PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
designs. There is, however, some ambiguity regarding the protection of smells, owing to the problems of graphical representation. In addition to the above, collective or certifica - tion marks are also protected under the Ordi - nance and are defined under Section 82 and 83, respectively. Similarly, while geographical indi - cators were previously afforded protection as a mark, pursuant to the Geographical Indications Ordinance 2020, GIs are now filed under this law and per the parameters thereof. Please note that the Trade Marks Ordinance further provides special protection to specific marks under Section 87, 88 and 89 by qualify - ing that these are marks not registrable under the Ordinance. These include: • national emblems of convention countries, including flags, armorial bearings or any other state emblems, official marks or hallmarks, provided that an authorisation has been obtained from the competent authorities of that convention country; • a mark or hallmark that imitates national flags or other state emblems; and • emblems, names, abbreviations protected under the Paris Convention. Similarly, the Ordinance also provides protection specifically to well-known marks under Section 86, whereby the legislature protects such marks from infringement without requiring a registration in Pakistan, which is not the case for ordinary marks. 2.2 Essential Elements of Trade Mark Protection In order to qualify for trade mark protection, a trade mark must meet the criteria set out in Sec - tion 2 (xlvii) of the Trade Marks Ordinance, which
mandates that the trade mark should be capa - ble of being represented graphically and capable of distinguishing goods or services from other manufacturers. Further, Sections 14 and 17 of the Ordinance state absolute and relative grounds for refusal, respectively, on the occurrence of which a trade mark may not be registered. However, the Pro - viso of Section 14 of the Ordinance provides an exception to the absolute grounds specifically for trade marks devoid of distinctive character, as capable of registration if, before the date of registration, the trade mark has acquired distinc - tiveness and obtained a secondary meaning by being well known. Factors such as evidence of use, well-known status, advertising and promotion, and con - sumer recognition are often considered when determining the distinctiveness of a trade mark. 2.3 Trade Mark Rights Trade mark owners are granted rights under Sec - tion 39 of the Trade Marks Ordinance. Although the list is not exhaustive, it does stipulate the basic rights conferred on registrants – ie, that: • the proprietor of a registered trade mark shall have exclusive rights in the trade mark(s) to make use of the trade mark, in respect of the goods and/or services it has been registered for; and • registration of a trade mark is also consid - ered prima facie, evidence of proprietorship, which could result in interlocutory relief by the courts against any unauthorised use of the registered mark. Registration is further used in many forums to enforce proprietary rights in various areas of practice. Moreover, registration has proved vital
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