PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
In addition to individual trade marks, the Ordinance provides protection for collective and certification marks under Sections 82 and 83. Geographical indi - cations, which were previously registrable as trade marks, are now governed separately under the Geo - graphical Indications Ordinance, 2020. The Trade Marks Ordinance further restricts the reg - istration of certain marks under Sections 87, 88 and 89, including national flags, state emblems, official hallmarks, and emblems or names protected under the Paris Convention, unless proper authorisation is obtained. Lastly, Section 86 affords special protection to well-known marks, allowing enforcement against infringement even without registration in Pakistan, unlike ordinary trade marks. 2.2 Essential Elements of Trade Mark Protection In order to qualify for trade mark protection, a mark must satisfy the requirements of Section 2 (xlvii) of the Trade Marks Ordinance, namely that it is capable of graphical representation and of distinguishing the goods or services of one undertaking from those of others. Sections 14 and 17 of the Ordinance set out the absolute and relative grounds for refusal, on the basis of which a trade mark may be refused regis - tration. However, the proviso to Section 14 creates an exception to the absolute grounds by allowing the registration of marks lacking inherent distinctiveness where, prior to the application date, the mark has acquired distinctiveness and a secondary meaning through use and has become well known. In assessing distinctiveness, factors such as duration and extent of use, advertising and promotional efforts, market pres - ence, and consumer recognition are typically taken into account. 2.3 Trade Mark Rights Section 39 of the Trade Marks Ordinance grants reg - istered trade mark proprietors exclusive rights to use their marks and restrain unauthorised use. Registra - tion constitutes prima facie evidence of ownership, enabling courts to grant injunctive relief and facilitat - ing enforcement before authorities such as Customs, the Drug Regulatory Authority of Pakistan, the Securi - ties and Exchange Commission of Pakistan, and the Competition Commission of Pakistan. These rights
are subject to use requirements, as a mark may be cancelled if not put to bona fide commercial use within five years. In contrast, the Copyright Ordinance does not expressly recognise anti-circumvention rights, though such protection may be inferred from the broad exclu - sive rights granted to copyright owners. 2.4 Use in Commerce There are no specific legal guidelines for establishing the use of a trade mark in Pakistan per se. Parties may demonstrate usage through evidence such as pro - motional and marketing materials, sales invoices, and import/export documents associated with the trade mark, helping to determine the use in commerce. It is also necessary to establish that the defendant’s use is likely to be regarded as a trade mark, aiming to identify and/or distinguish their goods or services, as opposed to a purely descriptive use. 2.5 Notices and Symbols The ® symbol and trade mark symbol denote the status of the mark in Pakistan as being registered or applied for, respectively. Though marking is not a mandatory requirement, its use is beneficial as it reduces the risk of the infringer claiming innocence by not being aware of the status or existence of pro - prietary rights over the mark, and deters any potential infringer by illustrating legally recognised rights over the mark. Moreover, misrepresentation via marking as to the status of a trade mark also amounts to an offence under Section 102 of the Trade Marks Ordi - nance, and is punishable by imprisonment for a term that shall not be less than one month but that may extend to six months or a fine, or both. 2.6 Related Rights The scope of trade marks under the Trade Marks Ordi - nance is broad and may overlap with copyright pro - tection. Artistic elements such as logos, trade dress and packaging can be protected under both trade mark and copyright law. Additionally, surnames may be registered as trade marks if they have acquired distinctiveness and secondary meaning in relation to specific goods or services. The registration of a sur - name does not raise issues of morality, provided it is not used in a derogatory or defamatory manner.
370 CHAMBERS.COM
Powered by FlippingBook