual Property Tribunal; and
• The filing of Trademarks under the Madrid system.

* The information in this chapter was accurate as at January 2024.

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“The article’s content refers to the regulations that were applicable at the time of its creation and is intended solely for reference purposes. To obtain accurate information, it is advisable to seek the guidance of a consulting lawyer.”

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