AXIS IP KARACHI

Enlist our Help for Trademark Registration in Pakistan

Register your trademark in Pakistan with the assistance of Axis IP, one of the top firms operating in the intellectual property diaspora in the region.

WHAT WE DO

Set Your Mark Up for Success with Trademark Registration in Pakistan

Established in the year 2017, our organization Axis IP has been assisting businesses of different levels to successfully register their trademarks and protect their brand. Over the years, we at Axis IP have diversified our services to cover patent registration, ISO certification, and a lot more. Up till now, our firm’s representation has led to a whopping registration of 700+ trademarks with the Intellectual Property Organization of Pakistan (IPO-Pakistan).

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Why is Trademark Registration Important?

Legal Protection

Legally protect your brand and prevent others from using a similar mark. This is essential for preventing competitors from infringing on your brand’s identity.

Exclusive Rights

Gain exclusive rights to use the trademark for your products or services. This exclusivity allows you to establish a unique brand in the market.

Brand Recognition

Build brand recognition and trust among customers. When customers see your trademark, they will associate it with your products or services.

Marketplace Advantage

Set your brand apart in the market and give your business a significant advantage. Differentiate your offerings and stay competitive in the industry.

Global Expansion

Easily expand your business on an international scale by protecting it and providing recognition in foreign markets with a registered trademark in Pakistan.

Consumer Trust

Convey professionalism and reliability to consumers. Reassure them that your products or services meet certain standards of quality and authenticity.

What is Trademark Registration?

Trademark registration is a legal process that grants exclusive rights and legal protection to a distinctive symbol, word, phrase, or design used to identify and distinguish a company’s products or services from those of others. When it comes to building a brand, trademarks serve as valuable assets for both businesses as well as individuals. AXIS IP is a reputed law firm dealing with trademark registration in Pakistan.

According to the IPO ACT 2012, the following entities can register a trademark:

  • Individual
  • Partnership Firm
  • Company- Limited Liability Partnership,
  • Private and Public Limited Company,
  • Non-Profit Organizations (NGO, Trust, Welfare Society, Foundation, etc.)
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Invest in Your Brand's Future with Trademark Protection

At AXIS IP, we’re skilled in the entire trademark registration process. Schedule a booking and discuss how we can safeguard your brand.

What’s the difference between a trademark and a copyright?

Copyrights and trademarks serve different purposes and have different validity periods in Pakistan. Their main differences are as follows.

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In addition to serving as your brand’s identity, registering your trademark in Pakistan can reap tons of benefits, such as the following.

  1. Trademarks protect distinctive symbols, words, phrases, or designs that are used to identify and distinguish goods and services. Copyright protection is primarily aimed at safeguarding original literary, artistic, and creative works. It covers works of authorship, such as books, music, art, software, and films.

  2. Trademarks protect brand identifiers, including company names, logos, product names, slogans, and other elements used to identify the source of goods or services. Copyrights protect the tangible and fixed expression of ideas. They cover works that are original and fixed in a tangible medium of expression, such as a book, painting, or computer program.

  3. Trademarks provide exclusive rights to use a mark for specific goods or services. The scope of protection is limited to the particular classes of goods or services for which the trademark is registered. Copyright protection grants exclusive rights to reproduce, distribute, perform, display, and create derivative works based on the copyrighted material. This protection typically lasts for the lifetime of the creator plus an additional 50 to 70 years.

  4. Trademark registration is optional but recommended for enhanced legal protection. It is typically done through the Intellectual Property Organization of Pakistan (IPO-Pakistan) or the relevant authority, and registered trademarks are listed in the Trademark Registry. Copyright protection is automatic upon the creation of a work. While registration is not mandatory, it can provide legal advantages, including the ability to bring a lawsuit for copyright infringement.

  5. Trademark protection can last indefinitely as long as the mark is used and renewed at regular intervals (usually every ten years). Copyright protection typically lasts for the creator’s lifetime plus an additional 50 to 70 years, depending on the nature of the work and other factors.

Procedure for Trademark Registration in Pakistan

Check Nice Classification

Before you perform your search request, you need to check the appropriate term and the corresponding class for describing your goods and services for your trademark application. 

The World Intellectual Property Organization (WIPO) has developed an international classification system for trademark registration. This system organizes goods and services into 45 classes—34 for goods and 11 for services, each representing a specific category for products and services. With this classification, clients can ensure consistency and clarity in trademark registrations on a global scale.

Request for Search Facility

Perform a search request with Form-55 to the Registrar of Trademarks to check whether similar logos have already been registered with the Intellectual Property Organization (IPO). This is helpful as the IPO has a list of all the registered logos and marks.

The Form TM-55 should be accompanied by two representations of the mark, each on a sheet of strong paper. You can submit PKR 1,000/- in the form of a pay order or bank draft made to the name of the Director General IPO.

Fill TM-1 Form for Applying

Make an application for registration of a trademark on Form TM-1 to the Registrar of Trademarks. You can submit PKR 3,000/- in the form of a pay order or bank draft made to the name of the Director General IPO.  Along with this form, the documents needed for trademark registration include six representations of the trademark. Specify the class for registration, and if it’s for multiple classes, submit separate applications for each. Complete the form with your full name, description, nationality, and trade/business address. If the trademark is in a series, note the series number. For domain names, indicate if they relate to goods or services. If your mark has specific colors, claim them; otherwise, it can be used in any color. Sign the application with your designation, and if you’re applying through an attorney, include a stamped Form TM48 power of attorney. Foreign applicants should use a duly authorized attorney in Pakistan and provide translations or transliterations if the mark is not in English or Urdu.

Process of Registration

Once you have submitted the application, you will be allotted a trademark number and cash receipt. The acknowledgment receipt will be issued to you within around ten to fifteen days of filing the application, and after three months, an examination report will be generated. In case there is any objection, you might be served with a Show-Cause Notice. Objections tend to arise if your application is filed with an incorrect classification. 

In case of no objection, your application will be published in the Trade Marks Journal so that any person having an objection against your trademark can file within two months from the publication date.

Third-party Opposition

Third-party opposition in trademark registration refers to when the owner of a prior trademark objects to the registration of a similar trademark. The trademark in question can be under the process of registration, and a third party can file a cancellation against its registration.

Issuance of Final Certificate

If no third-party opposition is filed against your trademark, then a Demand Notice will be issued requiring you to submit Form T-11 along with a registration fee of Rs. 9,000/- in the form of a pay order or bank draft in the name of the Director General IPO-Pakistan for issuance of the Registration Certificate. This will be valid for 10 years from the date of filing and has no annual or monthly charges.

Who Should Opt for Trademark Registration in Pakistan?

Businesses and Companies

Entrepreneurs and Startups

Service Providers

Writers and Artists

Non-Profit Organizations

Importers and Exporters

eCommerce Sellers

Benefits of Trademark Registration in Pakistan

Trademarks comprise names, words, slogans, logos, and any kind of symbols and serve as your business’s intellectual assets. Not only do they set your business apart from competitors, but they should be your most valuable assets.

In addition to serving as your brand’s identity, registering your trademark in Pakistan can reap tons of benefits, such as the following.

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Legal Protection:

you get the exclusive right to use the registered trademark and the legal grounds to protect your brand’s identity.

Brand Recognition:

with a registered trademark, it’s easier for consumers to identify your products and services.

Asset Value:

you can license or sell your registered trademark further, adding to the value of your business.

Global Expansion:

trademark registration can facilitate international expansion by providing protection in foreign markets.

Infringement of Trademarks

According to Sections 39 and 40 of the Trade Marks Ordinance 2001, a person using a registered trademark for their own use will be deemed to be infringing the trademark under Section 40.

Section 46 provides the following remedies for infringement of a trademark:

  • Damages
  • Injuctions
  • Accounts
  • Any other remedies available to the person

 

As per Section 117 of the Trade Marks Ordinance 2001, the individual or entity whose trademark has been infringed can file a suit for the purpose of addressing of grievance before the District Court.

Frequently Asked Question (FAQs)

What is a trademark, and why should I register it in Pakistan?

A trademark is a unique combination or word that helps differentiate your product or services from others. If you are operating in Pakistan, it would be beneficial for you to register a trademark in Pakistan since it would earn you legal protection, exclusive rights, and the ability to take legal action against unauthorized use, safeguarding your brand’s identity.

What is a trademark/brand name search? Is it necessary to conduct search before applying for registration?

A trademark or brand name search involves checking if a proposed mark is already being used or registered by someone else. It’s like looking to see if a name is already taken before you pick it for your business. Doing this search before applying for registration is a smart idea because it helps avoid conflicts with existing trademarks. It reduces the chance of legal issues or having your application rejected.

What happens if someone infringes on my registered trademark in Pakistan?

You have the legal right to take action against the infringing party if your trademark is properly registered. This can involve sending cease and desist notices, pursuing legal action, and seeking damages.

Which legislation governs trademarks in Pakistan?

The registration and protection of trademarks in Pakistan are governed by the Trademarks Ordinance of 2001, which applies nationwide.

How long does it take to register a trademark in Pakistan?

Depending on how complex your application is, the process can take anywhere between 9 to 12 months.

What is the difference between trade name and trade mark?

A trade name represents the complete title of your enterprise, like “Smithson Enterprises Inc.,” and serves as its identification. On the other hand, a trademark is a symbol that sets apart your company’s products. A single company might possess multiple trademarks. For example, Smithson Enterprises Inc. markets its goods using the trademark “Smithson” and the logo “SE.”

What is the cost of trademark registration in Pakistan?

The cost varies, but expect to budget for application filing fees, legal fees, and other associated expenses. The total cost can range from a few hundred to a few thousand Pakistani Rupees, depending on the specifics of your case.

I don’t live in Pakistan. Can I register a trademark there?

Yes, foreign businesses and individuals can register trademarks in Pakistan. However, it is better to seek legal assistance to understand and manage the process better.

Do I need to renew my trademark registration in Pakistan, and how often?

Yes, you would need to renew your trademark in Pakistan every 10 years2, otherwise, it can expire and grow invalid. Make sure to apply for the renewal six months before your trademark is due to expire.

Can I use the ® after registering my trademark in Pakistan?

Yes, you can, and you definitely should use the ® symbol next to your trademark. This symbolizes that your trademark is federally registered.

Can I use the ™ after registering my trademark in Pakistan?

It’s not necessary to use the ™ symbol, especially since it is for trademarks that are ‘not’ registered. The symbol stands for ‘trademark’ only and is not compulsory to use to protect your trademark.

Is it compulsory to register a company’s trademark in Pakistan?

Registering a company’s trademark in Pakistan is not compulsory. However, registering a trademark provides legal protection and exclusive rights to use the mark in connection with the goods or services it represents.

Who is authorized to apply for trademark registration?

Any individual who intends to use a trademark can apply for TM registration. It can be any individual, company or organization.

If my company, XYZ Corporation, is registered with the SECP, does that automatically protect its name as a trademark?

No, simply registering your business and its trade name with the Securities & Exchange Commission of Pakistan does not provide trademark protection for your company’s name. A trade name, such as “XYZ Corporation,” is the complete title of your business and serves as its identifier. Meanwhile, a trademark is a symbol that sets apart your company’s products.

Should I wait for trademark registration before using the mark for my business?

You can start using a mark whether or not it’s filed or registered.

Is trademark registration necessary if I've been using a mark for my business for years?

While prior use can help in disputes, registering a trademark offers legal certainty and exclusive usage rights. It’s highly recommended to register your trademark.

I am using trademark since long but not registered are there any rights for unregistered mark?

If your mark isn’t registered, you’re unable to initiate an infringement action. Instead, an unregistered mark is only entitled to the right of passing off. To assert this right, you must provide evidence demonstrating that your mark is actively used and has garnered reputation and goodwill.

What constitutes trademark infringement?

Trademark infringement occurs when someone uses a mark in trade that’s identical to a registered trademark, for goods or services identical to those it’s registered for.

What are service marks?

A service mark is a type of trademark registered to distinguish one company’s services from those of others. As defined in the Trademarks Ordinance 2001, services encompass various offerings provided to users, including but not limited to banking, telecommunications, education, legal services, and more.

What are collective marks?

According to section 82(1) of the Trademark Ordinance, 2001, a collective mark is a symbol that sets apart the goods or services of association members, indicating their affiliation with the group that owns the mark, distinguishing them from other businesses.

What are certification marks?

A certification mark, as outlined in the Trademark Ordinance, 2001, signifies that the goods or services bearing the mark have been certified by its owner in terms of origin, manufacturing process, quality, or other attributes, ensuring compliance with specified standards.

What is meant by Coined word?

Coined words refer to newly invented terms that lack pre-existing meanings and thus are easily protected. For instance, consider the brand name “Techluxe.” In this example, the coined word is “Techluxe,” which is an invented term without any prior significance.