Overview:

We know, humans are prone to carelessness. They do business but don’t take steps to protect it as a result they lose their business name. If one knows his right but does not know how to get it. Even some people recognize their rights but do not try to get them. After all, why don’t people fulfill the legal requirements and live according to the law? Obedience to the law is beneficial to human beings. Here we are talking about TM Registration and how to get it accordingly to law.

What is a Trademark?

According to the Trade Marks Ordinance 2001, “a word, phrase, sign or design”. Used or intended to be used to identify and differentiate to indicate the origin of goods and services. Trademarks are used for goods such as food, beverages, toys, cosmetics, medicine, clothing, and automobiles, even service marks are used for services such as banking, insurance, education and education, child care, social services, etc.

• Enforcement of trademark law:

The first trademark law in Pakistan was passed in 1940 and was known as the 1940 Trademark Law. Thereafter, the Pakistani government decided to amend and consolidate the Law on Trademarks and Unfair Competition in order to meet its international obligations to register, better protect trademarks, and prevent infringement. Therefore, the Pakistani President passed the 2001 Trademark Ordinance. Trademark law in Pakistan is currently governed by the 2001 Trademark Ordinance and the 2004 Trademark Rules.

• Protected Geographical Indication:

trademark law of Pakistan also protects geographical indications. Geographical indications are details that identify a product as originating from a region or a place, with a certain reputation for quality or another characteristic of the product being essentially due to its geographical origin. Most often, a geographical indication consists of the name of the place of origin of the goods. Agricultural products often have properties that result from their place of production and are influenced by certain local factors such as climate and soil.

• Intellectual Property Organization:

The Trademark Registry, administered by the Pakistan Intellectual Property Organization, is the authority responsible for registering trademarks in Pakistan. The registration of a trademark in Pakistan grants the right holder exclusive ownership of the protection of their trademark in Pakistan. However, since the Pakistani legal system is a general legal system, even an unregistered trademark is entitled to protection, and the owner of an unregistered trademark can file a claim against third parties under the “disclosure law”.

• What are the benefits of TM Registration?

A trademark registration gives you the exclusive right to use your trademark and helps prevent competitors from using trademarks that are identical or very similar to your mark.

The mere use of a name, logo or slogan in your business gives it a certain level of trademark protection, although these “common law” trademarks are difficult to enforce and only apply in your immediate vicinity. You can obtain statewide trademark protection by registering your trademark in your state. But the strongest and most far-reaching trademark protection comes when you register your mark with the USPTO.

What sign can be called a trademark?

1. Product names and nicknames (for example, Pepsi, Dove, and Panadol are marked)
2. Logos (It means a symbol or design comprised of words, images, and colors such as Apple, BMW, Toyota, etc.
3. Business names (Such as Pvt. Ltd., Limited liability, etc.
4. Slogans (such as Nike’s “Just Do It” and Apple’s “Think Different” etc.

14 Reasons Trademarks are not registered:

1. The trademark is not capable of being represented graphically and are unable to distinguish goods or services of one undertaking from those of other undertakings;

• A trademark cannot be registered if it consists entirely of trademarks or indications of the type, quality, quantity, intended use, value, geographical origin, time of manufacture of goods or services, or other goods or services and other characteristics of goods or services;

• A trademark is not subject to registration if it consists only of designations or indications that have become generally accepted in the language or in the established practice of trade.

• The trademark cannot be registered if it consists solely of a form arising from the nature of the product itself, a form of the product necessary to achieve a technical result, or a form that gives the product significant value.

• A trademark may not be registered if it contains any scandal, design or material that would be prohibited from being used in defense of the high courts or district courts as it may be misleading or confusing, and may offend or offend the religious feelings of the class. citizens of Pakistan violate the law or morals;

• if the application for registration is filed in bad faith a trademark can not be registered;

• A trademark cannot be registered if it is the common and accepted name of a single chemical element or compound in relation to a chemical substance or preparation, or which is declared by the World Health Organization and reported in the prescribed manner by the registrar as an international, unprotected name or a name deceptively similar to this name;

• Trademarks cannot be registered if they have generic terms;

• Trademarks cannot be registered if they consist of or contain the coats of arms or other national emblems of treaty countries;

• Trademarks cannot be registered if they contain such emblems, abbreviations, or names of international organizations;

• Any mark that is already in use, or is too similar to a mark already in use;

• Generic descriptive words;

• Commonly used phrases or messages;

• Direct religious quotes and passages;

What is essential for registering a trademark:

• To obtain trademark protection, a trademark must be unique and not be confused with existing trademarks. When considering a trademark, pay attention to what it offers, why it is different, and what makes it stand out. In order to avoid general descriptions of products and services. The more specific your trademark proposal is, the more likely your application will be approved.

• Trademarks are very specific your mark will only apply to the type or “class” of goods or services for which you are seeking protection. Other companies may still use your mark for other types of goods or services. For example, “Delta” is the brand name of the airline as well as the name of a faucet also.

How to obtain trademark registration:

Step No. 1: Create a brand identity:

Once you have selected a potential trademark, you should do your research and decide how to protect your trademark. The method is as follows.

Trademark Search:

• It is recommended to use a trademark search in the Pakistan Trademark Registry to determine if a potentially conflicting trademark application is pending or has been filed.

• Based on the results of the registration search and the common law search, and after consulting with a local lawyer, decide if your trademark is available for use. If the trademark is available for use, apply for registration immediately.

• The trademark attorney investigates whether the trademark is eligible for registration and also conducts an authorization search to determine if a deceptively similar trademark exists in the trademark registry. It is wise to do a common law search to see if anyone else can use the trademark.

• It is also recommended that you should also consider hiring a trademark magazine monitoring service to alert you to published, deceptively similar trademarks that may affect.

• If you are the owner of a trademark that has been used and has gained a reputation and reputation, it is also recommended to apply for trademark registration in Pakistan. You can also promote press releases, and publish warnings and trademarks to ensure relevance. In addition, the public knows that you are entering the Pakistani market and protecting your brand from any infringement of third party intellectual property rights.

Step No. 2: Submit an Application:

• First of all, it is necessary to appoint an attorney or law firm specializing in IPR.

• According to trademark law in Pakistan, you may apply a trademark application proposed to be used or intended to use. If a trademark application file is being used Registrar may ask to file an affidavit from the applicant, which will be verified by the Notary Public.

• Trademark law in Pakistan only allows the owner to apply for trademark registration if they have a place of business in Pakistan. If this is not the case, the copyright holder must apply through a trademark agent/lawyer. A trademark agent/attorney can conduct trademark searches and prepare, file, and initiate legal cases.

• A trademark attorney may complete and sign the registration form provided that the trademark holder has issued a signed power of attorney to appoint him or her trademark attorney.

• Details to be included in a trademark application include the full name and address of the applicant, a declaration of the goods or services for which trademark registration is sought, the international classification of the goods or services, an image of the trademark, and the full name, address, and contact details of the representative in case of a request.

• Natural registration usually takes 1.5 to 2 years if the trademark application is filed directly in Pakistan. Unless the trademark is rejected by a third party. The Trademark Registry is the preferred place to apply for trademark registration in Pakistan. Trademark applications can be filed at our offices in Karachi or at the Trademark Registry Offices in Lahore and Islamabad.

Step No. 3: After Submit an Application:

• After the application is filed, the Trademark Registrar reviews it to ensure that it is complete in all respects and then assigns the application an application number. Once a trademark is registered, the application number becomes the registration number.
• During the examination process, the Trademark Examiner will determine which trademark registrations are excluded on absolute grounds of refusal and/or relative grounds (formerly trademark rights) in accordance with the Trademarks Rules, 2001.
• Then, based on the response to the examination report submitted by the applicant, the trademark examiner will either reject the application, accept it for advertising, accept it with certain restrictions, or “For exhibitions”, which require submission of an application under the restrictions of, can be accepted, denied or allowed.

Step No. 4: Approval for Registration:

• A Notice of Publication in a trademark application is a good thing. It means that your trademark application has received preliminary approval from the Trade Marks Registry of Pakistan.

• After the advertisement of the trademark in the Trade Marks Journal Registry wait three months to invite opposition by a third party to oppose the trademark for registration. The trademark does not oppose by a third party. Thereafter a Demand Note is issued to the Applicant requesting him to pay the requisite registration fee. After the paid prescribed fee is in the prescribed manner registration certificate is issued.

Infringement of Trademark:

If you find that your trademark is being infringed, you should immediately take steps to protect it, either by filing an objection to the registration, filing cancellations, investigating, sending cease and desist acts, or may approach appropriate civil and criminal action.

Though Pakistan has passed laws protecting the Intellectual Property Rights (IPR) of rights holders, its enforcement and implementation of these laws remain a matter of grave concern for rights holders. It is therefore imperative that businesses develop a comprehensive strategy for protecting their IPR and take steps to safeguard their rights before they enter the Pakistani market.

Trademark registration is an important step that companies in Pakistan must take. Many foreign and domestic rights holders have successfully registered their trademarks in Pakistan.