WHAT IS “TRADEMARK”?
The Trademark Ordinance, 2001 has defined in section 2 (1) (xlvii) that “trade mark” means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings;
WHY WE REGISTER OUR BUSINESS/BRAND AND OBTAIN TRADEMARK CERTIFICATE?
Trademarks enable people to identify their product or service. So they can become powerful and valuable business assets. Trade mark protection is a business imperative and the best protection is obtained by way of registration. Therefore it is advisable to have your trademark registered because once the trade mark is registered, the owner/proprietor of a trade mark gets exclusive rights the TradeMark Ordinance, 2001 to use the trade mark. Furthermore, a registered trade mark is a prima facie evidence of validity of trademark.
WHO CAN APPLY FOR REGISTRATION?
The owner/proprietor, partner, trust/society and company may be applied for the registration of their mark. The Application can be filed through authorized attorney or agent by preparing TM 48. A Power of Attorney in favor of the attorney or agent from the Applicant/proprietor of the mark under Form TM-48 of the Trade Mark Rules, 2004 on a Stamp Paper of Rs. 100/- for one mark and Rs. 200 for two or more marks.
WHETHER SEARCH BEFORE FILLING OF TRADEMARK APPLICATION IS NECESSARY?
Search prior to apply for the registration of mark is not mandatory. A trade mark search is a completely optional step. Good companies always undertake trade mark before one considering filing a trade mark application. Therefore, it is strongly advisable to apply for search of your proposed mark prior to filling of Application for registration of Trademark. A trade mark search determines two related issues of great import: will your trade mark infringe upon another’s trade mark, and could your trade mark application become a trade mark registration. Because trade mark rights are granted to the first party to use that trade mark, a company providing a similar product and using a similar trade mark has superior trade mark rights over you. Thus, they could potentially sue you for trademark infringement or if they own a trade mark registration, their trade mark could be a block to your trade mark being granted a trade mark registration. A trade mark search examines databases and can either “clear” a trademark for adoption or find that there are great risks involved with using that trade mark.
PROCEDURE TO FILE THE APPLICATION FOR REGISTRATION OF TRADEMARK
Basic information on the steps to be taken for the registration of a trademark in Pakistan is as under:_
1. Filing of Application
2. Preliminary Examination
3. Final order for Publication
4. Publication in Trademarks Journal
5. Opposition Procedure
6. Issuance of Registration Certificate/Refusal
1. Filling of Application:
A trademark application can be filed in accordance with the Trademark Form i.e. Form TM-1 and Form TM-2 (priority application) as available in Schedule II of the Trade Marks Act, 1999 along with the requisite government fee of Rs. 2,000/-.
1. The Name/Image of the mark sought to be registered;
2. The exact date of use of the mark. (not required, in case the mark is proposed to be used);
3. The name of the applicant/proprietor of the mark;
4. The address of the applicant/proprietor of the mark;
5. List of goods or services to allow us to identify the class or classes according to the International Classification of Goods and Services (Nice Classification 9th Edition classes 1 to 45).
6. The exact goods/services for which the mark is being used or is proposed to be used by the applicant/proprietor;
7. Trade Description of the applicant/proprietor. (for example, whether the proprietor/applicant a Retailer, Manufacturer, Wholesaler, Merchant, Service Provider etc.), and
8. A Power of Attorney in favour of the agent from the applicant/proprietor of the mark under Form TM-48 of the Trademark Rules, 2004.
2. Preliminary Examination
Once an application is filed, it is examined by the Registrar of the Trademarks. Generally, the Examination of an application takes around 12 months from the date of filing of the application. After examination of application, the Registrar of the Trademarks may raise objections to the application as per Section 14 or 17 of the Trademark Ordinance, 2001 or any other technical or procedural objections. It is interesting to mention here that it is routing practice of Trademark Registry to raise the objections and the Trademark offices usually do it in almost 98% of trademark applications.
Objections which may be raised in the Examination:
Absolute Grounds For Refusal
Section 14 of The Trademark Ordinance, 2001 provides an absolute grounds for refusal of registration.—
(1) The following shall not be registered, namely:-
(a) mark which do not satisfy the requirement of clause (xlvii) of section 2;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of marks or indications which 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 (d) trade mark which consist exclusively of marks or indications which have become customary in the language or in the bona fide and established practices of the trade;
Provided that a trade mark shall not be refused registration by virtue of clause (b), (c) or (d) if, before the date of application for registration. it has in fact, acquired a distinctive character as a result of the use made of it or is a well know trade mark.
(2) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape which results from the nature of the goods themselves;
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
(3) No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-
(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be dis-entitled to protection in a High Courts or
(b) be likely to hurt the religious susceptibilities of any class of citizens of Pakistan, perse, or in terms of goods or services it is
intended to be so registered; or
(c) be contrary to any law, for the time being in force or morality.
(4) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Relative Grounds For Refusal:
Section 17 of the Ordinance further provides for the relative grounds of refusal which are as follows:
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services, for which the trade mark is applied for, are identical with the goods or services for which the earlier trade mark is registered.
(2) A trade mark shall not be registered because-
(a) it is identical with an earlier trade mark and is to be registered for goods- or services similar to those for which the earlier trade mark is registered; or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is registered. and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented-
(a) by virtue of any law, in particular, the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade; or
(b) by virtue of an earlier right other than those referred in sub-section (1), (2) and (3) or clause (a) of this sub-section, in particular by virtue of the law of copyright design right or registered designs.
(5) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier consents to the registration.
(6) Where separate applications are made by different persons to be registered as proprietor respectively of trademarks which are identical or nearly resemble each other. in respect of the same goods or description of goods, the Registrar, if thanks fit, may refuse to register any of them until their rights have been determined by the High Court or a District Court. Procedural Objections
The Examiner may also raise objections on certain procedural ground such as the absence of a valid Power of Attorney in favor of the trademark agent, incorrect classification of goods or services, incomplete information in the Trademark Application etc. However, these objections are relatively easier to clear and do not substantially hamper the registration of the mark.
Examination Report/Show Cause
These objections raised by the Registrar are communicated to the applicants/attorney/agent (depends on who filed the application) by way of examination report/Show cause. A hard copy of the Examination Report is sent to the Applicant/Attorney/Agent.
Response to the Objection
As per the section 27 of the Trademark Ordinance, 2001 in the event the Registrar has any objection in relation to the registration of the trademark, he shall communicate the same to the applicant and the applicant must respond to such objection within two month from the date of such communication.
If the Registrar is satisfied with the written reply, he may clear the mark for advertisement. However, if the Registrar is not satisfied he is required to give a hearing to the applicant.
Final Order for Publication
After completion of hearing, the Registrar will pass a speaking order. In the decision, the Registrar may also impose reasonable conditions, amendments, modifications and/or limitations on the registration as he deems fit and such proposal is communicated to the applicant in writing. The decision of the Registrar must be communicated to the applicant in writing and the law makes a provision for an appeal from the decision of the Registrar.
4. PUBLICATION IN TRADEMARK JOURNAL
Once the mark is cleared of all the objections from the Trademarks Registry, it proceeds for advertisement in the Trade Marks Journal. The Trademark Journal is open to the public and the purpose of advertisement is to invite any opposition to registration of the mark from any third parties. Once a mark is advertised and no oppositions are filed within the statutory time period, the mark moves to registration. However, if the Registrar receive any objection from any person, the opposition procedure commence with:
5. OPPOSITION PROCEDURE
Notice of Opposition
A notice of opposition is given in form TM – 5 of Trade Marks Rules, 2004 along with the requisite fee of Rs. 6,000/-.
Once the applicant receives the notice of Opposition, he is required to file his counter statement in the form of TM-6 within two
(2) months from the date of receipt of the notice of Opposition along with the requisite fee. TM-6 shall be submitted alongwith the requisite fee of Rs.1,000/-
Submission of Affidavit-in- Evidence by both parties
Within two (2) months of the receipt of the Counter Statement, the Opponent is required to file evidence by way of affidavit in favor of the Opposition. The time period for filing the evidence affidavit may be extended by one month on application to the Registrar. The Applicant is thereafter required to furnish his own evidence by way of affidavit in support of the application within two (2) months from the receipt of the Opponent’s evidence affidavit. This time period is also extendable for a period of one (1) month on application to the Registrar. The Opponent is next required to file Evidence in Reply to the applicant’s affidavit within one (1) month of the receipt of the applicant’s affidavit in favor of the application, which may be further extended for a month on an application being made to the Registrar in this regard.
Hearing of Opposition
Within three (3) months of completion of the evidence, the Registrar shall give the notice of first hearing to the Parties. Rule 55 of the Trademark Rules, 2004 provides that the first date of hearing shall be at least one (1) month after the date of notice to the parties. Any party who intends to appear for the hearing must notify the Registrar within fourteen (14) days of the receipt of the first notice. In the event the applicant does not notify the Registrar of his intention to be present for the hearing and is not
present on the date of hearing, the application may be treated as abandoned. In the event the opponent does not notify the Registrar of his intention to be present for the hearing and is not present on the date of hearing, the opposition may be dismissed for the want of prosecution and the application may proceed for registration.
The Registrar pass the order on the opposition, either accept the opposition of dismissed the same. In the both situation, the aggrieved party may file an Appeal before the Appellate Forum.
6. ISSUANCE OF REGISTRATION CERTIFICATE
Once the mark is registered, the Registrar shall issue a certificate of registration of a trademark, after depositing the requisite fee by the Applicant. After registration of mark, the Application may use the insignia ® for the business. It is pertinent of mention here that if a registered trademark is not used for a continues period of five years and three months from the date of registration, then the same becomes cancel on the ground of non use.
Duration of Registration
A trademark registration is valid for a period of ten (10) years from the date of application and may be renewed under section 35 of the Trademark Ordinance, 2001 thereafter from time to time.
As per Section 35 of Trademark Ordinance, 2001, a trade mark can be renewed after the expiry of renewal if the applicant makes an application within six (6) months from the date of expiry of Registration. In such a case, the applicant has to file two forms one for renewal and one for payment of surcharge. The form for renewal is Form TM-12 of the Trade Mark Rules, 2004 and the fees for the same is Rs. 10,000/- for one mark. The said applications have to be made within six (6) months from the date of expiration of registration. In case, the applicant is not able to make such application within six (6) months from the date of expiry of registration, the Registrar removes the mark from the Register. In such a case, Section 35 (6) of the Trademark Ordinance, 2001 comes into operation. In such a case a mark has to be restored. For restoration of the mark, an applicant has to move an application for Restoration and renewal of trade mark under From TM-13 of the Trade Mark Rules, 2004. The fees for making an application under Form TM-13 is Rs. 2,000/- plus the fees for renewal, i.e. 10,000/- per mark. In this case, only one application is filed under Form TM-13 with combined fees for restoration as well as renewal. Such application has to be made after expiry of six (6) months but before expiry of one year from the date of expiration of the Registration. For example, if the six months period after expiration of registration has expired on 31st August, 2016 an application for restoration has to be moved by 28th February, 2017. It is pertinent to mention herein that as per Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of Trade Mark Rules. 2002, the Registry has to give a mandatory notice to the applicant/agent that the mark is due for renewal and if the said is not provided but the mark is removed