PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
the applicant’s name and address, a formal request for registration, a statement and classification of the relevant goods or services, a clear representation of the mark, and the agent’s details where applicable. Pakistan does not permit multi-class applications; each application must be filed separately for a single class under Rules 13 and 14 of the Trade Marks Rules, 2004. Applicants must also provide a statement of the period and manner of use of the mark, and the Registrar may require supporting evidence by way of affidavit and exhibits. Trade mark registration is sought by filing Form TM-1 along with the official fee of PKR12,000. Any legal person, including foreign nationals, companies and partnerships, may apply for registration without the mandatory appointment of a licensed attorney. 4.5 Use in Commerce Prior to Registration There is no requirement for using a trade mark in commerce prior to seeking its registration. A pro - prietor with bona fide intention to use the mark may express its intention to use a mark in the future by fil - ing a “proposed to be used” application. This concept allows the proprietor to secure a priority date for the mark even before actual use. While there are no set regulations governing genuine use of a trade mark, it typically involves demonstrating the mark’s use in connection with the goods or services for which it is registered. This may include providing evidence such as sales records, advertising materials, invoices, or any other documentation that establishes the com - mercial use of the mark. 4.6 Consideration of Prior Rights in Registration During examination of a trade mark application, the Trade Marks Office only considers those marks which are on the register, whether registered or pending. The owner of a prior registration may provide con - sent to the registration of a given application; this may include a recitation of facts and reasons for the absence of likelihood of confusion, and may strength - en the subsequent application and demonstrate the parties’ understanding. However, an assignment/
assignment-back procedure is a purely contractual arrangement between the parties. 4.7 Revocation, Change, Amendment or Correction of an Application It is possible to amend or correct an application for a trade mark during the registration process through the prescribed form – ie, TM-16. Material alterations are also allowed, depending on the stage the application is at, and such alterations are subject to the approval of the Registrar of Trade Marks and republication in the official Trade Marks Journal. It is important to note that the approval of material alterations may be con - tingent on factors such as the nature of the changes and their impact on the registrability of the mark. 4.8 Dividing a Trade Mark Application A trade mark application in Pakistan may be divided by filing Form TM-14 while the original application under Section 22 of the Trade Marks Ordinance is still pending. A divisional application allows the applicant to seek registration of part of the trade mark or to limit the application to some of the goods or services cov - ered in the original filing. The divisional application is examined and processed in the same manner as the original application and retains the original filing date for priority purposes. 4.9 Incorrect Information in an Application Providing incorrect or false information in connection with a trade mark application can lead to serious con - sequences, including rejection or cancellation of the application, loss of trade mark rights, and opposition on the ground that the mark was accepted due to false representations, as recognised under Section 29 (3)(c) of the Trade Marks Ordinance. Additionally, Section 99 prescribes criminal penalties for false trade descriptions, including imprisonment of up to two years and/or fines starting from PKR50,000. Errors or inaccuracies may be corrected by filing Form TM-16, subject to approval by the Registrar of Trade Marks. 4.10 Refusal of Registration Under Section 14 of the Trade Marks Ordinance, trade mark registration in Pakistan may be refused on abso - lute grounds where a mark:
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