Trade Marks & Copyright 2024 Comparisons

The primary legislation governing trade marks in Pakistan is the Trade Marks Ordinance, 2001 (as amended in 2023) (the “Trade Marks Ordinance”) and the Trade Marks Rules, 2004, which outline the process and procedures for all aspects related to registration, prosecution as well as enforcement.

Copyrights are governed by the Copyright Ordinance, 1962 (as amended in 2000) (the “Copyright Ordinance”), and the Copyright Rules, 1967 (as amended in 2000).

Pakistan’s legal system recognises common law trade marks under the “prior user” doctrine and protects the same through the tort of passing off.

Moreover, Pakistan also recognises well-known trade marks under Section 86 of the Ordinance, which codifies the provisions of well-known trade marks under the Paris Convention.

Pakistan is currently a signatory to several international trade mark treaties, including;

• the Paris Convention for the Protection of Industrial Property, 1883;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1994;
• the Convention Establishing the World Intellectual Property Organization;
• the Madrid Agreement, 1891, and the Protocol Relating to the Madrid Agreement, concluded in 1989;
• the Agreement Establishing the World Trade Organization; and
• the Universal Copyright Convention, 1948.

The above treaties and conventions are not self-executing; however, their application has been enforced through statutory regimes, such as the Paris Convention, TRIPS Agreement and the Madrid Protocol, all of which have become applicable through the Trade Marks Ordinance.

Pakistan is also a signatory to the following international treaties for copyright protection:

• the Berne Convention for the Protection of Literary and Artistic Works, 1886;
• the TRIPS Agreement;
• the Universal Copyright Convention;
• the WIPO Copyright Treaty;
• the Rome Convention, 1961; and
• the Marakesh Treaty.

While specific domestic statutes may not directly enforce every aspect of these treaties, they hold significant weight in Pakistani courts and relevant forums. This creates a binding obligation for Pakistan to respect and uphold the agreed-upon copyright standards, even in the absence of specific legislation.

Trade Marks

The Trade Marks Ordinance

Famous foreign trade marks termed “well-known marks” have been granted statutory protection under Section 86 of the Trade Marks Ordinance, which codifies provisions of the Paris Convention and provides that recognition as a well-known trade mark does not require registration or actual use in Pakistan. Additionally, the following provisions provide further protection to well-known marks:

• Under Section 18, if a well-known foreign trade mark has an earlier application date elsewhere, it can claim protection as an “earlier trade mark”.
• Section 25(4) provides a right of priority. Any filing for the trade mark in a convention country is considered equivalent to a regular national filing in Pakistan.

Agreements

As a signatory to the Paris Convention, Madrid Protocol, and TRIPS Agreement, Pakistan is obligated to uphold the rights of foreign trade mark holders.

Copyright

The Copyright Ordinance

As per Section 54 of the Copyright Ordinance, The central government has the authority to issue an order directing that the provisions of the Copyright Ordinance in Pakistan apply to foreign works. This includes works first published in a foreign country, unpublished works by authors from a foreign country, and works by authors from a foreign country in relation to their domicile.

However, before making such an order, the central government must be satisfied that the foreign country (other than a country with which Pakistan has entered into a treaty) in question has made or has undertaken to make provisions for the protection of works entitled to copyright under the laws of Pakistan.

The other agreements that govern the rights of foreign trade mark or copyright holders in Pakistan are as follows:

• the Berne Convention for the Protection of Literary and Artistic Works, 1886;
• the TRIPS Agreement;
• the Universal Copyright Convention;
• the WIPO Copyright Treaty; and
• the Rome Convention, 1961.

Section 2 (xlvii) of the Trade Marks Ordinance defines a trade mark as any mark that may be capable of being represented graphically and has the purpose of distinguishing the goods or services of one undertaking from that of another. Under Section 2 (xiv), a mark is defined as including a device, brand, heading, label, ticket, name (including personal name), slogan, signature, word, letter, numeral or figurative element, or any combination thereof. This definition now also includes colour, sound and three-dimensional designs. There is, however, some ambiguity regarding the protection of smells, owing to the problems of graphical representation.

In addition to the above, collective or certification marks are also protected under the Trade Marks Ordinance and are defined under Sections 82 and 83, respectively. Notably, while geographical indicators (GIs) were previously protected as a mark, the Geographical Indications Ordinance, 2020, has since established a distinct filing and protection process for GIs under its specific parameters.

The Trade Marks Ordinance also provides special protection to certain marks under Sections 87, 88 and 89 by qualifying these as marks not registrable under this Ordinance, including:

• national emblems of convention countries, including flags, armorial bearings or any other state emblems, official mark or hallmark, provided that authorisation has been obtained from the competent authorities of that convention country;
• a mark or hallmark that imitates national flags or other state emblems; and
• emblems, names, and abbreviations protected under the Paris Convention.

The Trade Marks Ordinance also provides protection to well-known marks under Section 86; the legislature protects such marks from infringement without requiring separate registration in Pakistan, which is not the case for ordinary marks.

In order to qualify for trade mark protection, a trade mark must meet the criteria set out in Section 2(xlvii) of the Trade Marks Ordinance, under which trade marks must be capable of being represented graphically and of distinguishing goods or services from other manufacturers.

Further, Sections 14 and 17 of the Trade Marks Ordinance state absolute and relative grounds for refusal. However, a notable exception exists within the Proviso of Section 14. This exception allows for the registration of trade marks initially devoid of distinctiveness, provided they have subsequently “acquired distinctiveness” and attained “secondary meaning”, thereby becoming well-known.

Factors such as evidence of use, well-known status, advertising and promotion, and consumer recognition are often considered when determining the distinctiveness of a trade mark.

The trade marks owners are granted rights under Section 39 of the Trade Marks Ordinance. Although the list is not exhaustive, it does stipulate the basic rights conferred on the registrants, which are:

• The Proprietor of a registered trade mark shall have exclusive rights in the trade mark(s) to make use of the trade mark, in respect of the goods and/or services it has been registered for.
• Registration of a trade mark is also considered prima facie evidence of proprietorship, which could result in interlocutory relief by the courts against any unauthorised use of the registered mark.

Furthermore, trade mark registration is crucial in various legal and administrative forums to enforce proprietary rights. Registration expands the reach of enforcement beyond the court system so that various government agencies and enforcement forums can be engaged, such as the Customs Authority, the Drug Regulatory Authority, the Securities and Exchange Commission of Pakistan as well as the Competition Commission of Pakistan, among others.

The rights of local trade mark owners are subject to certain conditions. Notably, the proprietor is required to put the mark into commercial use within five years from the date of registration. Failure to do so may result in the mark being subject to cancellation by a third party.

As regards the anti-circumvention rights under copyright laws, the Copyright Ordinance does not recognise this concept per se; however, since right-holders are granted blanket exclusive rights, this shall also cover anti-circumvention rights.

There are no specific legal guidelines for establishing the use of a trade mark in Pakistan. Parties may demonstrate usage through evidence like promotional and marketing materials, sales invoices, import/export documents associated with the trade mark, helping determine the use in commerce. It is also necessary to establish that the defendant’s use is likely to be regarded as a trade mark, aiming to identify and/or distinguish their goods or services, as opposed to a purely descriptive use.

The markings ® and TM denote the status of the mark in Pakistan as being registered or applied for, respectively. Although marking is not a mandatory requirement, its use is beneficial as it reduces the risk of the infringer claiming innocence by not being aware of the status or existence of proprietary rights over the mark and deters any potential infringer by illustrating legally recognised rights over the mark. Moreover, misrepresentation via marking as to the status of a trade mark also amounts to an offence under Section 102 of the Trade Marks Ordinance and is punishable by imprisonment for a term that shall not be less than one month but that may extend to six months or a fine, or both.

The scope of trade marks as laid out in the Trade Marks Ordinance is fairly broad, as a result of which there are certain elements, the protection of which may overlap with copyrights. For instance, any element that bears an artistic work such as a logo or a trade dress or packaging may be protected under both trade marks and copyrights. Moreover, surnames are registered as a trade mark they have acquired distinctiveness and obtained secondary meaning in the jurisdiction with respect to the goods. A surname being registered as a trade mark would not affect the morality of the name, nor would the same arise as an issue in registration so long as the mark is not used in a derogatory or defamatory sense.

Section 10 of the Copyright Ordinance outlines a comprehensive range of works that are eligible for copyright protection. These include:

• original, literary, dramatic, musical and artistic works;
• cinematographic works; and
• records.

Moreover, Section 2 of the Copyright Ordinance further defines the types of works that are protected in Pakistan, namely literary works, musical works, dramatic works, artistic works, cinematographic works, and records.

In Pakistan, per Section 12 of the Copyright Ordinance industrial designs are not protected under copyright law. Instead, they are governed by the Registered Designs Ordinance, 2000, and copyright protection does not apply if the design is registered under the said Ordinance or if it has been reproduced more than fifty times by an industrial process.

For a work to be eligible for copyright protection under the Copyright Ordinance, it must be original and fixed in a tangible medium of expression. This includes literary, dramatic, musical, or artistic works, as well as cinematographic works and records.

“Author” is defined under Section 2 (d) of the Copyright Ordinance as follows:

• in relation to a literary or dramatic work, the author of the work;
• in relation to a musical work, the composer;
• in relation to an artistic work other than a photograph, the artist;
• in relation to a photograph, the photographer;
• in relation to a cinematographic work, the owner of the work at the time of its completion; and
• in relation to a record, the owner of the original plate from which the record is made, at the time of the making of the plate.

The Copyright Ordinance provides that in relation to a literary, dramatic or artistic work made in the course of employment under a contract of service or apprenticeship, for publication in a newspaper, magazine or similar periodical, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright in so far as the copyright relates to the publication or reproduction of the work in such publications, however in all other respects the author shall be the first owner of the copyright.

Moreover, with respect to works made for hire, the Copyright Ordinance holds that in the case of a photograph, painting or portrait drawing, engraving or cinematographic work created for consideration (payment rather than employment) at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright.

Lastly, the Copyright Ordinance holds that in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship which does not fall under the aforementioned, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright.

Authors may also claim copyright protection anonymously or pseudonymously. Section 21 of the Copyright Ordinance provides that in case of a literary, dramatic, musical or artistic work (other than a photograph), which is published anonymously or pseudonymously, copyright subsists until fifty years from the start of the calendar year following the year of first publication. However, where the identity of the author is disclosed before the expiry of the said period, copyright subsists until fifty years from the start of the calendar year following the author’s death.

Joint authorship is also recognised under the Copyright Ordinance. Section 2(zg) defines a work of joint authorship as a work produced through the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other authors. Therefore, a work of joint authorship is considered a single piece of work and governed under the Copyright Ordinance as such. Moreover, the Copyright Ordinance holds that where one or more of the joint authors do not satisfy the conditions laid down by this Ordinance, the work shall be treated as if the other qualifying author or authors were sole author(s) thereof. The Copyright Ordinance also stipulates that the copyright term joint works is calculated from the death of the last surviving author.

While joint authors can set their terms regarding monetisation, these agreements fall under contract law.

Copyright owners are granted statutory protection against infringement of their work and, under Section 60 of the Copyright Ordinance, are entitled to seek civil remedies such as an injunction, damages or account of profits. Moreover, a copyright owner is also granted special remedies under Section 60-A of the Copyright Ordinance whereby the copyright owner is entitled to seek provisional orders from the court for recovery and preservation of infringing copies until the institution of formal proceedings. In addition to civil and special remedies, the copyright owner is also entitled to criminal remedies under Sections 66 to 74 of the Copyright Ordinance.

Moral rights protect the reputation and creative integrity of the author, which are expressed through their work. Section 62 of the Copyright Ordinance gives the author the right to prevent, or claim damages in respect of any distortion, mutilation or other modification of the said work, or any other action in relation to the said work which would be prejudicial to their honour or reputation. Importantly, the provision under Section 62 applies even if the author has assigned or relinquished their copyright in the work.

Synchronisation rights are not specifically mentioned under the Copyright Ordinance; however, synchronisation of any work requires the license or permission of the copyright owner(s).

For a work that was created and has been expressed in a tangible form for the first time, copyright protection begins from the moment of creation and typically extends throughout the author’s lifetime, continuing for an additional 50 years after their death.

In the case of a joint work prepared by two or more authors, and that was not made for hire, the copyright term extends for 50 years following the death of the last surviving author. For works made for hire, and for anonymous and pseudonymous works, the duration of copyright is 50 years from publication.

There is no requirement for a special copyright notice. However, it is highly recommended to display one as it helps to identify those who intend to obtain prior permission to use a work that does not belong to them. It also facilitates the process of establishing wilful infringement. A notice on a work can be written, stamped, typed or even painted as there is no formal procedure for this requirement. Generally, a copyright notice includes the copyright symbol © or words such as “copyright” or “Copr”. Since it is not mandatory, not using a notice does not attract legal penalties.

In Pakistan, the collective rights management system is regulated by the Copyright Ordinance, particularly Sections 31 to 34. These provisions establish a framework for performing rights societies to manage and collect fees, charges, and royalties for the public performance of works.

The Copyright Ordinance establishes a structured mechanism for performing rights societies to regulate fees and royalties. It ensures a balance between the rights of content creators and the licensing process for public performances. The provisions create legal enforceability for approved fees and promote a fair and transparent system for the collective management of copyright in the realm of public performances.

There is a Collective Organisation for Music Rights in Pakistan, also known as COMP.

Copyright registration is not mandatory in Pakistan; it arises automatically upon the creation of a work in a tangible form.

The benefits of copyright registration are that it certifies the proprietorship of the work, thereby granting exclusive rights to:

• reproduce and make copies of the work in any material form;
• publish, perform or communicate the work in public;
• produce, reproduce, perform or publish any translation or adaption of the work (ie, a derivative work);
• broadcast the work in public or use it in a cinematographic work or sound recording;
• offer the work for sale or rental and receive a payment in return;
• prevent third parties from using the work without permission or consent from the owner;
• take legal action in the event of an infringement of the work; and
• assign or license the copyrighted work to another party.

In Pakistan, copyright registration for artistic works is open to both individuals and legal entities. However, foreign applicants must partner with a local attorney to navigate the process. Once an application undergoes examination and receives approval, it becomes part of the official copyrights register maintained by the Registrar of Copyrights. This register serves as a public record, storing details like titles or names of works, author information, publishers, and copyright ownership. While the register is not currently available online to the public, any individual is entitled to obtain copies or make extracts from the register for a prescribed fee.

The mechanism for registration has been outlined in the Copyright Ordinance as well as the Copyright Rules. 

In accordance with Section 3 of the Copyright Rules, the copyrights register is divided into four parts, and an applicant can file a copyright application under any of those categories, based on the type of work for which copyright protection is sought. The categories are:

• literary, dramatic and musical works;
• artistic works;
• cinematographic works; and
• records.

Section 39 of the Copyright Ordinance and Section 4 of the Copyright Rules further state the documents that are required for registration:

• Form II, with full particulars of the applicant, including their name, address and nationality and details of the relevant work in the prescribed pro forma;
• a statement of particulars (only applies to the registration of literary, dramatic and musical works);
• a statement of further particulars;
• three copies of the application (Form II) and three copies of the work to be copyrighted (in the case of literary, cinematographic works and records, the applicant only needs to supply two copies of the work to be copyrighted);
• a no objection certificate (NOC) or affidavit for transfer of copyright from the artist or creator who created the work, if applicable (this is used in works made for hire or commissioned works); for literary works, the applicant requires an NOC or assignment of copyright from the copyright owner or writer in favour of the applicant, if applicable, and in the case of records and cinematographic works, the applicant requires an NOC for assignment of copyright from all contributors (performers, singers, lyricists and musicians) of the work, if applicable;
• undertaking or affidavit for original creativity of the work by the applicant;
• pay order of the official fee as set out in the schedule of fees in the name of the director general of the Intellectual Property Organisation; and
• a notarised power of attorney if an agent or attorney represents the applicant.

The applicant must then file Form II and pay the prescribed fees at the office of the Registrar of Copyrights in Karachi or at the IP offices in Lahore, Peshawar or Islamabad. Only one application can be filed for one work. Furthermore, in accordance with Section 39(2) of the Copyright Ordinance, if the applicant is applying for registration of an artistic work, they must advertise the work in either an English or Urdu language newspaper where they are domiciled or carry out business activities within one month of filing the application or within a longer timeframe as determined by the Registrar of Copyrights, and send two copies of the advertisement to the Registrar of Copyrights. The advertisement must be in the prescribed format as set out in Section 39(2) of the Copyright Ordinance and Section 4(3.A) of the Copyright Rules. The applicant applying for registration must send a copy of their application to every person who claims or has an interest in the subject matter of the copyright or disputes the rights of the applicant.

The copyright registration fee varies for each type of work and is subject to change. Therefore, it is advisable to verify the current fees on the official Intellectual Property Organisation’s website. As of 2023, the total official costs are under USD100.

Providing incorrect information in connection with a copyright application or filing may lead to the rejection of the application or amendments to correct inaccuracies, as outlined in the Copyright Rules. The decision for such corrections lies with the Registrar of Copyrights, who may act on their own motion or in response to objections raised by a third party. Additionally, the Board has the authority to order rectification of the register upon application by the Registrar of Copyrights or any aggrieved person, allowing for the making, expunging, or correction of entries, if so challenged by a third party.

Moreover, the Copyright Ordinance provides that anyone who provides false entries or produces false evidence or particulars (under Section 68); false statements to deceive an official (Section 69) or false attribution of authorship (Section 70), may be punished with imprisonment for up to two years or a fine of up to PKR100,000, or both.

Further, if the copyright owner wishes to change certain particulars of the copyright, or correct certain incorrect information, they may do so by submitting Form III to the Registrar of Copyrights per Rule 4(1) of the Copyright Rules.

A copyright application may be refused on different grounds such as lack of originality in a fixed tangible medium of expression but not based on the underlying idea itself. There are several categories of materials that cannot be copyright-protected. These include:

• works that have not been fixed in a tangible form of expression;
• ideas, procedures, systems, methods, processes, principles, discoveries or devices that are not embodied in a particular work;
• works comprising information that is considered common property and has no original authorship, such as facts in a biography, standard calendars and lists or tables taken from a public document;
• works that infringe another’s work or IP; and
• works that are registered as an industrial design.

An appeal against an application refusal can be made to the Copyright Board within three months of the date of such decision. The decision of the Board is then final and cannot be further appealed and/or challenged.

While there might be an overlap between copyright and trade mark in cases involving logos, artistic designs, trade dress, and packaging, there is no specific provision that safeguards copyright as an integral part of trade marks. However, despite the absence of such a provision, the Copyright Registry favours registered trade mark owners. Additionally, the courts of Pakistan have held that a copyright registration cannot be utilised as a substitute for trade mark protection and thus, in cases of vendible goods, it is essential for a copyright application to be supported by a trade mark registration.

Being a common law jurisdiction, Pakistan recognises rights of a prior user and/or adopter, irrespective of registration, meaning the use of a trade mark or service mark can be claimed before registration is granted or issued. However, in the event of any dispute, proof of bona fide use may have to be submitted.

That said, while registration is not mandatory to establish rights in a trade mark, it does offer substantial benefits and protections. Registering a trade mark provides the owner with a statutory right to exclusivity, making it easier to enforce and protect the trade mark against infringement.

While trade mark rights arise from actual use, 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. In Pakistan, this intention-to-use provision aligns with the principle that trade mark rights can be established through both actual use and a bona fide intention to use in the future. However, Section 73 of the Trade Marks Ordinance specifies that if a registered trade mark has not been used or if its use has been suspended in Pakistan for a continuous period exceeding five years from the registration of that trade mark, it becomes liable for revocation on the grounds of non-use.

Section 39 of the Trade Marks Ordinance grants exclusive rights to the proprietor of the trade mark from the date of registration. These include the rights to obtain relief where the trade mark has been infringed.

The effects of trade mark registrations are outlined in Section 33 of the Trade Marks Ordinance. It provides that the owner of a registered trade mark enjoys exclusive rights in the trade mark and any unauthorised use of the trade mark in Pakistan without the proprietor’s consent constitutes infringement.

In addition to the above, the registration of a trade mark in the courts of Pakistan is considered prima facie evidence of proprietorship, 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 expands the reach of enforcement so that various government agencies and enforcement forums can be engaged, such as the Customs Authority, the Drug Regulatory Authority, the Securities and Exchange Commission of Pakistan as well as the Competition Commission of Pakistan, among others.

All trade marks undergo the same procedures as set out in the Trade Marks Ordinance and the Trade Marks Rules, 2004.

Per the Trade Marks Ordinance, there is a trade marks register containing details of all registered trade marks, but it is not currently accessible online. However, the public can access it for inspection at the designated office via a dedicated portal. This portal serves as a valuable tool for conducting clearance searches against the official database.

Furthermore, official search requests of the trade marks register can be made using form TM-55. Each search application covers a single trade mark within a specific class and requires submission of two representations of the mark along with the search fee of PKR1,000 Pakistani.

Section 20 of the Trade Marks Ordinance permits a proprietor of a trade mark to have multiple trade marks for the same goods or services. If these trade marks appear similar but differ in aspects like statements or representations regarding the goods and services or details such as price, colour or any other non-distinctive character, they will not be considered identical and can be registered as a series under one registration application.

A registered trade mark is valid for a period of ten years from the date of its application.

Prior to the expiry of the period of ten years, the trade mark subject to Section 35 of the Trade Marks Ordinance, can be renewed. The Registrar of Trade Marks is required to notify the owner of a registered trade mark about its upcoming expiry and 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 expiration 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 registration by paying an additional renewal fee as prescribed.

If a trade mark is not renewed, the Registrar of Trade Marks has the authority to remove it from the Register. However, the Registrar of Trade Marks may consider restoring 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 substantially impact the identity of the trade mark. In the event that the alterations are of such a nature as to materially alter the application, the Registrar of Trade Marks will publish the modified trade mark.

While alterations to the original mark and/or the identified goods or services cannot be amended for registered marks, applications currently awaiting registration may be amended by submitting the prescribed TM-16 form.

An application for the registration of a trade mark must be in hard copy using the prescribed form, setting out the particulars of the applicant, 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 applications; 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, the application, per Rule 16, must provide a detailed statement indicating the period and user of the mark in relation to the specified goods or services. The Registrar of Trade Marks has the authority to request an affidavit and exhibits as evidence of such usage. 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, containing all necessary particulars as specified by the Registrar of Trade Marks, with the possibility of requiring the applicant’s signature on the provided particulars.

A trade mark application is filed using form TM 1 with 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 partners.

There is no requirement for using 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 genuine use of a trade mark, it 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.

During examination of a trade mark application, the Trade Marks Registry only considers those marks that are on the register, whether registered or pending.

The owner of a prior registration may provide consent to the registration of a given application and this may include a recitation of facts and reasons for the absence of the likelihood of confusion and may strengthen the subsequent application and demonstrate the parties’ understanding. However, an assignment/assignment-back procedure is a purely contractual arrangement between the parties.

Applications are published in the Trade Marks Journal for opposition under Section 28(2) of the Trade Marks Ordinance, providing an opportunity for third parties to file oppositions. If a third party wishes to oppose the registration, they must submit a notice of opposition within the specified period, as outlined by the Trade Marks Ordinance. The primary grounds for such oppositions are detailed in Section 29 of the Trade Marks Ordinance.

Upon receiving the notice of opposition from the third party, the applicant must file a counter-statement within two months; failing to do so would result in the application being abandoned. If the applicant files a counter-statement, the matter is taken up for evidence and subsequently a hearing takes place. Upon completion of the hearing, the Registrar of Trade Marks makes a decision to either grant or deny the registration of the trade mark.

Any interested party may file a trade mark opposition. However, the opposition must adhere to Section 29 of the Trade Marks Ordinance, which outlines the grounds for opposition. These grounds include the rejection criteria specified in the Trade Marks Ordinance, with the exception of the graphical representation requirement.

Opposition can be based on the applicant’s lack of intent to use the trade mark in Pakistan, non-assignment to a body corporate or grounds such as the applicant not being the true proprietor, improper amendments to the application, acceptance based on false evidence, or unjustified pre-acceptance advertisement. Opposition may also be raised against the registration of a trade mark that is substantially identical or deceptively similar to an earlier mark which includes a registered trade mark as well as a well-known mark, causing dilution or confusion. Furthermore, opposition can be made if the trade mark contains a geographical indication for goods not originating from the stated region.

It is possible to amend or correct an application for a trade mark during the registration process through the prescribed TM-16 form. Material alterations are also allowed, depending on the application stage, and such alterations are subject to the approval of the Registrar of Trade Marks and republication in the official Trade Marks Journal. The approval of material alterations may be contingent on factors such as the nature of the changes and their impact on the registrability of the mark.

It is possible to divide a trade mark application through the prescribed TM-14 form.

A divisional application can be filed by an applicant who has already submitted an application for the registration of a trade mark under Section 22 of the Trade Marks Ordinance. The divisional application allows for:

• the registration of part of a trade mark for any or all of the goods, services, or both; or
• the registration of the trade mark for some of the goods, services, or both covered in the original application.

The divisional application can only be made if the original application under Section 22 is pending. The divisional application proceeds similarly to an application made under Section 22 and is considered to have been filed on the same day as the original application.

Providing incorrect information in connection with a trade mark application or other filing can result in various consequences. Rejection or cancellation of the trade mark application may occur if false information is discovered. Loss of rights is another potential outcome and opposition to trade mark registration can be based on the grounds that the application was accepted due to false representations or evidence. Section 29(3)(c) addresses opposition on such grounds. Additionally, Section 99 of the Trade Marks Ordinance provides penalties for false trade descriptions, including imprisonment for up to two years and/or fines starting at PKR50,000.

Incorrect information may be corrected by submission of the prescribed TM-16 form, and upon the subsequent approval of the Registrar of Trade Marks. 

In Pakistan, the registration of a trade mark can be refused by the Trade Marks Registry based on absolute grounds, as outlined in Section 14 of the Trade Marks Ordinance. These grounds encompass various circumstances aimed at ensuring the distinctiveness and appropriateness of registered marks. Firstly, marks that fail to meet the requirements specified in Section 2(xlvii) can face refusal. Additionally, trade marks devoid of distinctive character or consisting exclusively of descriptive marks that may indicate various characteristics of goods or services may be declined. Marks that have become customary in language or trade practices, or shapes resulting from the nature of goods, necessary technical results, or those giving substantial value to goods, are also subject to refusal.

The law further prohibits registration for marks containing scandalous designs, matters likely to deceive or cause confusion, or elements contrary to existing laws or morality. Notably, even if a mark initially appears lacking in distinctiveness, descriptiveness, or originality, it can still qualify for registration if it has acquired a distinctive character through prior use or is recognised as a well-known trade mark before the application date. Moreover, registration is barred for marks made in bad faith, reflecting the importance of ethical considerations in trade mark applications.

When objections are raised, the applicant is provided with an opportunity to respond and address the cited concerns. The general basis for overcoming objections depends on the nature of the objection. Applicants typically respond to objections by submitting a detailed written response addressing each concern and providing supporting documentation.

In case of refusal or conditional acceptance, the Registrar of Trade Marks provides in writing the grounds for the decision. In accordance with Section 114 of the Trade Marks Ordinance the avenue for challenging a decision of the Registrar of Trade Marks is through the appeal process. The appeal is made to the high court of the relevant jurisdiction. The appellant is required to submit the appeal to the high court, detailing the grounds for appeal, along with documentary support and evidence. The appeal process involves a thorough review by the high court, considering the presented evidence and legal arguments. The decision of the high court may affirm the refusal, modify the decision, or reverse it, thereby allowing the trade mark registration.

In accordance with Section 85 of the Trade Marks Rules, 2004, an applicant has a period of two months from the date of the decision to file its appeal before the relevant high court. While no application for extension of time may be made, the high court may allow any time-barred appeal should the appellant provide genuine reasons for failure to file the appeal in time. However, any such extension is purely at the discretion of the high court.

The Trade Marks (Amendment) Act, 2023, has been enacted, introducing international registration under the Madrid Protocol. While the substantive law is the same for international registrations, procedural requirements have been introduced under which an application must be examined within eighteen months of filing so as to avoid registration without examination as granted under the Madrid System.

When applications are published in the Trade Marks Journal, anyone can challenge their registration by filing a “Notice of Opposition” within two months from the date of advertisement/re-advertisement. This document must be submitted on the designated form (TM-5)in accordance with Rule 30 of the Trade Marks Rules and within two months from the date of advertisement/re-advertisement.

If an individual requires more time to file an opposition, they can request an extension from the Registrar of Trade Marks. The registrar has the authority to grant up to two one-month extensions. Furthermore, Rule 80 (5) of the Trade Marks Rules, 2004, allows for the submission of a request for an extension even after the initial opposition period and any granted extensions have elapsed. Granting such an extension is at the discretion of the Registrar of Trade Marks, who must ensure that it does not unfairly disadvantage any other involved party.

In the realm of trade mark opposition proceedings, while there is no formal provision for a cooling-off period, it is commonly accepted and practised. During this time, parties involved may request an extension from the Registrar of Trade Marks to delay proceeding on the merits of the case. This delay allows parties the opportunity to explore the possibility of reaching an amicable settlement.

Section 29 of the Trade Marks Ordinance outlines the grounds for filling an opposition, which are as below:

• 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 graphically;
• the applicant’s lack of intention to use the trade mark in Pakistan;
• the applicant is not the true proprietor of the trade mark;
• procedural issues, such as unauthorised amendments to the application or false evidence leading to the Registrar of Trade Marks’ acceptance;
• pre-acceptance advertisement of the application under exceptional circumstances being without sufficient cause or reason;
• the applicant’s trade mark is deceptively identical or substantially similar to a well-known trade mark with a reputation in Pakistan;
• the applicant’s trade mark is likely to cause confusion, deception and dilution of another trade mark’s reputation; and
• the trade mark contains or consists of a mark that is a geographical indication for goods originating outside the specified country or region in the application

The law recognises the concept of dilution of a trade mark and makes it a valid ground for opposition proceedings.

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, or the notice of opposition may be dismissed by the Registrar of Trade Marks.

The official fee for filing a notice of opposition for one application is PKR9,000. Attorney fees range between PKR50,000 and PKR250,000 depending on factors such as the complexity of the case, the grounds of opposition and the specific services provided by the attorney.

Trade mark opposition proceedings are initiated through the filing of a Notice of Opposition (form TM-5) within two months of the trade mark’s advertisement. This notice must state the grounds for opposition, and a copy is provided to the applicant by the Registrar of Trade Marks.

In response to the notice, the applicant must submit a counter-statement (form TM-6) within one month, although the Registrar of Trade Marks may allow an extended period. Failure to do so results in the application being deemed abandoned. The Registrar of Trade Marks then forwards a copy of the counter-statement to the opponent, who has one month from receipt to file a rejoinder.

Following this exchange, the process move to the evidential stage. The opponent is obliged to submit evidence supporting their opposition within two months of the counter-statement. Failure to provide evidence leads to the abandonment of the opposition. The applicant has two months from receiving the opponent’s evidence to present their supporting evidence.

The law further allows the opponent to file counter-evidence within one month of receiving the applicant’s evidence, limited to matters in direct response. The Registrar of Trade Marks has the discretion to permit additional evidence under certain conditions if it is considered necessary. In instances where providing copies of evidence is not feasible, the original documents are kept with the Registrar of Trade Marks for inspection and must be produced at the hearing unless otherwise directed.

After the evidential stage, the Registrar of Trade Marks notifies both parties of the hearing. At the hearing, and/or upon its completion, the parties may present their written arguments, which the Registrar of Trade Marks records.

Finally, once the hearing stage is concluded, the Registrar of Trade Marks reviews all arguments, evidence, and any other relevant material. Based on this comprehensive review, a decision is made regarding the Notice of Opposition.

In Pakistan, any party dissatisfied with a decision made by the Trade Marks Registry has the right to appeal to the high court within the relevant jurisdiction. Should further appeal be necessary, the next step is the Supreme Court of Pakistan. However, before appealing to the Supreme Court, the aggrieved party must first obtain leave to appeal – ie, permission for the appeal to be heard. The Supreme Court’s decision on the matter is final.

The appeal process, while providing an avenue for recourse, lacks a fixed timeframe. The duration of the appeal proceedings can vary, influenced by factors such as case complexity and the caseload of the high court and/or the Supreme Court.

Furthermore, for an appeal to be initiated, the decision from the Trade Marks Registry must have reached a point of finality.

Statutory limitations are determined based on when the applicant becomes aware of the pertinent facts. Generally, the law sets a limitation period of three years from this date of knowledge. However, the Trade Marks Ordinance introduces a specific provision under Section 81. According to this, if an owner of an earlier trade mark, or any related earlier rights, has knowingly allowed the continuous use of a registered trade mark in Pakistan for a period of five years from its date of registration, they will lose their entitlement to claim any right based on that earlier trade mark or rights.

Trade Marks

Pursuant to Section 73 of the Trade Marks Ordinance, 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 uninterrupted period of five years without proper reasons;
• becoming a common name in the trade due to the proprietor’s acts or inactivity; or
• misleading the public about the nature, quality, or geographical origin of the goods or services through its use.

Pursuant to Section 80 of the Trade Marks Ordinance, a trade mark registration may also be invalidated if:

• 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 will not be declared invalid if it has, through its use, subsequently acquired a distinctive character in relation to the goods or services for which it is registered; or
• there is (i) an earlier trade mark in relation to which the conditions set out in subsection (1), (2) or (3) of Section 17 obtain; or (ii) there is an earlier right that satisfied the condition in subsection (4) of Section 17, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

Trade Marks

The application for revocation or cancellation may be made by an interested party who has to establish sufficient cause in the matter.

Copyright

The application for rectification of a copyright may be made by any individual who is aggrieved by the registration of that copyright.

Trade Marks

In light of the Trade Marks Amendment Act, 2023, a revocation/cancellation of a trade mark under Section 73 of the Trade Marks Ordinance may be filed before the Registrar of Trade Marks except where proceedings concerning the trade mark are pending in the High Court, in which case the application shall be made to the high courts. Moreover, under Section 80 of the Trade Marks Ordinance, an applicant may file the application before the Registrar of Trade Marks or the high courts; however, in the event that proceedings concerning the marks are pending at a high court, the application shall be made to the high court.

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. Section 73 and Section 80 of the Trade Marks Ordinance provide that where grounds for 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 solely as regards those goods or services.

An amendment is allowed in revocation/cancellation proceedings subject to the other party’s consent. In many instances, a party may oppose such amendment; in this case, the matter is left to the discretion of the competent court/relevant registrar.

Historically, when cases are before the same forum, a revocation/cancellation and an infringement action are heard together. However, with the promulgation of the Trade Mark Amendment Act, 2023, a revocation/cancellation shall be filed before the high courts and therefore have a separate timeline.

When a registration is challenged on the grounds of fraudulent filing, there are no distinct provisions in place for conducting a separate investigation specifically for such cases. Instead, the same procedures that apply to other grounds for cancellation or revocation of a registration are followed.

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 registered trade mark is made using forms TM-23 or TM-24 along with the prescribed fee. The registration certificate, along with the company’s incorporation certificate and a board resolution, 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 satisfied that all the correct documents have been submitted and no third-party interests shall be affected, the Registrar of Trade Marks issues a certificate of assignment validating the assignment of the trade mark in the name of the assignee.

Section 69(3) of the Copyright Ordinance permits partial assignment, meaning an assignment can relate to some but not all goods or services for which the trade mark is registered or be specific to the use of the trade mark in a particular manner or in a particular locality.

Assignment of a Copyright

Section 14 of the Copyright Ordinance provides that an owner of copyright in an existing work or a prospective owner of a future work can assign to any individual their copyright either wholly or partially, and this right can be subject to certain limits set by the owner. These limitations include the time frame of the assignment (ie, it can include the entire length of the term of copyright protection or can be for a specific time period).

In the case of future works of copyright, the copyright is assigned only when the work comes into existence. Where the owner of the copyright is also the author of the work, the assignment of the copyright in the work is only effective for a period of ten years. This is an express statutory limitation.

Upon expiration of the ten-year period, the assignment of the copyright will revert back to the owner, who is then free to reassign the copyright. If the owner is deceased, their rights will be assigned to their heirs or legal representatives, who shall have the same rights as them in the work. This statutory period of limitation does not apply to any assignment made in favour of a government, educational, charitable, religious or non-profit institution.

In terms of the assignment of copyright in unpublished works that has been assigned by its author to any person or organisation that wishes to publish the work, the rights of the work revert back to the author if the work is not published within three years of the date of assignment.

Section 14(2) of the Copyright Ordinance stipulates that upon assignment, the assignee, in respect of the rights that have been assigned to them, and the assignor, in respect of the rights not assigned to them, are treated as the owners of the copyright for the duration of the assignment. The special rights of the author are also valid during the period of assignment, and they can take legal action if any alteration to their work damages their honour or reputation.

Any owner or publisher of the copyright, or any publisher who has the copyright assigned to them, can apply to the Copyright Board if they consider any terms of the assignment to be adverse to their own interests within one year of the assignment. The Board will hear from both parties and consider the matter. The order of the Board will be binding on both parties in accordance with Section 14(2A) of the Copyright Ordinance.

All assignments are valid only when an agreement is made in writing and signed by the assignor or their duly authorised representative. Any assignment of copyright can be registered with the Registrar of Copyrights once a party files the prescribed form with the Copyrights Registry, which will then record the grant of assignment on its database.

Licensing of a Trade Mark

A trade mark may be licensed exclusively or non-exclusively, in whole or in part, limited by conditions or unlimited and may be governed by a specific term or be perpetual. Terms of license depend upon the understanding and agreement of the parties and while it is not necessary to register a license agreement, it may be recorded with the Trade Marks Registry under Section 70(2)(b) of the Trade Marks Ordinance.

Licensing of Copyright

Section 35 of the Copyright Ordinance provides that the copyright owner has the right to license their work to third parties. The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the copyright by licence in writing, signed by the author or their duly authorised agent.

A trade mark and copyright can be assigned during the registration process by submitting the requisite form stipulated in the relevant rules. Moreover, it is also possible to grant a license for a pending trade mark or copyright.

Section 70 of the Trade Marks Ordinance requires that a person entitled to an interest in or under a registered trade mark due to a registrable transaction must have the details of that transaction entered in the trade marks register. Therefore, until an application has been made for the registration of these particulars, the transaction will not be effective against a person acquiring a conflicting interest.

Moreover, until an application has been made for the registration of the transaction, a person claiming to be a licensee will not be afforded the following protections:

• provisions permitting the assignment of trade marks (Section 69);
• provisions safeguarding the rights of the licensee in cases of infringement (Section 77); or
• provisions allowing the surrender of trade marks by the proprietor (Section 79).

Authors or their legal heirs have the right to recapture transferred rights for copyrighted works under certain circumstances. The Copyright Ordinance stipulates the duration of copyright assignments made by authors. As outlined in Section 14 of the Copyright Ordinance, any assignment of copyright or any interest in the copyright by the author is not valid beyond a ten-year period. This means that if an author assigns the copyright of their work, this assignment can only be effective for up to ten years. Following this duration, the copyright reverts back to the author. In the event that the author has passed away, the copyright then reverts to the author’s legal heirs or representatives in interest.

The author, after the reversion of the copyright, may re-assign the copyright in the work subject to the provisions of the Copyright Ordinance. Further, if the copyright in an unpublished work is assigned by its author for the specific purpose of publication, and if the work is not published within three years from the date of assignment, the copyright in the unpublished work shall revert to the author.

In Pakistan, Section 70 of the Trade Marks Ordinance provides a mechanism for registering transactions affecting registered trade marks, including assignments, licenses and security interests. To utilise this provision, an application must be submitted to the Registrar, detailing the transaction. Registerable transactions encompass, inter alia, the granting of security interests over a registered trade mark. However, until registration, the transaction’s effectiveness against conflicting interests is limited. Moreover, registration provides certain protections to licensees.

In contrast to trade marks, copyright law in Pakistan does not explicitly address the registration of security interests or transactions. Consequently, there is no statutory provision equivalent to Section 70 for trade marks.

Per the Limitation Act, 1908, a claim of copyright infringement must be made within three years of the date on which the claimant became aware of the infringement.

In Pakistan, the approach to addressing infringement issues varies between trade mark and copyright owners, largely depending on whether the IP is registered or unregistered.

For trade mark infringement, the case typically involves direct infringement. This occurs when an identical or deceptively similar mark is used, potentially infringing on the goodwill of the registered trade mark, making undue profits, or unfairly leveraging commercial interests. A crucial aspect to note here is that a claim of trade mark infringement necessitates the trade mark to be registered. In cases where the trade mark is not registered, any challenge to its use must be made on the basis of a passing-off action. Whether it is a registered trade mark infringement or a passing-off action, the plaintiff is required to demonstrate a prima facie case. This involves substantiating rights either through prior use (in passing-off actions) or through trade mark registration, along with evidence of potential irreparable loss and a balance of inconvenience favouring the plaintiff.

Copyright infringement may involve unauthorised reproduction, distribution, or display of protected works. Legal remedies include seeking damages and injunctive relief under civil law as well as imprisonment and/or fines under criminal law. Specific copyright management information claims, akin to Article 12 of the WIPO Copyright Treaty, may be available.

Trade Marks

Sections 40 and 46 of the Trade Marks Ordinance outline the following grounds for trade mark infringement:

• use of an identical mark for identical or similar goods/services;
• use of a deceptively similar mark causing confusion;
• use of a mark identical or deceptively similar to a well-known mark for dissimilar goods/services, taking unfair advantage or causing detriment;
• use of the trade mark as a trade or domain name without consent;
• application of the trade mark to goods labelling or packaging without authorisation; or
• sale or possession of goods with an infringing mark, with a burden to prove innocence by demonstrating reasonable precautions and lack of suspicion.

Copyright

Section 56 of the Copyright Ordinance outlines the following grounds for copyright infringement:

• An individual, without obtaining consent from the copyright owner or a license from the Registrar, undertakes any action that is exclusively reserved for the copyright owner.
• An individual allows their premises to be used for profit-making activities that infringe upon copyright.
• An individual, for commercial purposes, makes, sells, displays, distributes, or imports infringing copies of a work.

In a trade mark infringement action, essential parties include the trade mark owner whose rights are infringed and the unauthorised user of the trade mark. A third party who is not the trade mark or copyright owner cannot bring an action of infringement unless it has been conferred the right to do so by the proprietor of the trade mark. In cases of licensees, the same may bring an action under Section 77 of the Trade Marks Ordinance. This section stipulates that if a licensee decides to pursue an infringement action, they must include the proprietor of the trade mark either as a plaintiff or a defendant in the case.

For copyright infringement, the owner can initiate legal action even without registering the work.

While third parties can join both copyright and trade mark infringement actions, they must file an application demonstrating that they are a proper and/or necessary party in the proceedings.

Class actions in Pakistan are restricted to instances where there is a violation of fundamental rights affecting a group or class of individuals who are unable to seek redress individually. In such cases, the traditional rule of locus standi can be set aside, and the procedure available in public interest litigation can be employed. It is important to note that while class actions are recognised in the context of fundamental rights, they have not been observed in the realm of trade marks or copyrights in Pakistan.

There are no prerequisites for filing a trade mark or copyright lawsuit.

After the promulgation of the Intellectual Property Organization Act of 2012, all suits relating to the infringement of IP shall be instituted before Intellectual Property Tribunals (IPTs). The jurisdiction of these tribunals is confined to the territorial limits of each province. The Sindh High Court at Karachi enjoys special pecuniary jurisdiction as the court of first instance for cases valued over PKR6.5 million. However, the Sindh High Court has recently clarified that the exclusive jurisdiction for IP infringement matters lies with the IPTs. Consequently, all court cases involving such matters must be initiated before these tribunals.

Regarding appeals, any party dissatisfied with a decision made by an IPT can appeal to the relevant high court. Further appeals can be made to the Supreme Court of Pakistan, which shall first grant leave for appeal to admit the same.

Costs for infringement or dilution actions, covering trial and appeal, typically range from PKR2.5-3 million or more, including attorney fees. While legal representation is not mandated, it is advisable for parties to engage an attorney.

Foreign trade mark owners can bring infringement claims under the protection of the Paris Convention, incorporated into the Trade Marks Ordinance through Section 86. Such owners have the right to seek an injunction against the use in Pakistan of a trade mark that is identical or deceptively similar to their well-known trade mark, irrespective of the registration or use of such marks in Pakistan. Similarly, foreign copyright holders can enforce their rights through the international treaties that Pakistan is party to.

The initial pleading standards for a complaint or document filed to initiate a trade mark or copyright lawsuit typically involve providing sufficient detail and specificity to establish a prima facie case. The complaint should include essential facts and elements necessary to support the legal claims being asserted. While there may not be an explicit requirement for a heightened level of detail, the pleading should present a plausible case for the alleged infringement or violation.

While these have not been given in the Trade Marks Ordinance, special provisions for lawsuits in trade mark proceedings may include specific requirements related to the use and registration of trade marks, such as providing details about the marks involved, their classes, and evidence of prior use or registration.

Parties are also allowed to supplement pleadings with additional arguments or evidence upon filing a necessary application under the Code of Civil Procedure, 1908.

Defendants in trade mark or copyright actions may have the opportunity to initiate a counterclaim or file a separate lawsuit in response. For example, a defendant may assert claims of non-infringement, challenge the validity of the plaintiff’s trade mark or copyright, or bring claims such as cancellation of a registered mark.

An alleged trade mark or copyright infringer can file a suit under Section 52 of the Trade Marks Ordinance for “groundless threats”. This action is particularly applicable in situations where the individual either faces or fears being unjustly threatened with trade mark infringement. Further, a defendant can only protect themselves by defending the legal action relying on grounds such as honest and bona fide use, showing that the mark was used by the defendant for a period of five years with the plaintiff’s knowledge, thereby invoking the principle of acquiescence. Moreover, the defendant may also challenge the registration in question if the plea is that the trade mark in question does not meet the criteria laid out in the Trade Marks Ordinance.

There is no distinction under the law for small claims. All suits or actions relating to infringement shall be instituted before the competent IPT.

The Trade Marks Registry and Copyright Registry do not make decisions on infringement per se. They may adjudicate on similarity and/or dissimilarity of marks during opposition proceedings, however the tribunals are not bound by such decisions. That said, the decisions of Trade Marks Registry or Copyright Registry carry a substantive weight.

Trade Marks

The Trade Marks Ordinance defines “counterfeit trade mark goods” as unauthorised products, including packaging, that carry a trade mark identical or indistinguishable from a validly registered mark.

Actions against counterfeit export include filing a complaint against the clearance of counterfeit or infringed goods in accordance with the supplement to the Customs Rules, 2001, namely Statutory Regulatory Order (SRO) No 170(1)/2017, dated 16 March 2017, which empowers customs officers in Pakistan to act against the import and export of counterfeit goods by seizing or confiscating the goods.

Furthermore, counterfeiting is also a criminal offence under Section 478 of the Pakistan Penal Code. Criminal sanctions include imprisonment, fines and the destruction of infringing goods.

Copyright

The Copyright Ordinance defines counterfeit copy as an imitation of another copy that appears to be genuine, but is not. The penalty for distribution of counterfeit work for the purposes of business, profit or gain is punishable with imprisonment of up to three years or a fine of up to PKR100,000 or both. Counterfeit goods may be seized by an application made under the Copyright Ordinance.

The legal framework for trade mark and copyright proceedings in Pakistan is provided by the Trade Marks Ordinance, and the Copyright Ordinance, respectively. These matters are heard in IPTs, with provincial jurisdiction. The proceedings in these tribunals are adversarial, presided over by a single judge who makes decisions based on both written and oral submissions and pleadings. The judge is entitled to seek expert advice and call upon expert witnesses in cases relating to technical expertise.

The registration of a trade mark and/or copyright is considered as prima facie evidence of proprietorship which could result in instant relief by the courts in the form of an interlocutory injunction against any unauthorised use.

Section 40 of the Trade Marks Ordinance lays out the test for infringement. Subsections (1) and (2) state that infringement occurs if the alleged infringer uses a mark that is identical to the registered trade mark in relation to identical goods or services, or if the mark is deceptively similar and used in connection with goods or services identical or similar to those for which the trade mark is registered.

Pakistan’s legal system provides mechanisms for obtaining relevant information and evidence in trade mark or copyright actions through the process of discovery. There are two types of discovery: discovery as to facts and discovery as to documents. Parties, with the tribunal’s permission, can submit written interrogatories to the other side, seeking specific information. The tribunal may also grant requests for the production of documents, considering their relevance to the case. Interrogatories must relate to a genuine matter in dispute and be answered through an affidavit. The tribunal can direct parties to provide more detailed answers if necessary. Failure to comply with discovery directions may result in serious consequences. For the plaintiff, this could mean the dismissal of their suit, while for the defendant, it might result in the loss of the right to defend their case.

The evidential stage is pivotal in trade mark and copyright infringement actions. Once the pleadings have been filed, and issues have been framed, the matters proceed towards submission of evidence, where both parties submit their documentary evidence (including surveys, if need be) as well as list of witnesses. Both parties are permitted discovery, and testimony is typically presented live. The tribunal allows the inclusion of expert witnesses, whose contributions are confined to matters within their expertise. The tribunal may also call an expert to assist in the process of adjudication.

Costs for infringement or dilution actions, including trial and appeal, vary from PKR2.5-3 million or more. While the law does provide for the recovery of costs, it is important to note that Pakistani courts generally exhibit a degree of reluctance in granting these recoveries. Even in instances where cost recovery is granted, the amounts reimbursed often represent only a small fraction of the total expenses incurred.

Trade Marks

The criminal enforcement mechanism is governed by the Criminal Procedure Code, 1898; however, trade mark infringement is not a cognisable offence, meaning law enforcement agencies do not have the authority to act independently in such cases. Therefore, a complainant must file a private complaint before the tribunal. The tribunal examines the private complaint’s admissibility, and if satisfied, the presiding officer may issue notices or warrants to the accused infringer.

Additionally, a trade mark holder may take action with the assistance of the customs authorities to prevent the import or export of infringing goods.

Copyright

Infringement of copyright entails criminal liability. Under Section 60-A of the Copyright Ordinance, copyright owners who encounter infringement and have valid reasons for delays can seek immediate provisional orders from the courts.

Moreover, copyright infringement is a cognisable offence and thus, under Section 74(1) of the Copyright Ordinance, police are granted powers to seize infringing copies and related equipment without a warrant. The proper mechanism is to file a complaint with the relevant IP office.

Additionally, a copyright holder may take action with the assistance of the customs authorities to prevent the import or export of infringing goods.

In Pakistan, various defences against trade mark infringement may be invoked, and some of these defences are recognised by statute. The key defences include:

• acts done in good faith;
• honest concurrent use;
• own-name defence;
• comparative advertisement;
• disclaimers on a trade mark registration;
• non-use and objection for non-use;
• abandonment;
• rights granted by a license;
• fair use; and
• acquiescence.

These defences are not necessarily total bars to liability and their applicability depends on the specific facts of each case. The elements of these defences may vary and their recognition may be influenced by statutory provisions, common law principles and judicial interpretation.

Pakistani law recognises “fair use” under the Copyright Ordinance. Section 57 of the Copyright Ordinance outlines certain acts that do not constitute infringement of copyright. These include fair use exceptions, such as fair dealing with a literary, dramatic, musical, or artistic work for the purpose of research or private study, criticism or review, whether of that work or of any other work. Furthermore, the section expands on the fair dealing with a literary, dramatic, musical, or artistic work for the purpose of reporting current events in a newspaper, magazine, or similar periodical and also by broadcast or in a cinematographic work or by means of photographs.

These provisions allow for the limited use of copyrighted works in specific contexts without obtaining the owner’s consent. The factors considered in fair use analyses are outlined in the statute and include the purpose of use (eg, research, criticism, reporting current events) and the nature of the work being used.

While Pakistan does not explicitly recognise an exception to copyright infringement based on satire or parody, the general fair use provisions in Section 57 of the Copyright Ordinance may provide some flexibility. The interpretation of whether a particular use qualifies as satire or parody and falls under fair dealing is left to the discretion of the relevant authority.

While Pakistan does not explicitly recognise an exception to copyright and/or trade mark infringement based on the right to free speech and/or information, the general fair use provisions in Section 57 of the Copyright Ordinance may provide some flexibility. The interpretation of whether a particular use qualifies as free speech and/or information and falls under fair dealing is left to the discretion of the relevant authority.

There is no explicit provision for a private copying exception within the Copyright Ordinance. However, if the use of copyrighted material is non-commercial, it might be considered “fair” and therefore not an infringement.

While the Copyright Ordinance and the Trade Marks Ordinance do not have a safe harbour defence per se, the concept is still likely to be implemented as a general principle of how liability is to be imposed. In lawsuits for infringement in Pakistan where intermediaries such as internet service providers (ISPs) or internet platforms are involved as defendants, the courts have shown a tendency to dismiss these entities from proceedings once the infringing content has been removed and if they demonstrate a lack of knowledge about the copyrighted nature of the content or its infringing status.

This approach is also reflected in the recently promulgated Removal and Blocking of Unlawful Online Content Rules, 2021.

Further, Section 60 of the Copyright Ordinance, which provides civil remedies for infringement, also provides a useful indication of how courts may treat ISPs. It states that if infringement took place but the defendant was unaware of a copyright subsisting in said work, the remedy shall be limited to an injunction and the profit made from infringing copies.

These provisions, although not formulated specifically for intermediaries, become relevant since they reflect the importance of the knowledge requirement even on the part of persons/entities dealing in the infringing copies of copyrighted work.

In short, intermediaries are unlikely to be held liable unless they have actual knowledge of the infringing content and continue promoting the infringing activities.

Pakistan recognises the principle of exhaustion of trade mark rights, commonly referred to as the doctrine of first sale. Once a trade mark owner puts a product into the market, their exclusive rights over that specific item are considered exhausted. Subsequent sales of that item by others are not within the scope of trade mark infringement.

As for copyright, the concept of exhaustion is less clear-cut in Pakistan. While the law does not explicitly address the doctrine of exhaustion, the principles related to the first sale may be applied to some extent. The idea is that once the copyright owner has authorised the sale of a copy, they may be limited in preventing subsequent sales of that specific copy.

With regards to the treatment of digital content by the courts, in the absence of explicit provisions, the courts consider the nature of digital goods, licensing agreements and other relevant factors when applying exhaustion principles to digital content.

Qualified libraries and archives are granted certain rights for the reproduction and distribution of copyrighted works. This includes the making of not more than three copies of a book (including pamphlets, sheets of music, maps, charts, or plans) by or under the direction of the person in charge of a public library or a non-profit library available for use by the public free of charge, or a library attached to an educational institution for the use of such library if the book is not available for sale.

Additionally, qualified libraries and archives have the right to reproduce, for the purpose of research or private study or with a view to publication, an unpublished literary, dramatic, or musical work kept in a library, museum, or other institution to which the public has access. Specifically, the reproduction is permissible if it occurs more than fifty years after the death of the author. In cases of joint authorship, this period is calculated from the death of the known author or, if multiple authors are known, from the death of the last surviving author.

In cases of infringement, the available remedies to a trade mark or copyright owner include seeking preliminary or permanent injunction, damages, and rendition of accounts. Damages may encompass actual loss, loss of business opportunity, future profits, and damage to reputation. For an interim or permanent injunction to be granted, three conditions must be met:

• the existence of a prima facie case in favour of the applicant;
• irreparable loss, damages or injuries that may occur to the applicant if injunction is not granted; and
• that the balance of convenience should be in favour of the applicant.

Additionally, the courts have the authority to issue orders for the erasure of offending trade marks. If a person is found to have infringed a registered trade mark, the relevant high court or IPT may order:

• the erasure, removal, or obliteration of the offending trade mark from any infringing goods, material, or articles in the possession, custody, or control of the infringer; or
• the destruction of the infringing goods, material, or articles if erasure, removal, or obliteration is not reasonably practicable.

If an order for erasure or destruction is not complied with, or if non-compliance is likely, the relevant high court or IPT may direct the delivery of the infringing goods to a designated person for the required actions, including erasure, removal, obliteration, or destruction of the trade mark, as deemed appropriate.

There is no requirement to present a bond to obtain an injunction.

Section 46(2) of the Copyright Ordinance ensures that the proprietor of a trade mark has access to a comprehensive range of legal remedies in cases of infringement, similar to those available for the infringement of other property rights. These remedies include damages, injunctions, and an accounting of profits.

Damages are typically calculated based on the actual harm suffered by the owner, the profits gained by the infringer and in the instances of criminal remedies, statutory fines specified in the law. The availability of certain monetary remedies, such as statutory damages, may be influenced by whether the trade mark or copyright is registered, with registration often enhancing the remedies awarded.

While the law does provide for monetary remedies, the courts have shown a tendency to be cautious in awarding such remedies to plaintiffs.

While the plaintiff can claim court fees, expenses, and attorney fees in the damages sought, courts rarely grant such compensation.

An ex-parte relief is granted to the trade mark/copyright owner in case of blatant infringement and is very commonly granted. That said, it is not a matter of right and cannot be appealed against unless it is time-sensitive and compelling reasons are provided.

That said, the Copyright Ordinance does provide ex-parte relief as a matter of right under Section 60-A of the Copyright (Amendment) Ordinance. This allows copyright owners to seek immediate provisional orders from the Tribunal, without notice to the other party/infringer in order to prevent irreparable harm or preserve evidence that may be destroyed.

Pakistan’s legal system has implemented border enforcement mechanisms to combat the export and import of counterfeit goods in Pakistan. Proprietors of trade marks and copyrights can file complaints against the clearance of counterfeit or infringed goods, as empowered by the Statutory Regulatory Order (SRO) No 170(1)/2017, dated 16 March 2017 (a supplement to the Customs Rules, 2001).

Through the SRO, the customs authorities have established an independent directorate for the enforcement of IP rights. Upon a complaint, customs officers may seize counterfeit/infringing goods during import and export. The SRO mandates an independent procedure for the adjudication of such matters and requires an amount to be provided as security from the complainant.

Moreover, under the Trade Marks Ordinance, a proprietor of a registered trade mark can provide written notice to the Collector of Customs, designating infringing goods as prohibited. Subsequently, the Collector of Customs is authorised to seize and destroy such goods following prescribed procedures outlined in the law.

It is pertinent to mention that parallel imports are allowed in Pakistan subject to the payment of the relevant taxes and duties and proper declarations.

Defendants have the opportunity to explore settlements at any point before the court renders a decision. While there are no formal mechanisms, such as mandatory settlement conferences or court mediation, defendants can initiate discussions with the plaintiff to pursue an amicable resolution.

ADR methods, including mediation and arbitration, exist in Pakistan but these are not mandated. The parties choose to settle many disputes by way of mediation. Arbitration becomes more relevant when the parties are guided by an agreement that mandates arbitration, although this is rare.

The influence of other court proceedings, such as parallel revocation or infringement cases, on current proceedings is guided by the hierarchical structure of the court system. When a higher court is adjudicating on a matter, lower courts, tribunals and/or adjudication forums may stay proceedings until the higher court reaches a decision. The decision of the higher court holds significant influence, and, in practice, lower courts, tribunals and forums respect and adhere to the rulings of the higher authority. Consequently, the resolution of validity challenges or infringement issues in one forum may impact and influence the proceedings in another, particularly when decisions from a higher court are involved.

A trade mark or copyright infringement decision issued by a tribunal can be appealed to the relevant high court with territorial jurisdiction over the tribunal.

The timeframe for an appeal against a decision of the trial court to the high court is 30 days. However, the process of resolving an appeal can be lengthy, often taking between two to three years.

There are no special provisions concerning the appellate procedure for trade mark or copyright proceedings.

The scope of review by the appellate court is primarily confined to questions of law. This means that the appellate court’s role is to scrutinise the decision of the lower court for any legal errors, such as illegality or material irregularity. The focus is not on re-evaluating the factual determinations made by the trial court. Consequently, the high court typically refrains from intervening in the factual findings of the lower court, even in instances where these findings might be considered incorrect.

Trade mark and copyright laws primarily govern the protection of names, images, or likenesses, including those of celebrities. Trade mark law protects names, logos, and other distinctive elements associated with goods or services. If a celebrity’s name or image is used in connection with goods or services in a way that may cause confusion among consumers, trade mark law can be invoked to prevent such unauthorised use.

Copyright law protects original works of authorship, including literary, artistic and musical works. In the context of celebrities, photographs, artworks, or other creative expressions featuring their likeness may be protected by copyright. Unauthorised reproduction or use of such works without permission may constitute copyright infringement.

Thus, to enforce the rights of publicity, celebrities may rely on a combination of trade mark and copyright laws, along with general principles of unfair competition and dilution, to protect their names, images, or likenesses. The legal landscape in this regard is evolving, and courts may consider broader concepts of personality rights under the umbrella of existing intellectual property and privacy laws.

Section 67 of the Trade Marks Ordinance specifically addresses activities that can lead to confusion between competitors. This includes acts that may create confusion with another establishment’s goods, services, or activities, making false allegations that discredit a competitor, and using misleading indications or allegations in trade that could deceive the public about the nature of goods.

Additionally, Section 10 of the Competition Act, 2010, applies to trade marks as well as copyrights that are misleading regarding properties, labelling/packaging, method of production, and quality of goods.

Pakistan is in the process of promulgating amendments to the Copyright Ordinance to address the emergence of AI. Moreover, a draft National Artificial Intelligence Policy, issued by the Ministry of Information Technology & Telecommunication, is also pending promulgation, indicating a proactive approach towards establishing guidelines for the responsible development and deployment of AI technologies in Pakistan.

However, the absence of specialised laws has posed challenges in addressing modern issues related to software development, distribution, and infringement. 

There is no applicable information in this jurisdiction.

In Pakistan, there are no specific requirements mandating trade mark or copyright registration for a company to engage in manufacturing products. However, as has been seen, many online platforms such as Amazon and Daraz (a subsidiary of the AliBaba group) have started requiring trade mark registrations for vendors to list and sell their products on these platforms. This requirement effectively makes trade mark registration a significant consideration for businesses that wish to leverage these online marketplaces for their commercial activities.

It is also noteworthy that under Pakistan’s Drugs Law, drug registration is granted with the precondition that the product’s name or branding does not infringe upon third-party rights.