PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
4.3 Term of Registration A registered trade mark is valid for a period of ten years from the date of its application. Prior to the expiry of the ten-year period, the trade mark can be renewed subject to Section 35 of the Trade Marks Ordinance. The Registrar is required to notify the owner of a registered trade mark about its upcoming expiry and to provide information on the renewal process. To renew the registration, the owner must submit a renewal request along with the prescribed renewal fee before the expiry date. If the request and fee are not submitted by the expiry date, there is a grace period of at least six months, during which the owner can still renew the reg - istration by paying an additional renewal fee, as prescribed. If a trade mark is not renewed, the Registrar has the authority to remove it from the Regis - ter. However, the Registrar may consider restor - ing the trade mark under certain conditions. To maintain registration, the proprietor must show bona fide use of the trade mark in Pakistan and pay the prescribed fee for its renewal. Bona fide use can be evidenced in the form of invoices, packaging, and advertising and promotional material. Section 37 of the Trade Marks Ordinance allows for the alteration of a trade mark, specifically those involving the proprietor’s name or address, as long as these modifications do not substan - tially impact on the identity of the trade mark. If the alterations are of such a nature as to materi - ally alter the application, the Registrar will pub - lish the modified trade mark. It is pertinent to highlight that, while alterations to the original mark and/or the identified goods or services cannot be amended for registered
Pakistan without the proprietor’s consent con - stitutes infringement. In addition to the above, the registration of a trade mark is considered in the courts of Paki - stan as prima facie, evidence of proprietor - ship, which could result in instant relief by the courts in the form of an interlocutory injunction against any unauthorised use of the registered mark. Moreover, registration has proved vital to attracting the jurisdiction of various govern - ment agencies and enforcement forums, such as customs (under Statutory Regulatory Order No 170(1)/2017), the Drug Regulatory Authority and the Competition Commission of Pakistan, among others. It is pertinent to note that all trade marks under - go the same procedures as set out in the Trade Marks Ordinance and the Trade Marks Rules 2004. 4.2 Trade Mark Register Pursuant to the Trade Marks Ordinance, a Reg - ister of Trade Marks is maintained containing the particulars of all registered trade marks that have been entered. However, this Register is not pub - licly available online, though it is open for pub - lic inspection at the office’s premises through a dedicated portal. This portal is widely used to conduct a clearance search with the official database. Moreover, the Register also allows for the filing of official search requests through Form TM-55. One search application would be applicable for one trade mark search in any one class only, and should be accompanied by two representations of the mark along with a search fee of PKR1,000.
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