News & insights

Pakistan: Review of Trademark Protection

July 19, 2011

Filing Requirements
1. Power of attorney, notarized. A general power may be used for subsequent filings.
2. Copy of priority document, if priority is claimed, certified.
3. Transliteration and translation of non-English words appearing on the mark.
4. Date of first use of the mark in Pakistan, if available.
5. 12 prints of the mark.

Document 1 may be submitted within 2 months from filing date. Document 3 must be submitted within 3 months from filing date.

Classification
The International Classification of Goods and Services (8th Edition) is followed. A separate application is required for each class.

Opposition
Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 2 months from publication date.

Extension of Time
Extension of time for oppositions/counter-oppositions or for responding to office actions is possible.

Protection Term
Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge.
Documents required for renewal: Power of attorney, notarized.

Use Requirements
Use of a trademark is required for renewal only. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 years and one month from the filing date.

Search
An official search may be conducted for word marks and devices. It takes approximately 2 weeks for the results to be available. A separate application is required for search in each class. The search report discloses similar and identical trademarks.

Assignment
Registered trademarks may be assigned with or without the goodwill of the business concerned. Trademark applications may be assigned only with the goodwill of the business concerned and only if the trademarks are used in Pakistan. If the trademarks are only proposed to be used in Pakistan, an assignment may not be recorded and will be deferred until the marks mature for registration.
Documents required: Power of attorney from the assignee, notarized; and deed of assignment, notarized.

Change of Name/Address
A change of name/address may be recorded for trademark registrations only.
Documents required: Power of attorney, notarized; and certificate of change of name, notarized. For a change of address, only a notarized power of attorney is required.

Licensing
License recordal is not compulsory but advisable in order to be effective against third parties.
Documents required: Power of attorney from licensor, notarized; and license agreement, notarized.

Merger
A merger may be recorded for trademark registrations only.
Documents required: Power of attorney, notarized; and certificate of merger, notarized.

Marking
Marking is compulsory.

Cancellation
A trademark may be subject to cancellation by any interested party if it is proved that the mark is not entitled to registration within the provisions of the law.

Registration Time Frame
The time frame for completing the registration process is 18 months.

Three Dimensional Trademark Applications
Admissible

Should you have any questions, or require any additional information, please do not hesitate to contact us at info@sabaip.com