Intellectual Property Trademark Registration and Enforcement

 

Intellectual property, in simple or layman terms, can be defined as the original product of your brain and creativity. It does not fall within the ambit of moveable or immoveable property and hence, intellectual property laws were introduced for the promotion and protection of one’s intellectual work. Intellectual Property laws are dedicated to from securing the intellectual property of individuals, companies, firms, etc. from being exploited. A trade mark sign shows others that your intellectual property cannot be copied, used, or reproduced and if done so, then a legal action shall be taken against that person.

 

 

What is a trademark?

A trademark can be defined as a mark that distinguishes your services, products, or goods from other brands etc. A trademark is denoted by a TM.

 

 

What law regulates, protects, and governs trademarks in Pakistan?

The following laws regulate, protect, and govern trademarks in Pakistan:

  • Trademark Ordinance, 2001

  • Pakistan Penal Code, 1860/ Taazirat e Pakistan

  • Customs Act, 1969

 

 

How does trademark registration protect my intellectual property?

A registered trademark will provide you with exclusive rights to use, sell, or license that trademark to any other person or legal entity. Moreover, it also gives you the right to exclude anyone from using it.

 

 

What can be protected under a trademark?

The following can be protected by a trademark, either individually or a combination of either of the following:

  • Sign or Symbol

  • Name

  • Word

  • Signature

  • Number

  • Brand

  • Label

  • Figurative Element

  • Heading

  • Device

  • Packaging Style

  • Color Combination

  • Famous Saying or Tagline

  • Sound

  • Shape

  • Ticket

 

 

How is a trademark registered?

First of all, a pre-filing search will take place. During this search, all the relevant documents are to be collected, completed, and organized. Then an application of registering a trademark will be filed. If no objections are raised then, you will receive the acceptance for advertisement. However, if any objections are raised by the trademark examiner, then you will have to work towards removing those objections before you receive the acceptance for advertisement. Next, your trademark shall be published in the Trademark Journal and opposition from any third party shall be invited. If the opposition wins then your registration application will be refused, however, if the opposition fails in its claim then the registration shall be allowed for a period of 10 years which can be renewed.

 

 

Infringement of a trademark?

A trademark is infringed when any other person uses the intellectual property protected under the trademark without any authorization or creates something deceptively identical and releases it in the market.

 

What does not count as trademark infringement?

Infringement of a trademark does not occur in the following cases:

  • When the name of person or name of business does not cause confusion with an existing trademark;

  • When the person or business using it, is the legal predecessor of the proprietor;

  • The mark has been used for comparative advertising;

  • The mark has been used in good faith.

 

 

How will a trademark lawyer help me?

A trademark lawyer will be qualified and much more experienced as compared to you while getting a trademark registered. The lawyer will assist you in a way that it not only saves your time but, your money as well, in the longer run. The lawyer will know all the ins and out, and shall be well versed with the documents required to make the process easier and successful for you. Moreover, a trademark lawyer shall assist you in the following trademark related matters as well:

  • Correctly filing the trademark registration application

  • Getting the trademark renewed

  • Representing you in the competent court of law in case of trademark infringement

  • Providing legal advice on matters such as, passing off, trade dress, trade names, rights of use of unregistered trademark, unfair competition etc.

  • Licensing trademark related rights along with its registration

  • Representing you in opposition proceedings

 

Who can take action against trademark infringement?

As per section 46 of the Trademark Ordinance, 2001 states that only the proprietor of that trademark can take action in case of infringement.

 

 

What remedies can I avail for trademark infringement?

You can avail the following remedies in case of your trademark’s infringement:

  • Accounts

  • Claim damages for infringing the trademark, and making profit from it

  • Seek an injunction under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908

  • Any other remedy deemed fit by the competent court of law

 

 

Which court deals with trademark and cases related to intellectual property?

District Court shall adjudicate upon such matters as per section 117 of the Trademark Ordinance, 2001. However, the jurisdiction shall be decided as per the provisions of the Code of Civil Procedure, 1908. There are different types of jurisdiction, such as, pecuniary jurisdiction, territorial jurisdiction, original jurisdiction, appellate jurisdiction, concurrent jurisdiction etc. However, for this matter the suit can be filed where the trademark exists or where the it was infringed, or where the plaintiff resides, or where the plaintiff’s place of business is located.

 

 

What are the punishments for using a false trademark?

As per section 482 of the Pakistan Penal Code, 1860 any person who uses a false trademark shall either be imprisoned for a term not exceeding 1 year, or shall be fined, or both.

 

 

What are the punishments for counterfeiting a trademark?

As per section 483 of the Pakistan Penal Code, 1860 the punishment for counterfeiting a trademark shall be punished with imprisonment not exceeding 2 years, or fine, or both.

What are the punishments for counterfeiting a trademark of a public servant?

Any person who counterfeits a trademark used by a public servant shall be imprisoned for a period not exceeding three years plus fine under section 483 of the Pakistan Penal Code, 1860.

Caution: 

Information contained in the above FAQs is for general understanding purposes only and may have altered or have become incorrect owing to variation in factual aspects and evolving laws, therefore, should not be treated as an alternate to professional legal advice.