PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
• ideas, procedures, systems, methods, pro - cesses, principles, discoveries or devices that are not embodied in a particular work; • works comprising information that is consid - ered common property and has no original authorship, such as facts in a biography, standard calendars and lists or tables taken from a public document; • works which are infringing of another’s work or IP; and • works that are registered as an industrial design. An appeal against the refusal of application can be made to the Copyright Board within three months of the date of such decision. The deci - sion of the Board is final and cannot be further appealed and/or challenged. 3.10 Related Rights While there might be overlap between copyright and trade marks in cases involving logos, artistic designs, trade dress and packaging, there is no specific provision that safeguards copyright as an integral part of trade marks. However, despite the absence of such a pro - vision, the Copyright Office favours registered trade mark owners. Additionally, the courts of Pakistan have held that a copyright registration cannot be utilised as a substitute for trade mark protection; thus, in cases of vendible goods, it is essential for a copyright application to be sup - ported by a trade mark registration. 4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration Being a common law jurisdiction, Pakistan rec - ognises rights of a prior user and/or adopter,
irrespective of registration, meaning the use of a trade mark or service mark can be claimed before registration is granted or issued. In the event of any dispute, however, proof of bona fide use may have to be submitted. That said, while registration is not mandatory to establish rights in a trade mark, it does offer substantial benefits and protection. Registering a trade mark provides the owner with a statutory right to exclusivity, making it easier to enforce and protect the trade mark against infringement. While trade mark rights arise from actual use, a proprietor with bona fide intention to use the mark may express its intention to use a mark in the future by filing a “proposed to be used” application. This concept allows the proprie - tor to secure a priority date for the mark even before actual use. In Pakistan, this intention-to- use provision aligns with the principle that trade mark rights can be established through both actual use and a bona fide intention to use in the future. However, Section 73 of the Trade Marks Ordinance specifies that, if a registered trade mark has not been used or if its use has been suspended in Pakistan for a continuous period exceeding five years from the registration of that trade mark, it becomes liable for revocation on the grounds of non-use. Section 39 of the Trade Marks Ordinance grants exclusive rights to the proprietor of the trade mark from the date of registration. These include the rights to obtain relief where the trade mark has been infringed. The effects of trade mark registration are outlined in Section 33 of the Trade Marks Ordinance. It provides that the owner of a registered trade mark enjoys exclusive rights in the trade mark, and any unauthorised use of the trade mark in
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