PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
marks, applications currently awaiting registra - tion may be amended by submitting the pre - scribed form – namely, TM-16. 4.4 Application Requirements The application for the registration of a trade mark must be in hard copy. As provided by the Trade Marks Ordinance and the Trade Marks Rules 2004, an application per the prescribed form should set out the particulars of the appli - cant, including: • a formal request for registration of a trade mark; • the full name and address of the applicant; • a statement of goods or services in relation to which the registration is sought; • the international classification of goods or services under which the applicant wishes to apply; • a representation of the trade mark; and • the full name, address and contact details of the agent, if the application is made by an agent on behalf of the applicant. In accordance with Rules 13 and 14 of the Trade Marks Rules 2004, Pakistan does not allow for multi-class application, and each application is filed for a specific class of goods or services. If a person or business wishes to register a trade mark in multiple classes, separate applications need to be filed for each class. Moreover, as per Rule 16, the application must provide a detailed statement indicating the peri - od and user of the mark in relation to the speci - fied goods or services. The Registrar has the authority to request an affidavit and exhibits as evidence of such usage. Furthermore, Rule 17 necessitates that every application (along with additional copies) feature a representation of the mark. Lastly, Rule 18 requires the submission
of duplicate applications, each accompanied by six matching representations of the mark, con - taining all necessary particulars as specified by the Registrar, with the possibility of requiring the applicant’s signature on the provided particulars. A trade mark application is filed through Form TM-1 for an official fee of PKR12,000. Any legal person, including foreign nationals, may apply for the registration of a trade mark without the need for a licensed attorney. A legal person includes a natural person as well as a company and a partnership business where the application will be made in the name of the part - ners. 4.5 Use in Commerce Prior to Registration There is no requirement to use a trade mark in commerce prior to seeking its registration. 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 proprietor to secure a priority date for the mark even before actual use. While there are no set regulations governing gen - uine use of a trade mark, this typically involves demonstrating the mark’s use in connection with the goods or services for which it is registered. This may include providing evidence such as sales records, advertising materials, invoices or any other documentation that establishes the commercial use of the mark. 4.6 Consideration of Prior Rights in Registration During examination of a trade mark application, the trade marks office only considers those
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