Q.1 What is a trademark?
A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of others. It can be in the form of words, designs, letters, numerals or packaging, slogans, devices, symbols, etc. It also indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
Q.2 What is a service mark?
A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks. However the Trademark refers to product and goods and service mark refers to services.
Q.3 What is the Law and Authority of Trademark Registration in Pakistan?
Trade Marks Registry (TMR) which is a part of Intellectual Property Organisation of Pakistan (IPO Pakistan) works for the registration of trade and services marks under the Trade Marks Ordinance, 2001. Its jurisdiction for trade and services marks lies within the geographical boundary of Pakistan.
Q.4 Is Trademark Registration a must to do for me?
No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However the registration provides several important benefits.
Q.5 What are the benefits of trademark registration?
The registration provides several advantages, including:
- Public notice of your claim of ownership of the mark;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in the court;
- It provides a basis to obtain registration in foreign countries;
- The right to use the registration symbol ®
Q.6 Should I hire an attorney to apply for the registration of trademark?
Not required.
Q.7 Do I need an attorney to file my trademark application?
Not required.
Q.8 How can I File Trademark Application?
- Trademark is filed on Prescribed application form TM1/TM2
- 8 clear reproduction of the sign, logo or Trademark, of any color, form or 3 dimensional features.
- List of goods or services to which the Trademark would apply.
- Power of Attorney if applied through an advocate / Agent.
- Payment of Prescribed official fee.
Q.9 Period for which the Registration is granted in Pakistan?
Initially Trademark is registered for 10 (Ten) years from the filing date. The Trademarks registration can be renewed after every 10 (Ten) years.
Q.10 What is trademark search?
If your trademark application is for a trademark which is already existing in the database of trademark registry it can be declined for registration. Trademark Search discloses all similar trademarks already registered and it saves your time from applying an already registered or identical trademark.
Q.11 Is trademark Search a Must to do?
No. It is not mandatory but it is highly advisable to avoid any future inconvenience. It is very prudent to conduct a search before filing an application. A comprehensive trademark search is essential before applying for a trademark. This will also provide an assurance that you are not infringing another party’s trademark rights.
Q.12 Where can I conduct a trademark search for trademarks?
Trademark search is conducted in the (TMR) Trademark Registry Database.
Q.13 Is it possible that a minor file a trademark application?
The application may be filed in the name of the minor through parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian.
Q.14 Who may be an applicant to file an application?
The owner of the trademark may file an application for registration. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
Q.15 What is a drawing?
The “drawing” is a clear image of the mark applicant seeks to register.
Q.16 What is a specimen?
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).
Q.17 What is the difference between “use in commerce” and “intent to use” in commerce?
Use in commerce means that you are using the trademark in business and intent to use shows that you are planning and have intentions to use this trademark in business. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis.
Q.18 Can I register the name of a my musical group or band?
A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.
Q.19 May I assign or transfer the ownership of my trademark to someone else?
Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications.
Q.20 Are there any restrictions on use of the “®” symbol?
There are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires).
Q.21 Where should I place the ® symbol?
There are no specific requirements on where the “®” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “®” symbol indicates that you have registered your trademark. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires).
Q.22 Is a registration valid outside Pakistan?
No. However you can file application in other countries on the basis of this registration.
Q.23 Can my wife transfer her trademark in my name?
Yes
Q.24 If someone else is using my trademark?
You may stop him from this use.
Q.25 How do I obtain a copy of a trademark?
After payment of a prescribed official fee a copy of trademark can be applied and obtained from Trade Mark Registry TMR.
Q.26 How do I record a trademark assignment?
A trademark is intellectual property that may be transferred or sold. The law permits the transfer or sale of a trademark by means of a legal document called an Assignment. A properly executed assignment transfers all rights from the existing owner to another person (referred to as the Assignee). When the trademark is transferred, the Assignee becomes the new owner of the trademark and has the same rights as the original owner. The TMR in Pakistan records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions.
Q.27 Can I apply for a Trademark electronically or on the Web?
Not in Pakistan
Q.28 How long does it take to register a trademark?
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Q.29 Can I change correspondence address?
Yes. You may file a request to change your correspondence address.
Q.30 Once my application is processed, what will I receive?
After recordal of a new application, the owner or the owner’s attorney will receive a Certificate of Recordal depicting the mark, the owner’s information, and the date of recordal from which renewals are to be calculated.
Q.31 Can the Certificate of Recordal be transferred to a new owner?
No. The Certificate of Recordal may not be transferred or assigned, but it may be amended only to show a change of name or change of address.
Q.32 What is the Madrid Protocol?
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.
Q.33 Which countries are members of the Madrid Protocol?
As of February 2013, 88 countries have joined the Madrid Protocol. These countries are called “Contracting Parties.” A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO).
Q.34 What is the duration of an international registration?
An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.
Q.35 How do I renew my trademark registration?
To renew a trademark registration, you must file an Application for Renewal.
Q.36 Is there a fee for filing and application for renewal?
Yes. You have to pay a specified official fee for renewal.
Q.37 What must I include in a renewal application?
1. A request to renew the registration signed by the registrant or the registrant’s representative;
2. The registration number, mark and date of registration.
3. A name and address for correspondence; and
4. The filing fee.
Q.38 Does Pakistan use the international classification?
Yes.
Q.39 Are there any goods or services for which the mark cannot be registered?
Yes.
Q.40 Can a trademark be registered in the name of more than one applicant (i.e. joint application)? If so, what are its requirements?
Yes. A power of attorney executed by all the applicants.
Q.41 Can mark be applied for more than one class of goods/services through one application?
No. Not in Pakistan.
Q.42 In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration?
Yes.
Q.43 If the trademark was originally filed incorrectly, what documentation would be required to amend the official register to show the correct details?
Amendment application.
