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Lahore , Pakistan (PK)
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Pakistan (PK)

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11-08-2011 (Newsletter Issue 13/11)
Journal of Trademarks Available Electronically Now
The Intellectual Property Organization of Pakistan (IPO) has launched the first publication of Digital Journal of Trademarks at the Trademarks Registry in Karachi on October 20, 2011.
Accordingly, trademarks will be published faster and in colors while in the past they needed 12-18 months.

Last August, the Intellectual Property Organization of Pakistan (IPO) informed all the applicants, attorneys and General Public that Trademark Rules 2004 has been amended to give legal effect to the Digital Form of the Trademark Journal available on the website of IPO-Pakistan. To access the IPO's website, please here

Source: AGIP; Bharucha & Co., Pakistan


07-01-2011 (Newsletter Issue 9/11)
Official Fees Increased
The Pakistani Patent and Trademark Office announced on its website that the fee for IP applications i.e. trademarks, patents and copyrights has been restructured and increased, likely effective from June 4th, 2011 (notice of July 6th, 2011).
The official application fee for a trademark is USD 24.00 (approx. EUR 17.00) for one class and USD 24.00 for each additional class. The official registration fee is USD 71.00 (approx. EUR 50.00).

Source: www.ipo.gov.pk
Bharucha & Co., Karachi, Pakistan


Legal basis is the new Trademark Law “Trade Marks Ordinance No. XIX” of 2001, in force since April 12th, 2004.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 9th edition (services since April 12th, 2004).
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, three-dimensional forms and any combination of the mentioned signs. Well-known marks are recognised.
The following trademark types are registrable: trade marks, service marks and certification marks, collective marks and domain names.
The application is filed at the Trademarks Registry.
A separate application has to be filed for each class.
It is possible to file other similar trademarks as series trademarks in the same application.
Foreign applicants need a local agent.
A notarised power of attorney is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The first office action is taken after approx. 9 to 12 months. The whole procedure from application to registration takes around 2 to 3 years.
Prior to registration, the trademark application is published in the monthly “Trademarks Journal”.
National:
The opposition period is 2 months from publication date of the application.

Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years. The initial registration of a trademark application filed prior to April 12, 2004, is valid for a period of 7 years. Renewals prior to April 12, 2004 were made for a period of 15 years from the expiration date of the original registration or from the last renewal of registration, renewals after April 12, 2004 will be done for a period of 10 years.
The grace period is 6 months from the publication date of the mark as non-paid case in the Trade Marks Journal.
If the trademark has not been used within 5 years from the date of issuance of registration certificate, it may be subject to cancellation upon request of any interested party. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official application fee for a trademark is USD 24.00 (approx. EUR 17.00) for one class and USD 24.00 for each additional class. The official registration fee is USD 71.00 (approx. EUR 50.00).
Trademark Licence Agreement
In Pakistan a trademark licence agreement has to be in writing. Licensing of unregistered marks is permitted, but it is difficult to record such licences as the law only recognises registered trademarks. A trademark may be licensed for some or all of the goods or services covered. The sale of a registered trademark automatically terminates the licence. There are no statutory provisions prescribing the terms of licensing.

Recordal
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal of a licence is voluntary in Pakistan but advisable to become effective against third parties. There is no time frame for a recordal and no prescribed content for a licence agreement to be valid. An application for recordal must be filed with the Trademark Registry on prescribed form TM-28.

Further documents are required for a recordal:
1. The licence agreement
2. An affidavit
3. A statutory declaration

All documents must be notarised.

Effectiveness
A licence agreement becomes effective and enforceable against third parties from the application date for recordal of the licence. Recorded licences are published in the Trademark Journal (electronically on the official website).

Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The registered user is entitled to call upon the registered proprietor to institute proceedings for trademark infringement. He can also institute proceedings in his own name if the proprietor refuses or neglects to do so. The licensee must cite the proprietor as co-defendant in any such proceedings.
Search type First class Add. class
Word Mark Search (availability) 260,00 € 210,00 € 
Word Mark Search (identical) 210,00 € 150,00 € 

The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:

Country Survey
11-21-2011
Meer & Hasan, Lehore, Pakistan

02-02-2011
United Trademark and Patent Services, Lahore, Pakistan

Licensing
11-21-2011
Remfry & Son Patent & Trademark Attorneys,, Karachi, Pakistan
Sheikh Brothers, Karachi, Pakistan


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Qazi Law Associates

Muhammad Nouman Shams
Suite No.22, Taj Arcade, 3rd Floor, 73 Jail Road
54000 Lahore
Pakistan (PK)

Intellectual Property Organisation of Pakistan, Trade Marks Registry
House No. 23, Street 87
Ataturk Avenue (West)
Sector G-6/3
Islamabad
Pakistan


Tel +92-51-92 08 58 7
Fax +92-51-92 08 14 7
www.ipo.gov.pk