Pakistan
is a member of the Paris Convention for the Protection of Industrial Property.
The International Classification of Goods and Services for the Purposes of the
Registration of Marks under the Nice Agreement (classes 1-34) and service mark
classification (classes 35- 45) is applied in Pakistan.
Pakistan
is currently following both the Trademarks Act of 1940 in respect of cases
filed prior to April 12, 2004, as well as the new Trademarks Ordinance of 2001
that was promulgated on April 12, 2004. In the said Ordinance, provisions for
the registration of service marks, convention applications, priority rights and
domain names have been included.
A
trademark application filed in Pakistan is examined to determine its
registrability. When a trademark is accepted by the Registrar, it is published
in the Trademarks Journal. Any interested party may file a notice of opposition
to the registration of a trademark within 2 months from the date of publication
or within the period set by the Registrar, not exceeding 2 months in aggregate.
The
initial registration of the trademark is valid for a period of 7 years in
respect of applications filed prior to April 12, 2004, renewable for a period
of 15 years from the date of the expiration of the original registration, or
from the last renewal of registration, as the case may be. The initial
registration of a trademark filed after April 12, 2004 is valid for 10 years
and renewable for a period of 10 years.
The
fees for renewing a trademark registration can be paid at any time during the
last 6 months prior to the expiration of the latest registration. However, upon
payment of an additional fee, a late renewal is possible during a grace period
of 4 months starting from the date of publication of the registration in the
Trademarks Journal under the heading "Unpaid Renewal Fee."
The
assignment of a registered trademark with or without the goodwill of the
business, change of name and/or address, registered user agreement and licenses
of registered marks, are possible. The introduction of amendments to the
registered mark without substantially affecting the identity of the mark or the
boundaries of the list of goods covered by the registration of a trademark is
also possible and shall be recorded in the official register.
The use
of a trademark is not mandatory for filing an application. However, for
maintaining the registration in effect, evidence of use is required to be filed
at the time of second renewal. However, a concerned party may request the
Registrar or the High Court to remove a trademark from the register, if it has
not been used for 5 years and one month from the date of registration.
Illegal
use of the word "Registered" on an unregistered trademark, use of
counterfeited trademark, illegal use of a registered trademark by an
unauthorized person, dealing in goods bearing counterfeited trademark are
offences punishable under the law in Pakistan. Infringement proceedings may be
filed in the District Court as well as in the High Court.
Filing Requirements:
1. A
Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in
two places marked by X.
2. Transliteration
and translation of the non-English words appearing in the mark.
3. Confirmation
whether the mark is in use in Pakistan or proposed to be used. If in use, the
period of use shall be specified.
4. The
nature of business of the applicant, e.g., manufacturers, merchants, etc.
5. The
name, address and nationality/domicile of the applicant.
6. Specification
of the goods on which the mark is applied.
7. Twelve
specimens of the mark, (not needed for word marks).8. A certified copy of the
application giving the filing date, number and country, if the application is
to be filed with a priority claim.
Renewal of Trademark/Service Mark Registrations:
1. A
Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in
two places marked by X.
2. A
copy of the Registration Certificate.
Search:
1. Prints
of the mark, (not needed for word marks).
2. Classes
or goods to be searched.
Recordal of Assignment:
1. A
Power of Attorney [on Form TM-48] duly notarized and signed by the applicant in
two places marked by X, (from each party separately).
2. A
duly notarized deed of assignment executed by both parties.
3. A
copy of the certificate of the trademark registration.
Recordal of License Agreement:
1. A
Power of Attorney (form-48) notarized.
2. License
agreement document notarized or legalized up to the Pakistani Consulate.
3. Trademark
registration number and class.
Recordal of Merger:
1. A
Power of Attorney (form-48) notarized.
2. Merger
document notarized or legalized up to the Pakistani Consulate.
3. Trademark
registration number and class.
Recordal of change of name:
1.
A Power of Attorney (on Form-48) in the new
name and/or address duly notarized.
2.
A notarized certificate proving the change of
name or address issued by the local competent authority of the applicant's
domicile.
3.
A copy of the certificate of the mark
registration.
Recordal of change of address:
1.
A Power of Attorney (on Form-48) in the new
name and/or address duly notarized.
2.
A notarized certificate proving the change of
name or address issued by the local competent authority of the applicant's
domicile.
3.
A copy of the certificate of the trademark
registration.
Obtaining a Certified Copy of Registration:
1. A
Power of Attorney (on Form-48) duly notarized and signed by the applicant.
2. Trademark
registration number and class.
Effective
January 1, 2005, Pakistan has entered into the product per se patent protection
regime in the field of pharmaceutics and agriculture. With the new regime, the
“Black Box” application era has ended up. The old system of UNIFORM filing is
now restored. There is, however, no development as to when Pakistan is going to
sign the Patent Cooperation Treaty (PCT).
Once an application for the grant of a patent is filed, it is examined with respect to compliance with the formalities and patentability provided for under the patent law, including novelty, inventiveness and industrial application. In case of rejection, the applicant has the right to appeal to the High Court within 90 days as of the date of receiving the notification of rejection.
Accepted
applications are published in the Official Gazette and any interested party has
the right to appeal to the Controller of Opposition within 120 days as of the
date of publication in the Official Gazette. In the absence of opposition, the
letters patent is issued.
The
right to a patent may be assigned or licensed. An assignment shall have no
effect against third parties, unless it has been recorded at the Patent Office
and published in the Official Gazette.
Working
of patents in Pakistan is an official requirement. If the owner of a patented
invention does not satisfy the stipulated working requirements within 4 years
from the filing date or 3 years from the grant date of the patent, if the
working is stopped for 2 consecutive years, if the use does not cover the
demands of Pakistan, or if the owner refuses to license it under a contract of
fair terms, the patent will be subject to compulsory licensing under the
provisions of the law. Importation of products made under the patent is not
considered as use.
Although
the law does not have any stipulation of novelty except the mention of
"new", the Implementing Regulations require the administration to
examine the patent as to its novelty: i.e., the new invention has no precedence
in the industrial prior art. The industrial prior art means all that was
disclosed to the public anywhere at any time whether by written or oral
disclosure or by use or any other method which allows the understanding of the
invention. Technical know-how is protected from any unauthorized use, breach or
disclosure. Infringement of the rights of a patentee is punishable under the
provisions of the law.
Under the Patents Ordinance of 2000, four kinds of patents are
granted:
1. An
ordinary patent which is dated as of the official date of the application for
the patent.
2. A
patent relating to chemical products intended for use in agriculture and
medicines.
3. A
patent claiming "priority" which is dated as of the official date of
the corresponding application for patent first made in a country which is a member
of the WTO.
4. A
patent of addition, for the purpose of improving or modifying an invention for
which a patent has already been applied or granted.
A
patent is valid for 20 years. Annuities are to be paid starting from the fifth
year of the patent term and are paid in advance at the beginning of the fourth
year.
The
right to a patent may be assigned or licensed. An assignment shall have no
effect against third parties, unless it has been recorded at the Patent Office
and Published in the Official Gazette.
Filing Requirements:
1. A
Power of Attorney simply signed on Form P-28.
2. Name,
address and nationality of the applicant.
3. An
abstract of the invention of no more than 200 words.
4. Three
copies of the specifications and claims.
5. Three
sets of the drawings relating to the invention, if any.
6. A
certified copy of the application giving the filing date, number and country,
if the application is to be filed with a priority claim.
Patent Search:
1. Title
of the invention, (filing number and filing date, if any).
2. Years
to be searched.
Annuity:
1. Title
of the invention.
2. Filing
number and filing date.
Recordal of Assignment Applications:
1. A
Power of Attorney simply signed on Form P-28.
2. A
duly notarized deed of assignment executed by both parties.
Obtaining a Copy of the Patent Document:
1. Title
of the invention.
2. Filing
number and filing date.
Recordal of Change of Name:
1. A
Power of Attorney simply signed on Form P-28.
2. A
notarized certificate proving the change of name or address issued by the local
competent authority of the applicant's domicile.
Recordal of Change of address:
1. A
Power of Attorney simply signed on Form P-28.
2. A
notarized certificate proving the change of name or address issued by the local
competent authority of the applicant's domicile.
Designs
and industrial models are protected in Pakistan through registration with the
competent office. An application for a design registration is examined with
respect to compliance with the formalities and patentability provided for under
the design law including novelty and distinctiveness.
The
registered design shall be protected for 10 years as of the filing date or
priority date. Protection period may be extended for two further periods of 10
years.
The
renewal application may be filed during the last 6 months of the tenth year of
the protection period. However, a late renewal is possible upon the payment of
a fine, within 6 months from the expiration of the protection period.
Registration, assignment, or cancellation of a design or industrial model
registration shall be published in the Official Gazette and entered in the
register.
Filing Requirements:
1. A
Power of Attorney simply signed on Form-31.
2. Four
copies of the model or design, if it is two-dimensional or two copies of each
view thereof, if it is three-dimensional.
3. A
certified copy of the priority document, if it is to be claimed.
Renewal Requirements:
1. Title
of the Design.
2. Filing
number and filing date.
3. A
Power of Attorney simply signed on Form-31.
Recordal of Assignment:
1. A
Power of Attorney simply signed on Form-31.
2. A
duly notarized deed of assignment executed by both parties.
Recordal of License:
1. A
Power of Attorney simply signed on Form-31.
2. A
duly notarized license agreement executed by both parties.
Recordal of Change of Name:
1. A
Power of Attorney simply signed on Form-31.
2. A
notarized certificate proving the change of name or address issued by the local
competent authority of the applicant's domicile.
Recordal of Change of Address:
1. A
Power of Attorney simply signed on Form -31.
2. A notarized
certificate proving the change of name or address issued by the local competent
authority of the applicant's domicile.
Cancellation of a Design:
1. Title
of the invention.
2. Filing
number and filing date.
3. A
Power of Attorney simply signed on Form-31.
Under
Pakistan's Copyright Ordinance of 1962 and its amendments of 2000, original
works of literature, art and science, regardless of type, significance or
purpose are protectable.
Protection
includes works of art expressed in writing, sound, drawings, photography and
motion pictures, such as books, speeches, oral works, dramatic works, musical
composition, films, phonographic works and applied art. Such works are
protected for the lifetime of the author plus 50 years following his/her death.
Civil
remedies by way of injunction and/or damages, and criminal remedies by way of
fine and imprisonment are available through the courts of Pakistan. Police
raids are also permissible.
Pakistan
is a member of the Berne Convention for the Protection of Literary and Artistic
Works and the Universal Copyright Convention.
The following works are protected as per the said law:
1. A
notarized Power of Attorney.
2. Affidavit
from the author.
3. Name,
address and nationality of the applicant and author. If the author is dead, the
date of his death.
4. Nature
of the applicant's interest in the copyright of the work.
5. Class
and description of the work.
6. Title
of the work.
7. Language
of the work.
8. Whether
the work is published or unpublished.
9. Year
and country of first publication and name, address and nationalities of the
publishers.
10. Years
and countries of subsequent publishers, if any, and names, addresses and
nationalities of the publishers.
11. Names,
addresses and nationalities of the owners of the various rights comprising the
copyright in the work and the extent of rights held by each, together with the
particulars of assignment and licenses, if any.
12. Name,
address and nationalities of the other persons, if any, authorized to assign or
license the rights comprising the copyright.
13. If
the work is an artistic work, the location of the original work, including
name, address and nationality of the person in possession of the work. (In case
of an architectural work, the year of the work completion should also be
mentioned).
Statement of further particulars:
(For literary, dramatic, musical and artistic works only)
Whether the work to be registered is:
-
An original work;
-
A translation of a work in the public domain;
-
A translation of a work in which copyright
subsists;
-
An adaptation of a work in public domain; or
-
An adaptation of a work in which copyright
subsists.
-
If the work is a translation or adaptation of a
work in which copyright subsists:
-
Title of the original work;
-
Language of the original work;
-
Name, address and nationality of the author of
this original work; if the author is dead, the date of his death;
-
Name, address and nationality of the publisher,
if any, of the work;
-
Particulars of the authorization for a
translation or adaptation including the name, address and nationality of the
party authorizing.