PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
1. Trade Mark and Copyright Law 1.1 Governing Law The primary legislation governing trade marks in Pakistan are the Trade Marks Ordinance 2001 (as amended in 2023) and the Trade Mark Rules 2004, which outlines processes and procedures for all aspects related to registration, prosecu - tion and enforcement. Copyrights are governed by the Copyright Ordi - nance, 1962 (as amended in 2000), and the Cop - yright Rules, 1967 (as amended in 2000). Pakistan’s legal system recognises common law trade marks under the doctrine of “prior user”, and protects these through the tort of passing off. 1.2 Conventions and Treaties/Rights of Foreign IP Holders Pakistan is currently a signatory to several inter - national treaties on trade marks, including: • the Paris Convention for the Protection of Industrial Property, 1883 (the “Paris Conven - tion”); • the Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994; • the Convention Establishing the World Intel - lectual Property Organization; • the Madrid Agreement 1891, and the Protocol Relating to the Madrid Agreement, concluded in 1989; • the Agreement Establishing the World Trade Organization; • the Universal Copyright Convention, 1948; and • the Trade-Related Intellectual Property Rights (TRIPS) Agreement, 1994.
It should be noted that the above treaties and conventions are not self-executing; however, their application has been enforced through the statutory regime – such as for the Paris Conven - tion, TRIPS Agreement and Madrid Protocol, all of which have become applicable through the Trade Marks Ordinance (as amended). Pakistan is also a signatory to the following inter - national treaties for protection of copyrights: • the Berne Convention for the Protection of Literary and Artistic Works, 1886; • the TRIPS Agreement; • the Universal Copyright Convention; • the WIPO Copyright Treaty; • the Rome Convention, 1961; and • the Marakesh Treaty. While some of these treaties lack enforcement through specific statutes, they are still given due consideration and are deemed of substan - tial importance by the courts and the relevant forums, as they place obligations on Pakistan that have binding effect.
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks
The Trade Marks Ordinance, vide Section 2 (xlvii), defines a trade mark as any mark which may be capable of being represented graphically and has the purpose of distinguishing the goods or services of one undertaking from that of anoth - er. Under Section 2 (xiv), a mark is defined as including a device, brand, heading, label, ticket, name (including personal name), slogan, signa - ture, word, letter, numeral or figurative element, or any combination thereof. This, as developed, includes colour, sound and three-dimensional
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