PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
• all grounds on which the application for the registration of the trade mark may be refused under this Ordinance, except the ground that the trade mark cannot be represented graphi - cally; • applicant’s lack of intention to use the trade mark in Pakistan; • applicant not being the true proprietor of the trade mark; • procedural issues, such as unauthorised amendments to the application or false evi - dence leading to the Registrar’s acceptance; • pre-acceptance advertisement of the applica - tion under exceptional circumstances being without sufficient cause or reason; • applicant’s trade mark being deceptively identical or substantially similar to a well- known trade mark with a reputation in Paki - stan; • applicant’s trade mark likely to cause confu - sion, deception and dilution of another trade mark’s reputation; and • trade mark containing or consisting of a mark that is a geographical indication for goods originating outside the specified country or region in the application. Pursuant to Section 73 of the Trade Marks Ordi - nance, a trade mark registration may be revoked for reasons such as: • non-use within five years after completion of the registration procedure without proper justification; • suspension of bona fide use for an uninter - rupted period of five years without proper reasons; • becoming a common name in the trade due to the proprietor’s acts or inactivity; and • misleading the public about the nature, qual - ity or geographical origin of the goods or services through their use.
Pursuant to Section 80 of the Ordinance, the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of Section 14 or any of the provisions thereof; however, where the trade mark was registered in breach of clause (b) (c) or (d) of subsection (1) of Section 14, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registra - tion acquired a distinctive character in relation to the goods or services for which it was registered. The registration of a trade mark may be declared invalid on the ground that there is: • an earlier trade mark in relation to which the conditions set out in subsection (1), (2) or (3) of Section 17 obtain; or • an earlier right in relation to which the condi - tion set out in subsection (4) of Section 17 is satisfied, unless the proprietor of that earlier trade mark or other earlier right has consent - ed to the registration. 5.3 Ability to File an Opposition or Revocation/Cancellation Any interested party may file an opposition to a trade mark application in Pakistan, and may do so without representation. The term “interested party” is broad and includes individuals, entities or organisations that have a legitimate concern or stake in the registration of the trade mark in question. It is not mandatory for the opponent to hold a trade mark or trade mark registration to file an opposition. However, the opponent should have a genuine interest or grounds for opposing the application; otherwise, the notice of opposition may be dismissed by the Registrar. The official fee for filing a notice of opposi - tion for one application is PKR9,000. Attorney fees typically range between PKR50,000 and
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