PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
5.5 Legal Remedies Against the Decision of the Trade Mark Office An aggrieved party may appeal a decision of the Trade Mark Registry before the relevant High Court. A further appeal lies before the Supreme Court of Pakistan, subject to the granting of leave to appeal, whose decision is final. Appeals can only be filed once the Registry’s decision has attained finality. While the appellate mechanism provides recourse, no fixed timeline is prescribed, and the duration of proceed - ings depends on factors such as case complexity and court workload. 5.6 Amendment in Revocation/Cancellation Proceedings An amendment is allowed in revocation/cancella - tion proceedings subject to the other party’s consent thereto. In many instances, a party may oppose any such amendment and it is then left to the court/Reg - istrar’s discretion. 5.7 Combining Revocation/Cancellation and Infringement Historically, when the cases are before the same forum, a revocation/cancellation and an infringement action are heard together. However, with the promul - gation of the Trade Marks Amendment Act, 2023, a revocation/cancellation shall be filed before the High Courts and thus will have separate timelines. 5.8 Measures to Address Fraud There are no specific provisions that outline an inves - tigation per se when a registration is challenged on the ground of being filed fraudulently, and the same procedure as is in the case of other grounds for can - cellation/revocation applies.
The matter proceeds to the evidence stage, where the opponent must submit evidence in support of the opposition within two months of the counter-state - ment, failing which the opposition is abandoned. The applicant is then required to file evidence in support of the application within two months, followed by the opponent’s reply evidence, limited strictly to rebut - tal, within one month. The Registrar may allow further evidence at their discretion. After completion of evidence, the Registrar issues a hearing notice. Parties may present oral submissions and/or file written arguments. Upon conclusion of the hearing, the Registrar considers the pleadings, evi - dence and arguments on record and issues a decision on the opposition. In light of the Trade Marks Amendment Act, 2023, a revocation/cancellation of a trade mark under Section 73 of the Trade Marks Ordinance may be filed before the Registrar of Trade Marks except where proceed - ings concerning the trade mark are pending in the High Court – then, the application shall be made to the High Court. Moreover, under Section 80 of the Ordi - nance, an applicant may file the application before the Registrar or the High Court; however, in the event that proceedings concerning the marks are pending at the High Court, the application shall be made to the High Court. Copyright The Application for Rectification of a copyright may be filed before the Copyright Board under Section 41 (2) of the Copyright Ordinance. The Trade Marks Ordinance allows for partial revoca - tion/cancellation of a trade mark. Sections 73 and 80 of the Ordinance provide that, where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. Revocation Trade mark
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Assignment of a Trade Mark
A registered trade mark, being movable property, may be transferred by assignment with or without goodwill. An assignment may cover all or some of the goods or services for which the mark is registered and may be restricted to a particular manner of use or geographic
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