PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
5.7 Combining Revocation/Cancellation and Infringement Historically, when the cases are before the same forum, a revocation/cancellation and an infringe - ment action is heard together. However, with the promulgation of the Trade Marks Amendment Act 2023, a revocation/cancellation shall be filed before the High Courts and will thus have sepa - rate timelines. 5.8 Measures to Address Fraud There are no specific provisions that outline an investigation per se when a registration is chal - lenged on the ground of being filed fraudulently, and the same procedure applies as in the case of other grounds for cancellation/revocation. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Assignment of a Trade Mark A registered trade mark, as personal or movable property, can be transmitted by assignment. Any mark may be assigned with or without goodwill. The assignment may be for some or all of the goods and services. The assignment may also be limited in relation to the use of the trade mark in a particular manner or a particular locality. An application to register the title of a person who becomes entitled by assignment to a reg - istered trade mark is made by way of Forms TM-23 or TM-24, along with the prescribed fee. The registration certificate, along with the com - pany’s incorporation certificate and a board res - olution, may have to be produced at the time of application. Moreover, the assignment must also be recorded with the Registrar of Trade Marks for the purposes of its validity. Upon being sat - isfied that all the correct documents have been
Copyright The application for rectification of a copyright may be filed before the Copyright Board under Section 41(2) of the Copyright Ordinance. The Trade Marks Ordinance allows for partial revocation/cancellation of a trade mark. Sec - tions 73 and 80 of the Ordinance provide that, where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. 5.5 Legal Remedies Against the Decision of the Trade Mark Office In Pakistan, a party aggrieved by the decision of the Trade Marks Registry may appeal the decision before the High Court of the relevant jurisdiction. An appeal would thereafter lie, with the Supreme Court of Pakistan; however, the aggrieved party would first have to seek leave to appeal – ie, permission for the appeal to be admitted. The decision of the Supreme Court is final. While providing an avenue for recourse, the appeal process lacks a fixed timeframe. The duration of the appeal proceedings can vary, influenced by factors such as case complex - ity and caseload of the High Court and/or the Supreme Court. Moreover, a decision must attain finality within the Trade Marks Registry
before an appeal can be initiated. 5.6 Amendment in Revocation/ Cancellation Proceedings
An amendment is allowed in revocation/cancel - lation proceedings, subject to the other party’s consent to this. In many instances, a party may oppose such amendment, and it is then left at the court or Registrar’s discretion.
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